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
Newly submitted claim 35 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: New claim 35 recites “A method of modulating……” (noting that applicant had elected Group III (product claims) in response of 1/20/2026 to restriction requirement of 11/19/2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, method claim 35 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 33 is 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.
Newly added claim 33 recites “wherein the lactic acid bacteria comprises a combination comprising Bifidobacterium, Lactobacillus acidophilus, L. delbrueckii ssp, bulgaricus, Lactobacillus paracasei Streptococcus thermophilus, and combinations thereof, preferably wherein the lactic acid bacteria is Lactobacillus plantarum” (emphasis added by underlining). It is not clear what this means. For the purposes of this office action, it will be assumed the above recitation is equivalent of “wherein the lactic acid bacteria comprises at least one of Bifidobacterium, Lactobacillus acidophilus, L. delbrueckii ssp, bulgaricus, Lactobacillus paracasei Streptococcus thermophilusor a combination thereof”.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 13, 15, and 18-34 are rejected under 35 U.S.C. 103 as being unpatentable over Bhowmik (US 20130287893), hereinafter Bhowmik, in view of Sherwood (US 20070148307), hereinafter Sherwood.
Regarding claims 13, 15 and 27, Bhowmik (US 20130287893) teaches a food product comprising a flavor modifying ingredient comprising pea protein hydrolysate fermented by at least Lactobacillus plantarum (para 31 describes "pea protein" that is "hydrolyzed" and "fermented with Lactobacillus plantarum"), wherein the food product may be a beverage (para 47).
Bhowmik does not specifically disclose that the beverage is a “citrus-flavored” beverage (as recited in claim 13), and further comprising (as recited in claim 15) “one or more sweeteners”, wherein the one or more sweeteners is as recited in claim 27. However, Bhowmik teaches that food products of the invention include fruit juice drinks (para 49) as well as confectionary products, dessert products, chocolates and honey products (para 48). Sherwood (US 20070148307) teaches a protein beverage (para 3) which may comprise "fruit juice" or "fruit juice blends" or "fruit and vegetable juice blends" including juice from lemon, limes, and/or oranges (para 49); protein may be "pea protein" (para 43), and may further comprise sweeteners which may be sucrose or aspartame (para 62).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bhowmik so that the beverage has a known flavor and ingredients, such as the beverage is a “citrus-flavored” beverage (as recited in claim 13), and further comprising (as recited in claim 15) “one or more sweeteners” that are one of the common sweeteners recited in claim 27. The ordinary artisan would have been motivated to modify Bhowmik at least for the purpose of producing a fruit drink of a popular flavor such as citrus fruit flavor beverage (para 49 of Sherwood) while adding a natural sweetener such as sucrose (para 62 of Sherwood) that has no after taste of artificial sweeteners to mask to a satisfactory extent typical bitter flavor of protein drinks (para 16 of Sherwood).
It is noted that whereas claim 13 is a product claim, it recites process steps therein (such as “obtained by a method comprising the steps of: i. forming an aqueous slurry” and then subjected the above “aqueous slurry” to “fermentation”). As such claim 13 is a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 18, Bhowmik teaches the food product of claim 13, wherein the pea protein is pea protein isolate (para 30).
Regarding claim 19, Bhowmik teaches the food product of claim 13, wherein the pea protein is present in an amount of about 10% to about 30% by weight (see table of para 57). Note that whereas claim 19 is a product claim, the recitation “based on the total weight of the aqueous slurry” refers to the process step wherein an “aqueous slurry” is made and aqueous slurry is an intermediate product. As such claim 19 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 20, although sterilizing is known (para 60 of Bhowmik), it is noted that claim 20 is a product claim but recited a process therein that is used to make the food product; i.e. “comprising sterilizing the aqueous slurry prior to forming the pea protein hydrolysate”. . As such claim 20 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claims 21 and 22, Bhowmik teaches the food product of claim 13, wherein proteolytic enzymes contain two types including proteinase and peptidase (para 33).
