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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 11-19 and 23-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. 2004/0072318 (YAMAGUCHI).
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As to claims 11-13, YAMAGUCHI teaches treating a plant-protein-containing compositions such as soybean and wheat proteins with a protein deamidase [0101], [0102], and [0103]. The treatment would naturally enhance digestibility, release essential amino acids and branched amino acids.
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As to claims 14-16, the protein deamidase is obtained from Chryseobacterium, Flavobacterium, Empedobacter, Sphingobacterium, Aureobacterium or Myroides [0020].
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As to claims 17-19, the plant protein-containing composition can be wheat (i.e., a cereal crop) or soy (i.e., a seed) [0098].
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As to claims 23-25, the reaction may be generally carried out using the enzyme in an amount of from 0.1 to 100U units [0086]. Thus, the claimed amount falls within disclosed range. If the prior art discloses a composition or process point that falls within the claimed range, the claim is anticipated (See MPEP §2131).
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As to claims 26-28, the plant protein-containing composition is protein extracted from flour or flakes [0098]-[0099]. The material can be suspended and dissolved in water [0185] providing an untextured form.
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As to claims 29-31, YAMAGUCHI teaches using the enzyme in amounts of 0.25 or more [0086]. In Example 11 at [0152], 5 units of the protein-deamidating enzyme is used to treat the wheat protein gluten. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with “sufficient specificity to constitute an anticipation under the statute.” (See MPEP §2131). Given the disclosed ranges and specific example of using 5 units of the protein-deamidating enzyme [0152], YAMGUCHI anticipates claims 29-31.
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.
Claim(s) 20, 21 , and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2004/0072318 (YAMAGUCHI).
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As to claims 20-22, YAMAGUCHI is cited for the reasons noted above. YAMAGUCHI does not exemplify or teach an active step of directly adding deamidase to a textured protein. However, in [0092], YAMAGUCHI does teach that treating the protein in a hydrolyzed vegetable protein (i.e. a textured form) with deamidase results in a reduction of bitterness, an improvement of the protein hydrolyzing ratio by protease and an increase of the glutamic acid content [0092].
Thus, it would have been obvious to one skilled in the art to treat a hydrolyzed vegetable protein with a deamidase, as YAMAGUCHI teaches effects such as a reduction of bitterness, an improvement of the protein hydrolyzing ratio by protease and an increase of the glutamic acid content can be obtained [0092].
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 19-20, 22 of copending Application No. 18/708,803 (803 Application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention is direction to a method for enhancing digestibility or enhancing the release of essential amino acids and branched amino acids of a plant protein-containing composition (see claims 11-13), claim 1 of the 803 application also reacts protein deamidase with plant protein material.
Claims 14-16 are obvious in view of claims 19-20 of the 803 application which recites the same strains.
Claims 17-19 recite the type of plant protein and obvious in view of claim 22 of the 803 application which recites that the plant protein can be from pulse crops such as chickpeas, cereal crops such as wheat and seeds such as almond.
Claims 20-22 recite the plant protein is in textured form. Claim 1 of the 803 application recites a textured protein is treated.
Claims 26-28 recite that the protein is untextured. While claim 1 of the 803 application recites a textured protein, it would have been obvious to start with an untextured protein and the claim is open-ended and does not preclude additional steps to arrive at a texture protein.
Claims 23-25 and 29-31 are obvious in view of claim 1. Claim 1 of the 803 application recites the amount of the protein deamidase per 1 g (dry weight) of the textured plant protein material is in a range of 0.01 to 1000U. This overlaps or encompasses the amounts of claims 23-25 and 29-31 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Art Not Relied Upon
US 5,082,672 – teaches a deamidated food product.
US 6,251,651 – teaches a protein deamidating enzyme.
JP2000050887and English translation of description from Espacenet.com – discloses a novel protein deamidase that acts on a side chain amide group in a protein to release a side chain carboxyl group and ammonia.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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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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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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