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 .
Status of Claims
Claims 1-20 are pending and under examination in this application. Claims 21-26 are cancelled.
Drawings
The drawings are objected to because the labels on Figure 1 are illegible. While the numbers on the x-axis and y-axis are legible, the labels for these and on the rest of Figure 1 are either hard to read or completely illegible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 12 and 20 are objected to because of the following informalities:
Claim 1 line 8 recites, “andnum.” The word “andnum” is believed to be a misspelling and should be edited to read as follows: “and”. Appropriate correction is required.
Claim 1 and claim 12 line 4 recites, “subjecting the flaked Vigna subterranea to wet milling.” For clarity, the word “seeds” should be added after “subterranean.” The recitation would then read as follows, “subjecting the flaked Vigna subterranea seeds to wet milling.” Appropriate correction is required.
Claim 20 lines 1-2 recite, “wherein the milling is a pin milling…”. Claim 1 recites “wet milling” in line 4 and “milling” in line 9. While the disclosure, pg. 4 lines 34-37 and pg. 5 lines 34-37, confirms that the milling referred to in claim 20 is the milling performed on the dehydrated VS extract in line 9; for additional clarity of record, it is recommended that the recitation be edited as follows to clearly show that the milling in claim 20 is being performed on the dehydrated VS extract: “wherein the milling of the dehydrated VS extract is a pin milling…”. Appropriate correction is required.
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.
Claim 1-11, 13-17 and 19-20 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.
Claim 1 line 7 recites, “dehydrating the hydrolysed starch.” There is insufficient antecedent basis for this limitation in the claim. The previous line states, “hydrolysing the slurry in water.” Thus, there is only “hydrolysed slurry” and not “hydrolysed starch.”
Claim 2 and claim 13 recites, “subjecting the micronized VS extract to further processing steps including… or a combination thereof.” With the recitation of “including,” which is viewed as “comprising,” but also the recitation of “or a combination thereof,” it is unclear if you need all the steps to meet the claim, or just one step. For the purpose of examination, only one of the listed processing steps, in claim 2 and in claim 13, will be required to meet the respective claim.
Claim 4, claim 8, and claim 14 recites, “or a combination of amylases (alpha- and beta-amylase).” However, it is unclear if the recitation of “(alpha- and beta-amylase)” in parentheses is an example of a combination of amylases that may be used, or when a “combination of amylases” is used only alpha- and beta-amylase may be used to meet the limitation. For the purpose of examination, any combination of amylase enzymes may be used to meet the limitation of “a combination of amylases.”
Claim 19 recites the limitation "the VS extract" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 13, from which claim 19 depends, recites “the micronized VS extract” but there is no recitation of “the VS extract.”
Claims 3, 5-7, 9-11, 15-17 and 20 are included in the rejection because they depend from a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Duthie, US 4259358 (cited in IDS dated 12/08/2023) in view of Brijwani et al., US 20170273337.
Regarding claims 1 and 12, Duthie teaches a method of producing a plant-based extract from Vigna, as required by claims 1 and 12 (a process for preparing a food product including treatment of a legume material with aqueous liquid, specifically seeds of the genera Vigna; Abstract, C4 L14-21, C5 L37-41).
Duthie does not specifically state that Vigna subterranea seeds are used but only that seeds of the genera Vigna (C5 L37-41). However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Duthie to use any species of Vigna seeds including subterranea for the process since Duthie recognizes that any Vigna legume material is useful for the process (C5 L37-41). See also MPEP 2144.08.
Duthie discloses the method comprises flaking the seeds without dehulling the seeds. As required by claims 1 and 12 (whole legumes, prior to grinding may be treated by a method well known in the art such as flaking, C6 L29-36; whole legume may be subjected to treatment with flaking rollers to produce thin flakes C6 L12-17).
Duthie teaches subjecting the flaked Vigna subterranean (VS) to wet milling to obtain a slurry, as required by claims 1 and 12 (legumes may be finely ground employing a wet grinding process, where the ground material is made into a slurry with aqueous liquid, C6 L5-7, C6 L55-60; the flakes of legumes may have further particle size reduction, where the slurry (liquid and legume material) is subjected to treatment in a continuous automatic equipment to provide a fine smooth suspension, C14 L58-68, C15 L1-7).
