DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 1-4, 8-22
Withdrawn claims: 4, 21-22
Cancelled claims: 5-7
Claims currently under consideration: 1-3, 8-20
Currently rejected claims: 1-3, 8-20
Allowed claims: None
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-3, 8-20) in the reply filed on 07/07/2026 is acknowledged.
Claims 4 and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 8, and 18 are objected to because of the following minor informalities:
In claims 1 and 8, the parentheses around “dry weight” should be removed.
In claim 18, “an upper limit of the content range” should be read as “an upper limit of the range of content of a plant protein in the textured plant protein material”.
Appropriate correction is required.
Claim Interpretation
The phrase “the textured plant protein material in a swollen state” recited in present claims 9 and 10 is interpreted as meaning that the textured plant protein material is not in a dried state; and that relative amounts of water and oil recited in present claims 9 and 10, respectively, are based on the wet weight of the textured plant protein material as opposed to the dry weight of the textured plant protein material.
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.
Claims 3 and 20 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 3, the phrase "meat-like processed food product" renders the claim(s) indefinite because the claim does not state what processed food products are encompassed by "meat-like", thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
For the purpose of this examination, the term “meat-like processed food product” will be interpreted as meaning a meat substitute.
Regarding claim 20, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
For the purpose of this examination, the claim will be interpreted as requiring that the protein deamidase be derived from the genus Chryseobacterium.
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.
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 1-3 and 8-18 are rejected under 35 U.S.C. 103 as being unpatentable over Li (WO 2021/174226) in view of Yokoyama (US 2017/0044513; previously cited).
Regarding claims 1, 2, and 8, Li teaches a production method for a textured plant-protein containing food product (corresponding to meat replica and meat substitute) (page 58, line 25 – page 59, line 6; page 117, lines 24-25; page 87, lines 12-13), the production method comprising: treating a textured plant protein material (corresponding to protein composition) with a protein deamidase in the form of protein glutaminase (page 58, lines 4-7, 18-20) as recited in present claims 1 and 2.
Li teaches that the protein composition is solubilized using the protein deamidase (page 58, lines 18-20); and recites in an example that the textured plant protein material is suspended in water to form a suspension to which protein deamidase powder is added (page 158, lines 110-14). However, Li does not ascribe any criticality to performing the protein deamidase treatment by added a protein glutaminase powder to an aqueous solution of the textured plant protein material. Also, the Applicant of the present invention does not ascribe any criticality to adding an aqueous solution containing the protein deamidase to the textured plant protein. A skilled practitioner would readily recognize that the water may be added to a protein deamidase powder and/or a dried textured plant protein material in order to perform an enzymatic reaction as preparing solutions for enzymatic reactions are known in the art. As such, the claimed method of adding an aqueous solution containing the protein deamidase to the textured plant protein material is rendered obvious in light of the selection of any order of mixing ingredients being prima facie obvious in the absence of new or unexpected results. MPEP §2144.04.IV(V).
Li teaches that the textured plant protein material is treated with protein glutaminase in order to improve the solubility of the textured plant protein material (page 58, lines 18-20; page 157, lines 27-30). Li does not teach that the protein glutaminase is added in an amount within a range recited in present claims 1 and 8.
However, Yokoyama teaches a method for producing plant protein-containing food products (corresponding to a reformed food or raw material comprising vegetable protein), the method comprising treating a plant protein material with a protein glutaminase in order to improve solubility of the plant protein material [0079]-[0082], [0172]-[0173]. [0181]. Yokoyama teaches that the amount of protein glutaminase used to treat the plant protein material may be 0.001-100 U per 1 g of the textured plant protein material [0183], which is considered to at least overlap the claimed amounts recited in present claims 1 and 8. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP §2144.05.I.
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the present invention to have modified the method of Li to include providing protein glutaminase in an amount of 0.001-100 U per 1 g of the textured plant protein material as taught by Yokoyama. Since Li teaches that the textured plant protein material is treated with protein glutaminase in order to improve the solubility of the textured plant protein material (page 58, lines 18-20; page 157, lines 27-30), but does not disclose an amount of protein glutaminase to use in order to increase solubility of the textured plant protein material, a skilled practitioner would have been motivated to consult an additional reference such as Li in order to determine a suitable amount of protein glutaminase to treat a plant protein material in order to increase the solubility of the plant protein material. Therefore, the combination of Li and Yokoyama render the claimed amount of protein glutaminase obvious.
Regarding claim 3, Li teaches the invention as described above in claim 1, including the textured plant protein-containing food product is a meat replica or meat substitute (page 87, lines 12-13; page 117, lines 24-25).
