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 Objections
Claim 1 is objected to because of the following informalities: the recitation “Saccharomyces cerevisiae” should be italicized so that it reads “Saccharomyces cerevisiae”. Appropriate correction is required.
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.
Claims 1, 7, and 9-12 are 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.
With respect to Claim 1, the recitation of “preparing a yeast suspension of 8%-12%w/v by debitterization and centrifugation” is unclear due to the preceding step of “adding water to a yeast paste precipitate or Saccharomyces cerevisiae powder obtained from waste brewer’s yeast after washing”. It is unclear whether or not these two steps are interconnected or separate, in that, is the yeast suspension the yeast paste precipitate or S. cerevisiae with water added, or a different yeast suspension with its own concentration. Additionally, it is unclear when and to what the succeeding step of “and adding sodium chloride of 2% w/v, papain of 400 U/mL, anhydrous zinc sulfate of 5%w/v and LACTEM of 0.5%w/v, adjusting the pH to 6.5, and autolyzing at 45°C for 24 hours” is performed.
For the purposes of examination, the recitation in claim 1 will be interpreted as the yeast suspension of 8-12% w/v being equivalent to the yeast paste precipitate or S. cerevisiae powder obtained from waste brewer’s yeast, the addition of sodium chloride, papain, zinc sulfate, and LACTEM being performed on the yeast suspension after debitterization and centrifugation, and adjusting the pH and autolysis being performed during the addition of the components above. Due to their dependency on claim 1, claims 7 and 9 are also rejected.
With respect to Claim 7, the recitation of “wherein the method further comprises the steps of enzyme killing, ultrafiltration, vacuum concentration and spray drying” is unclear due to a lack of clarity as to when the steps occur. For the purposes of examination, the steps recited in claim 7 will be interpreted as occurring after the autolysis step. Additionally, due to its dependency on claim 7, claim 11 is also rejected.
With respect to Claims 9 and 11, the recitation of “wherein the method is used in preparing soft drinks” is unclear due to a lack of clarity as to how the method recited is “used” in preparing a soft drink. For the purposes of examination, the limitation will be interpreted as performing a method of adding the yeast extract to a beverage in order to produce a soft drink. Additionally, due to their dependency of claims 9 and 11 respectively, claims 10 and 12 are also rejected.
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 1, 7, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (The production of beverage with beer’s yeast extraction, Food Science and Technology) in view of Boghani et al. (US 2009/0214445 A1).
With respect to Claim 1, Li et al. teaches a method of purifying and repurposing brewer’s yeast waste comprising diluting waste beer sludge, debittering and centrifuging, autolysis with sodium chloride and papain for 24 hours, heating to inactivate enzyme, and concentrating to produce the yeast extract product. [Sec. 1.3.2] Li et al. teaches a variety of conditions for the autolysis, including a range of temperatures between 35-60°C, [Sec. 2.1.1] pH between 5-8, [Sec. 2.1.2] papain between 0.02-0.06% and salt between 3-5%, [Table 1] and yeast between 3-9%. [Sec. 3.1]
Li et al. reads on a preparation method for a yeast extract comprising adding water to a yeast paste precipitate obtained from brewer’s yeast waste after washing, preparing a yeast suspension by debitterization and centrifugation, adding sodium chloride and papain, and adjusting the pH and temperature for 24 hours. Li et al. is silent to the use of LACTEM and anhydrous zinc sulfate.
Boghani et al. teaches an ingredient in an edible composition that has a desired release profile related to the composition itself. [0026] The composition comprises a yeast extract, [0091] lactic acid esters of mono and diglycerides (also known as LACTEM), [0082] and zinc sulfate. [0061] Boghani et al. teaches that the amount or LACTEM and zinc sulfate added to the composition may be between 0.001-2% and 0.01-25%, respectively. [Table 3] Boghani et al. teaches that the controlling the release profile of a flavor composition results in an improved composition. [0031]
Li et al. and Boghani et al. exist within the same field of endeavor in that they teach composition comprising yeast extract that can be added to a beverage in order to improve the quality. Where Li et al. teaches a method for extracting yeast from brewer’s waste in order to repurpose a waste product, Boghani et al. teaches a composition for use in improving the flavor quality of a composition. It would have been obvious to use Boghani et al. in order to improve the composition resulting from the method according to Li et al.
The range of temperature, pH, papain, salt, and yeast taught by Li et al. overlaps with the amount recited in claim 1. Additionally, the amount of LACTEM and zinc sulfate taught by Boghani et al. overlaps with the amount recited in claim 1. MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Li et al. in view of Boghani et al. to devise a method of producing a yeast extract comprising the steps of adding water to a yeast paste precipate obtained from waste brewer’s yeast after washing, preparing a yeast suspension of 8-12% by debitterization and centrifugation, adding sodium chloride at 2%, papain at 400 U/mL, anhydrous zinc sulfate at 5%, LACTEM at 0.5%, and adjusting the pH to 6.5 and autolyzing at 45°C for 24 hours, thereby rendering claim 1 obvious.
With respect to Claim 7, Li et al. in view of Boghani et al. teaches the invention recited in claim 1, as described above. Additionally, Li et al. teaches a step of killing the enzyme and filtration, [Sec. 1.3.1] and Boghani et al. teaches vacuum concentration [0344] and spray drying. [0255] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Li et al. in view of Boghani et al. in order to devise a method of producing a yeast extract according to claim 1, wherein the method further comprises the steps of enzyme killing, ultrafiltration, vacuum concentration, and spray drying, thereby rendering claim 7 obvious.
With respect to Claims 9 and 11, Li et al. in view of Boghani et al. teaches the inventions recited in claims 1 and 7, as described above. Additionally, Boghani et al. teaches the composition can be used in a soda. [0007] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Li et al. in view of Boghani et al. to devise a method according to claims 1 and 7 respectively, wherein the yeast extract is used in a soft drink, thereby rendering claims 9 and 11 obvious.
With respect to Claims 10 and 12, Li et al. in view of Boghani et al. teaches the invention recited in claim 9 and 11, as described above. Additionally, Boghani et al. teaches that flavor potentiators used in the invention can include yeast extracts, but does not include exact amounts. [0091] Boghani et al. does teach the amounts of other flavor potentiators as being between 0.01-10%. [Table 3]
MPEP 2144.06 II states, “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art”. It would have been obvious to use the same amount of yeast extract in substitution for another flavor potentiator. Additionally, MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Li et al. in view of Boghani et al. in order to devise a method according to claims 9 and 11 respectively, wherein the amount of yeast extract applied to the soft drink is between 0.01-2% w/v, thereby rendering claims 10 and 12 obvious.
Conclusion
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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