DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of group II claims 12-16 in the reply filed on 11/05/2025 is acknowledged. The traversal is on the ground(s) that the instant groups are not independent and distinct and that searching the additional inventions must constitute an undue burden. This has not been found persuasive because the inventions were properly restricted under lack of unity (See MPEP 823).
Additionally, it is also noted that the groups do not completely share the same technical feature, which is also the requirement under unity of invention, as it is noted that of the group of claims 12-16, claim 13 does not require the ratio of protein to fiber recited in claim 1. Therefore, the groups do not share the same technical feature and are properly restrictable under unity of invention for this reason as well.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 13-15 recites the broad range recitations, and the claim also recites “for example…” or “preferably….” followed by another range which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 14, claim 14 recites “proteins” in line 3 and “a leguminous protein” in line 7. It is unclear if the proteins in line 3 are the same as or different from “a leguminous protein” in line 7. Claim 14 recites “fiber” in line 5, and “cooked leguminous fiber” in line 7, it is unclear if “fiber” in line 5 is the same as or different from the “cooked leguminous fiber” in line 7.
Regarding claim 14, claim 14 recites “the weight ratio a:b”. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 15, claim 15 recites “the content of starch of the cooked leguminous fiber”. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 15, claim 15 recites “wherein the cooked leguminous fiber (b) has a content of gelatinized starch, based on the starch of the cooked leguminous fiber, of at least 80%”. It is unclear if claim 15 is requiring the cooked leguminous fiber to further comprise starches which can be considered fibers or if the cooked leguminous fiber include can include any type of starch. It is noted that not all starches can be considered fibers and if it is the latter it is unclear how much fiber is actually required by the claims. “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” MPEP 2173.06. It is noted that the PGPUB of the specification [0049] describes a “pea fiber material” as containing starch, see also paragraph [0048].
Regarding claim 16, claim 16 recites “the leguminous”. There is insufficient antecedent basis for this limitation in the claim. It is unclear what “the leguminous” is referring to, the leguminous protein or the leguminous fiber, or both, or neither.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 12-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Buche et al WO 2020/120915 (US 2022/0046950 relied upon as English translation).
Regarding claim 12, it is noted that claim 12 is a product by process limitation and “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (MPEP 2113).
Regarding claim 12, Buche discloses a leguminous protein composition comprising a weight ratio of leguminous protein (a) to cooked leguminous fiber (b) in the range of 70:30 to 90:10 (‘950, [0019], [0049]- [0051]), overlapping the claimed range. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (MPEP 2144.05.I).
Regarding claim 13, Buche discloses a leguminous protein composition, wherein said leguminous protein composition has a richness in proteins on a dry weight basis above 75% (‘950, [0042]), a total starch content going from 0-10% (trace starch) ([0045]) and a total dietary fiber content going from 0-20% (‘950, [0042], [0019], [0049]-[0051], [0069], [0079]). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (MPEP 2144.05.I). Regarding the remaining claimed properties, where the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01).
Regarding claim 14, Buche discloses a leguminous protein composition, wherein said leguminous protein composition has a richness in proteins on a dry weight basis above 75% ([0042]), a total starch content going from 0-10% (trace starch) (‘950, [0045]) and a total dietary fiber content going from 0-20% (‘950, [0042], [0019], [0049]-[0051], [0069], [0079]). Buche discloses that leguminous protein composition comprises a weight ratio of leguminous protein (a) to cooked leguminous fiber (b) in the range of 70:30 to 90:10 (‘950, [0019], [0049]- [0051]), overlapping the claimed range. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (MPEP 2144.05.I).
Regarding claim 16, Buche discloses that the leguminous in pea (‘950, [0029]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY AXTELL whose telephone number is (571)270-0316. The examiner can normally be reached M-F 9:00- 5:30.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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