Regarding claim 9, Li teaches the invention as described above in claim 1. It is known in the art that water is a common ingredient in food including in foods such as the meat substitutes and meat replicas disclosed by Li (page 87, lines 12-13; page 117, lines 24-25). Therefore, it would have been obvious to have some content of water in the textured plant protein-containing product of Li. Since Li teaches that an amount of textured plant protein material in the textured plant protein-containing food product may be from about 60 wt.% to about 80 wt.% (page 89, lines 16-26), the content of water in the textured plant protein-containing food product may be as high as about 40 wt.%, thereby providing an amount or water per gram of the textured plant protein material which at least overlaps the claimed amount. The selection of a value within the overlapping range renders the claimed range obvious. MPEP §2144.05.I.
Regarding claim 10, Li teaches the invention as described above in claim 1, including an amount of fat in the textured plant protein-containing food product may be any amount such as about 10% to about 15% (page 86, lines 13-20). Li teaches that the fat may be present in the form of an oil (page 35, lines 13-20). Li also teaches that an amount of textured plant protein material in the textured plant protein-containing food product may be from about 60 wt.% to about 80 wt.% (page 89, lines 16-26). These values are considered to provided amounts of oil per gram of the textured plant protein material which at least overlap the claimed amount. The selection of a value within the overlapping range renders the claimed range obvious. MPEP §2144.05.I.
Regarding claims 11, 12, and 13, modified Li teaches the invention as described above in claim 1, including a treatment temperature may be 5-80°C (Yokoyama [0175]) such as 50°C (Li, page 158, lines 11-15), which falls within the range of treatment temperatures recited in present claims 11, 12, and 13.
Regarding claim 14, modified Li teaches the invention as described above in claim 1, including a treatment time may be 10 minutes to 24 hours (Yokoyama [0175]) such as 1.5 hours (Li, page 158, lines 11-15), which falls within the range of treatment time recited in present claim 14.
Regarding claims 15 and 16, Li teaches the invention as described above in claim 1, including that the protein composition is solubilized using the protein deamidase (page 58, lines 18-20); and recites in an example that the textured plant protein material is suspended in water to form a suspension to which protein deamidase powder is added (page 158, lines 110-14). However, Li does not ascribe any criticality to performing the protein deamidase treatment by added a protein glutaminase powder to an aqueous solution of the textured plant protein material. Also, the Applicant of the present invention does not ascribe any criticality to (a) hydrating a textured plant protein material prior to adding the aqueous solution containing the protein deamidase recited in present claim 15; or (b) using the aqueous solution containing the protein deamidase to hydrate a dry textured plant protein material as recited in present claim 16. A skilled practitioner would readily recognize that the water may be added to a protein deamidase powder and/or a dried textured plant protein material in order to perform an enzymatic reaction as preparing solutions for enzymatic reactions are known in the art. As such, the claimed method steps recited in present claims 15 and 16 are rendered obvious in light of the selection of any order of mixing ingredients being prima facie obvious in the absence of new or unexpected results. MPEP §2144.04.IV(V).
Regarding claims 17 and 18, Li teaches the invention as described above in claim 1, including the content of plant protein in the textured plant protein material may be at least 50% by dry weight (page 35, lines 6-10). This disclosed range is considered to fall within the range recited in present claim 17; and is considered to overlap the range recited in present claim 18. The selection of a value within the overlapping range renders the claimed range obvious. MPEP §2144.05.I.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Li (WO 2021/174226) in view of Yokoyama (US 2017/0044513; previously cited) as applied to claim 1 above, as evidenced by admitted prior art filed 05/09/2024.
Regarding claims 19 and 20, Li teaches the invention as described above in claim 1, including the protein deamidase is a protein glutaminase in the form of “ “Amano” 500” supplied by Amano Enzyme (page 158, lines 11-12). The protein glutaminase in “ “Amano” 500” is derived from Chryseobacterium proteolyticum as evidenced by Table 1 on page 17 of the present specification. Therefore, Li teaches a protein deamidase as recited by present claims 19 and 20.
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 1-3 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 16 of co-pending Application No. 18/863,947 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1, 2, 3, and 8 require the same features as co-pending claims 1, 14, and 16, except for the protein deamidase/glutaminase to be present in the range recited in instant clams 1 and 8. However, the co-pending claims do not require any particular amount of protein deamidase/glutaminase. Therefore, the amount of protein deamidase/glutaminase used in the co-pending claims may fall within or overlap the amount recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 8, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 9-10, and 13 of co-pending Application No. 18/881,440 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1, 2, 3, 8, and 14 require the same features as co-pending claims 1, 4, 5, 6, 9, 10, and 13, except for the protein deamidase/glutaminase to be present in the range recited in instant clams 1 and 8. However, the co-pending claims do not require any particular amount of protein deamidase/glutaminase. Therefore, the amount of protein deamidase/glutaminase used in the co-pending claims may fall within or overlap the amount recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 8, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-16 and 20-25 of co-pending Application No. 18/708,775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1, 3, and 8 require the same features as co-pending claims 11, 12, 13, 20, 21, 22, 23, 24, and 25; and instant claims 19 and 20 require the same features as co-pending claim s14, 15, and 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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