Duthie teaches subjecting the slurry to enzyme liquefaction and hydrolysing the slurry in water, as required by claim 1 (treating a slurry of ground legume material with aqueous liquid with an enzyme for a period of time sufficient to liquefy and hydrolyze at least part of the starch in the legume material to dextrins; C4 L14-21).
Duthie discloses heating the slurry to obtain a hydrolysed starch, as required by claim 12 (to effect starch hydrolysis the slurry temperature is raised gradually from 40-100°C and maintained for 2 to 120 minutes; C7 L56-58, C8 L1-14).
Duthie teaches dehydrating the hydrolysed starch to obtain a dehydrated VS extract, as required by claims 1 and 12 (product may be dried using well known procedures such as spray or drum drying; C12 L28-30).
Duthie does not teach reducing the particle size of the dehydrated VS extract by milling, as required by claims 1 and 12. Brijwani discloses a method of producing a composition from legume seeds (whole pulses) by providing water and enzymes, hydrolyzing the fiber and starch in the legume seeds and drying the mixture (Abstract, [0004], [0049-0052], [0147]). Brijwani teaches reducing the particle size of the dehydrated VS extract by milling (after drying the mixture the mixture is milled to provide a powder 118; [0053]). Brijwani discloses the particle size of the micronized VS extract (powder 118) has an average particle size equal to about 50-200 microns [0160]. This overlaps the claimed average particle size range of less than 200 microns, for claims 1 and 12. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). Brijwani teaches that a relatively smaller particle size increases absorption of liquid [0162].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Duthie to incorporate the teachings of Brijwani by reducing the particle size of the dehydrated VS extract by milling to obtain a micronized VS extract, as claimed in claims 1 and 12, because having a smaller particle size increases absorption of liquid, as recognized by Brijwani [0162].
Regarding claims 2 and 13, modified Duthie discloses the methods according to claims 1 and 12, respectively. Duthie teaches subjecting the micronized VS extract to further processing steps including reconstitution and addition of pre-mix, as required by claims 2 and 13 (such dried products may be used in formulating food in combination with other ingredients which are well known in the art; obtain final products in the form of dry, free flowing powders which on mixing with water will disperse readily and remain in suspension; C12 L30-35, C12 L40-45).
Regarding claim 3, modified Duthie discloses the method according to claim 1, as discussed above. Duthie teaches a secondary enzyme treatment (a suitable enzyme to further process undigested material, e.g. starch, cell wall, structural material; C11 L23-45). Duthie does not limit the stage of the process that the secondary enzyme is introduced or specifically state that the secondary enzyme treatment is performed on the micronized VS extract. Duthie only states that the secondary enzyme treatment (suitable enzymes) may be introduced at appropriate stages in the process (C11 L23-53). However, there are only a finite number of stages in the process. Thus, it would have been obvious for a person of ordinary skill in the art to try the claimed secondary enzyme treatment on the micronized VS extract. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S, 82 USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.E.).
Regarding claim 4, modified Duthie discloses the method according to claim 1, as discussed above. Duthie teaches wherein the enzyme liquefaction step comprises adding one or more enzymes selected from the group consisting of amylase enzyme to the slurry to digest and liquefy the starch in the slurry (to effect starch hydrolysis, amylolytic enzyme, preferably alpha-amylase is added to the slurry; this stage of the process accomplishes liquefaction of the starch component; Abstract, C7 L55-68, C8 L1-26).
Regarding claim 5, modified Duthie discloses the method according to claim 4, as discussed above. Duthie teaches wherein the enzymes further include one or more enzymes selected from the group consisting of glucoamylase (amyloglucosidase; Abstract, C7 L40-50, C8 L50-55, C9 L25-35).
Regarding claim 6, modified Duthie discloses the method according to claim 4, as discussed above. Duthie teaches wherein the enzyme liquefaction step is performed at a temperature ranging from 40-70°C (C8 L52-60). This is within the claimed temperature range of 30-85°C.
Regarding claim 7, modified Duthie discloses the method according to claim 6, as discussed above. Duthie teaches wherein the enzyme liquefaction step is performed at a pH from 3.0 to 7.0 (C8 L52-60). This overlaps the claimed pH range of 5 to 7. See MPEP 2144.05(I).
