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 without traverse of Group I: claims 16-30 in the reply filed on 12/15/2025 is acknowledged. Claims 31-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lihme (US 2019/0274332), hereinafter Lihme in view of Qiu sun et al. (CN 100528844 C), hereinafter Qiu.
Regarding claim 16-17 and 20-25, Lihme teaches a potato protein composition comprising: patatin (para 16, which describes "patatin protein (PA)"); and optional ingredients (i.e. not required).
Lihme does not specifically state the protein, preferably the potato protein, has 'an aqueous solubility at pH—7.0 and 20 0 C. of at least 60%" (as recited in claim 16), or “at least 65 %” (see claims 23), or “at least 85 %” (see claim 24), or “at least 65 %” (see claim 25). However, Lihme teaches an example (see para 762 and table below it on page 32) where PAO (i.e. patatin protein) is greater than 85 at pH of 4.0 and is decreasing with decrease in pH, and appears to measure solubility at 20 °C (see para 323). It would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Lihme to use minimal amount of protein in water such that "an aqueous solubility at pH=7.0 and 20 °C. of at least 60%" (as recited in claim 16), or “at least 65 %” (see claims 23), or “at least 85 %” (see claim 24), or “at least 65 %” (see claim 25). The ordinary artisan would have been motivated to modify Lihme for at least the purpose of preventing large amounts of protein leaving the solution and precipitating at the bottom of the storage container, making it difficult to use in applications that require dissolved protein.
Limhe is also silent about the composition “has an acetylcholinesterase (ACE) activity of less than 30 U/g”, based on the dry weight “of the protein” (as recited in claim 16), or “the potato protein” (as recited in claim 17), and similar variations recited in claims 20-22. Qiu teaches that it is known in the art that reducing acetylcholinesterase activity is beneficial for dementia or Alzheimer's patients (para 3), and teaches inhibiting acetylcholinesterase activity by use of huperzine (para 5), as it improves cognitive function of the brain (para 3). It would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Lihme so that it inhibits acetylcholinesterase activity to as low as possible (including possibly 0), such as "the composition has an acetylcholinesterase (ACE) activity of less than 30 U/g" based on the dry weight “of the protein” (as recited in claim 16), or “the potato protein” (as recited in claim 17), and similar variations recited in claims 20-22. The ordinary artisan would have been motivated to modify Lihme for at least the purpose of creating a potato protein composition with low acetylcholinesterase activity, so that it does not adversely affect the body and is a suitable food for dementia patients which are especially sensitive to acetylcholinesterase activity.
Regarding claim 18-19, Lihme teaches the potato protein composition according to claim 16, wherein the isolated compound (in this case, patatin – as explained for claim 16) may be at least 50% pure by dry weight (para 204), which overlaps with compositions claimed in claims 18-19.
Regarding claim 26 and 27 Limhe teaches gelation (Para 34, 502 and 764, where gelling especially firm gel is taught). Regarding “gel strength at a temperature of 20 defined as the storage modulus G', of at least 2000 Pa as measured in accordance with the protocol as defined in the detailed description” (as recited in claim 26) and “a gel strength at a temperature of 20 defined as the storage modulus G', of at least 4000 Pa as measured in accordance with the protocol as defined in the detailed description” (as recited in claim 27) would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Lihme to include above identified missing limitations. The ordinary artisan would have been motivated to modify Lihme for at least the purpose of basing it on proportion of protein added to create the gel.
Regarding claim 28 Lihme teaches food product comprising the potato protein composition (see para 33, where utilizing potato proteins in foods and beverages is taught).Regarding claim 29, Lihme teaches a food product according to claim 28, wherein the food product is chosen from meat or fish substitute or alternative, dairy alternative, ice cream, mayonnaise, (cream) cheese, chocolate bar and meringue (Para 227-228 where Lihme teaches that purity of potato proteins plant derived food grade proteins that “can supplement and substitute the animal derived proteins which due to the intensive animal farming associated with itis an increasing burden to the environment and is predicted soon to become a scarce resource”. Also see para 480-481 where he products are taught as food additives for meats, i.e., use of potato proteins to substitute or replace animal foods is taught by Lihme.
Regarding claim 30, Lihme teaches food product according to claim 28, wherein the food product is vegetarian or vegan, see ara 480 where foods include beverages, breads, i.e., vegetarian foods.
Conclusion
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.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791