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 .
Claim Status
Claims 1-20 are pending original claims and are under examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,937,618 (USPN ‘618). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to substantially similar methods of providing a protein-enriched composition from egg albumen (i.e., egg white). Specifically, independent claim 1 of USPN ‘618 anticipates claims 1, 4-6, 8, and 11-13 of the instant application wherein conflicting claim 1 of USPN ‘618 recites more specific method steps than independent claim 1 of the instant application and the same limitations as the other anticipated instant claims:
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Dependent claim 2 of USPN ‘618 recites the same limitation as dependent claim 2 of the instant application. Dependent claim 3 of USPN ‘618 recites the same limitation as dependent claim 9 of the instant invention. Similarly, dependent claims 4-7 of USPN ‘618 recite the same limitations as instant claims 10, 3, 13, and 14, respectively. Consequently, claims 1-7 of USPN ‘618 anticipate claims 1-6 and 8-14 of the instant application.
With respect to claim 7 of the instant application, it is noted that both Applicant’s specification at paragraph [0034] and USPN ‘618 at col. 3, lines 59-63, indicate that the “…so-called diafiltration buffer used to replace the volume of filtrate passing through the membrane can be purified water…” As a result, the recitation of “…diafiltering said albumen concentrate with purified water…” at element (b) of independent claim 1 of USPN ‘618 can be understood to be equivalent to the recitation of “diafiltration buffer” at line 2 of instant claim 7. The difference between independent claim 1 of USPN ‘618 and dependent claim 7 of the instant application is that the instant application recites a range of volumes of “…from about 1 to about 7.5 volumes of diafiltration buffer relative to the volume of the egg albumen concentrate.” (lines 1-2 of instant claim 7) used to affect the diafiltration. It would have been prima facie obvious to the person of ordinary skill in the art at the time of the effective filing date of the instant application to optimize the volumes of “purified water” (aka, diafiltration buffer) used during diafiltration to obtain the desired end product and ensure the desired purity of the egg albumen concentrate, because this is a result effective parameter in diafiltration (i.e., the number of volumes used in the diafiltration process).
Concerning instant claim 14, it is noted that dependent claim 10 of USPN ‘618 recites that the method of claim 8, which is substantially similar to the claimed method of independent claim 1 of USPN ‘618, “…further comprising pasteurizing the protein isolate powder, instantizing the protein isolate powder, or a combination thereof.” This language meets and/or is fairly suggestive of the recitation of instant dependent claim 14 of “…further pasteurizing the protein-enriched composition.” With respect to instant claim 15, the Examiner notes that independent claim 1 of USPN ‘618 at element (d) recites “spray drying said protein-rich composition so as to provide said protein isolate powder.” A powder is a solid composition, thus the recitations of element (d) of independent claim 1 of USPN ‘618 meets the limitations of instant claim 15. In view of this and the limitations of claims 8 and 10-12 of USPN ‘618, the ordinary skilled artisan would have found it obvious to pasteurize a protein-rich composition and arrive at the subject matter of instant claims 17-20.
The limitations of instant claim 19 are met inherently, because the substantial similarity of the cited claimed method of USPN ‘618 would necessarily lead to person of ordinary skill in the art obtaining the same or a substantially similar protein-enriched free-flowing powder composition. In conclusion, instant claims 1-15 and 17-20 are anticipated or rendered obvious by claims 1-20 of U.S. Patent No. 11,937,618 (USPN ‘618).
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,937,618 (USPN ‘618) in view of Wu, Z. et al. (Food Bioprocess. Technol. (2015), vol. 8, pp. 148-57 (published online on August 15, 2014) (“Wu”).
The analysis and description of instant claims 1-15 and 17-20 and conflicting claims 1-20 of U.S. Patent No. 11,937,618 (USPN ‘618) are set forth above and are incorporated herein by reference. Instant dependent claim 16 depends from instant dependent claim 14, which depends from instant independent claim 1. The cited claims of U.S. Patent No. 11,937,618 (USPN ‘618) do not recite or fairly suggest drying a solid protein-enriched composition by pulse combustion drying. This deficiency is cured by the teachings of Wu, which teaches that compared to traditional spray drying pulse combustion spray drying (PCSD) of egg white achieved higher energy efficiency of water evaporated and the PCSD powders had superior surface characteristics, smaller mean particle diameter, and more homogenous particle size distribution. The person of ordinary skill in the art at the time of the effective filing date of the instant application would have been motivated to modify the claimed method of U.S. Patent No. 11,937,618 (USPN ‘618) and use PCSD to dry the protein-enriched compositions obtained from the claimed method of U.S. Patent No. 11,937,618 (USPN ‘618) with a reasonable expectation of success, because Wu teaches that PCSD of egg white achieved higher energy efficiency of water evaporated and PCSD powders with superior properties, small particle sizes, and more homogenous particle size distributions. In conclusion, instant dependent claim 16 is a prima facie obvious variation of the claimed method of claims 1-20 of U.S. Patent No. 11,937,618 (USPN ‘618) in view of the teachings of Wu, Z. et al. (Food Bioprocess. Technol. (2015), vol. 8, pp. 148-57 (published online on August 15, 2014) (“Wu”).
Conclusion
Claims 1-20 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES H. ALSTRUM-ACEVEDO whose telephone number is (571)272-5548. The examiner can normally be reached M-T/R-F 10 AM to 7:00 PM EDT; W 10 AM to 5 PM EDT.
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JAMES HENRY ALSTRUM-ACEVEDO
Supervisory Patent Examiner
Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622