Regarding claim 8, modified Duthie discloses the method according to claim 3, where the micronized VS extract is subjected to a secondary enzyme treatment. Duthie teaches wherein the secondary enzyme treatment comprises adding one or more enzymes selected from the group consisting of amylase enzyme (amyloglucosidase) to the micronized VS extract, (treatment of enzymes may be employed where alpha-amylase treatment is completed first followed by amyloglucosidase treatment; C9 L25-35; a suitable enzyme to further process undigested material, e.g. starch, where the suitable enzyme may be introduced at appropriate stages; C11 L23-53).
Regarding claim 9, modified Duthie discloses the method according to claim 8, as discussed above. Duthie teaches wherein the enzymes further include one or more enzymes selected from the group consisting of cellulase and hemi-cellulase (to optimize production of digestible carbohydrates suitable enzymes may be introduced at appropriate stages, for example cellulases and haemicellulases; C11 L23-53).
Regarding claim 10, modified Duthie teaches the method according to claim 8, as discussed above. Duthie teaches wherein the secondary enzyme treatment is performed at a temperature ranging from 40-85°C (C9 L25-36, claims 8 and 20). This is within the claimed temperature range of 30-85°C.
Regarding claim 11, modified Duthie teaches the method according to claim 10, as discussed above. Duthie discloses wherein the secondary enzyme treatment is performed at a pH of 3.5-7 (C9 L25-36, claims 8 and 20). This encompasses the claimed pH range of 5-7. See MPEP 2144.05(I).
Regarding claims 14 and 15, modified Duthie teaches the method according to claim 13, as discussed above, where claim 13 is met with the teaching of “addition of pre-mix.” Therefore, claims that further limit the “enzyme liquefaction” step of claim 13 are considered to be met.
It is noted that claims 14 and 15 further limit the “enzyme liquefaction” step of claim 13. Claims 14 and 15 do not positively recite that the “enzyme liquefaction” step is part of the method and only limit the particular enzymes that can be used in the “enzyme liquefaction” step. Thus, the claims are rejected based on their dependence to claim 13.
Regarding claims 16 and 17, modified Duthie teaches the method according to claim 14, as discussed above, where claim 14 depends from claim 13, and where claim 13 is met with the teaching of “addition of pre-mix.” Therefore, claims that further limit the “enzyme liquefaction” step of claim 13 are considered to be met.
It is noted that claims 16 and 17 further limit the “enzyme liquefaction” step. Claims 16 and 17 do not positively recite that the enzyme liquefaction step is part of the method. Claims 16 and 17 only further limit the particular conditions the step is performed at, specifically temperature and pH, respectively. Thus, the claims are rejected based on their dependence to claim 14, which is dependent on claim 13.
Regarding claim 18, modified Duthie teaches the method according to claim 12, as discussed above. Duthie discloses heating the slurry to a temperature of 40-100°C, preferably from 40-85°C (C8 L1-5). This is encompasses the claimed temperature of 50-85°C. See MPEP 2144.05(I).
Regarding claim 19, modified Duthie teaches the method according to claim 13, as discussed above. While claim 19 further limits the fermentation step, the claim does not positively recite that the fermentation step is part of the method. Claim 19 only further limits the particular microorganisms and conditions of the fermentation step. Therefore, the claim is rejected based on its dependence to claim 13.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Duthie, US 4259358 (cited in IDS dated 12/08/2023) in view of Brijwani et al., US 20170273337 as applied to claim 1 above, and further in view of Mill Power Tech, Industrial Pin Mill Grinding System for Food, Accessed at: https://www.mill.com.tw/en/product/19.html.
Regarding claim 20, modified Duthie teaches the method according to claim 1, as discussed above. Modified Duthie does not teach wherein the milling of the dehydrated VS extract is a pin milling. Mill Power Tech teaches pin milling, which is suitable for grinding materials. Mill Power Tech discloses that when pin milling you are able to adjust rotor speed, can be used for a range of applications to a variety of products and the particle size can be adjusted (fineness 40~100 mesh; pg. 1 paragraph 1, pg. 1 bullet points under “PM Series” heading).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Duthie in view of Brijwani to incorporate the teachings of Mill Power Tech by having the milling be pin milling because when pin milling you are able to adjust rotor speed, can have a range of applications and a variety of products, and the particle size can be adjusted (fineness 40~100 mesh), as recognized by Mill Power Tech (pg. 1 paragraph 1, pg. 1 bullet points under “PM Series” heading).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE GERLA whose telephone number is (571)270-0904. The examiner can normally be reached Mon.-Wed. and Fri. 7-12 pm; Th. 7-2pm.
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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