Regarding claim 23, it is a product claim directed to a food product but also recites a process therein that is used to make the food product; i.e. hydrolyzing the pea protein with a first proteolytic enzyme “for about 10 to about 20 hours at about 40°C to 60°C, followed by hydrolyzing the pea protein with a second proteolytic enzyme for about 1 to about 5 hours at about 40°C to 60°C, wherein the first proteolytic enzyme is different than the second proteolytic enzyme”. As such claim 23 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 24, Bhowmik teaches the food product of claim 13, wherein the lactic acid bacteria is at least Lactobacillus plantarum (para 31).
Regarding claim 25, although Bhowmik teaches the food product of claim 13 comprising adding the lactic acid bacteria, claim 25 is a product claim but recites method steps therein; i.e. the step of adding to an intermediate product; i.e. “aqueous slurry” (which is not part of final claimed “food product”, i.e., a beverage) a specific amount of lactic acid bacteria. As such, claim 25 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 26, although Bhowmik teaches the food product of claim 13 comprising fermented pea protein hydrolysate, the claim further recites details of the fermentation process such as process time and temperature; i.e. “fermentation for about 5 to about 10 hours at about 35°C to about 40°C”. As such, claim 26 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 27, Bhowmik teaches the food product of claim 25, wherein the one or more sweeteners is at least sucrose (para 62).
Regarding claims 28 and 29, they depends from claim 27 and recite details of one of the
options (i.e. not necessarily required) of claim 27; i.e. details of the option "steviol
glycosides" in claim 28 and details of "sugar alcohols" in claim 29. As rejection of claim
27 does not rely on either of these options; i.e. "steviol glycosides", the recitation of
claims 28 and 29 are optional and not required.
Regarding claim 30, it is a product claim directed to a food product but also recites a process therein that is used to make the food product; i.e. " sterilizing the aqueous slurry at about 120-125°C for about 30 minutes and subsequently allowing the aqueous slurry to cool down to about 50°C". As such, claim 30 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 31, Bhowmik teaches the food product of claim 21, wherein the one or
more proteolytic enzymes comprise both endopeptidase and exopeptidase activity (para
33 of Bhowmik teaches the proteolytic enzyme "Umamizyme ™" further disclosing that
"UmamizymeTM originates from Aspergillus oryzae and is rich in Endo & Exo activity").
Regarding claim 32, it is a product claim directed to a food product but also recites a process therein that is used to make the food product; i.e. " sterilizing the aqueous slurry at about 120-125°C for about 30 minutes and subsequently allowing the aqueous slurry to cool down to about 50°C". As such, claim 32 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 33, Bhowmik teaches the food product of claim 24, wherein the lactic acid bacteria comprises Lactobacillus plantarum (para 31 describes "fermented with Lactobacillus plantarum").
Regarding claim 34, it is a product claim directed to a food product but also recites a process therein that is used to make the food product; i.e. " sterilizing the aqueous slurry subsequent to subjecting the pea protein hydrolysate to fermentation". As such, claim 34 is also a product-by-process claim. Even 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant's response of 7/20/2026 has been fully considered. The part of applicant's
response of 7/20/2026 titled "REMARKS" has 5 pages in all, but the pages do not
appear to be numbered. As such, page 1 of 5 of "REMARKS" of 7/20/2026 will be
referred to as "1st page of applicant's remarks", page 2 of 5 will be referred to as "2nd
page of applicant's remarks"; and so on.
Applicant's argument that 35 USC 112, 2nd paragraph rejections of claims 19 and 23-26
should be withdrawn in view of the amendments to claims 19 and 23-36 is persuasive.
As such, the 35 USC 112, 2nd paragraph rejections of claims 19 and 23-26 are
withdrawn
The remainder of applicant’s arguments in applicant’s response of 7/20/2026 have also been fully considered but they are not persuasive, as explained below.
Applicant argues about claim 13 (starting on 1st page of applicant's response), stressing
that there is "no expectation that the success of flavor modifying ingredient of Bhowmik"
(see 2nd page of applicant's remarks, especially 1st paragraph) in view of Sherwood as
"Bhowmik does not disclose, teach, suggest or provide motivation for a is a citrusflavoured product comprises one or more sweeteners" (see 1st page of applicant's
remarks, especially 1st paragraph). This argument is not persuasive. In response to
applicant's above argument that there is no teaching, suggestion, or motivation to
combine the references, the examiner recognizes that obviousness may be established
by combining or modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation to do so found either
in the references themselves or in the knowledge generally available to one of ordinary
skill in the art. See In re Fine, 837 F.2d 1071, 5 USPO2d 1596 (Fed. Cir. 1988), In re
Jones, 958 F.2d 347, 21 USPO2d 1941 (Fed. Cir. 1992), and KSR International Co. v.
Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as noted in rejection
of claim 13, Bhowmik does teach fruit juices and Sherwood is used simply for teaching
of a commonly known fruit juice, such as juice from lemon, limes and/or oranges (as
taught in para 49 of Sherwood). The motivation to change is also provided in the
rejection, to use a known, popular flavor in conjunction with a sweetener to mask typical
bitter flavor of protein drinks (specifically taught by para 16 of Sherwood, as stated in
rejection of claim 13).
Applicant appears to suggest that Sherwood cannot be used as "Sherwood's beverage
is directed to a generic protein drink formulation - not to a beverage containing the
Applicant's pea-protein-hydrolysate-based flavor modifying ingredient" and concludes
the motivation to modify Bhowmik in view of Sherwood comes "solely based on
impermissible hindsignt reconstruction of Applicant's claimed invention using Applicant's present specification" (see 2nd page to 4th page of applicant's response, especially last
2 paragraphs on 2nd page). In response to applicant's above argument that the
examiner's conclusion of obviousness is based upon improper hindsight reasoning, it
must be recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as it takes into account
only knowledge which was within the level of ordinary skill at the time the claimed
invention was made, and does not include knowledge gleaned only from the applicant's
disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170
USPQ 209 (CCPA 1971 ). In this case, use of citrus flavor in conjunction with sweetener
is known in the art, as established in the rejection. The allegation that "Office has not
articulated a specific technical reason why one skilled in the art would have selected
citrus flavoring .... " (see 2nd page of applicant's response, especially last paragraph) is
unfounded as the rejection clearly provides the motivation (see page 5, 2nd paragraph,
especially last sentence, of the office action of 4/21/2026).
Further, applicant alleges that Sherwood is not appropriate as it does not teach
all the features of the claimed invention. For example, applicant admits Sherwood
teaches a protein beverage but finds Sherwood is not applicable because Sherwood is
"not directed to a beverage containing the Applicant's pea-protein-hydrolysate-based
flavor modifying ingredient" (see 2nd page of applicant's response, especially last
paragraph). In response to applicant's argument, the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981 ). In response to applicant's
arguments against the references individually, one cannot show nonobviousness by
attacking references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981 ); In re Merck &
Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that "Sherwood is non-analogous art" and "not from the same field of
endeavor" (see 4th page of applicant's response, 2nd last paragraph to 5th page of
applicant's response) because Sherwood is missing some aspects of claimed invention
such as "does not address the use of fermented pea protein hydrolysates as flavor
modifying ingredients". Applicant also alleges Sherwood's "disclosure of citrus juice" is
"entirely unrelated" because it does not have the exact composition claimed. In
response to applicant's above argument that Sherwood is inonanalogous art, it has
been held that a prior art reference must either be in the field of the inventor's endeavor
or, if not, then be reasonably pertinent to the particular problem with which the inventor
was concerned, in order to be relied upon as a basis for rejection of the claimed
invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this
case, Sherwood also teaches a protein beverage which may comprise fruit juice (as
outlined on page 5, 1st paragraph of the office action of 4/21/2026); so is Bhowmik, and
so is applicant's base claim 13.
Applicant also asserts that applicant has obtained "unexpected organoleptic
results" but does not point to any parts of applicant's disclosure that offer any proof to
support the above argument. The arguments of counsel cannot take the place of
evidence in the record. In re Schulze, 346 F.2d 600,602, 145 USPQ 716, 718 (CCPA
1965). Examples of attorney statements which are not evidence and which must be
supported by an appropriate affidavit or declaration include statements regarding
unexpected results, commercial success, solution of a long-felt need, inoperability of the
prior art, invention before the date of the reference, and allegations that the author(s) of
the prior art derived the disclosed subject matter from the applicant.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
