DETAILED ACTION
Background
The amendment dated January 28, 2026 (amendment) amending claims 1-2 and 10 has been entered. Claims 1-2, 6, 8, 10-11, 13, 22, 32, 48, 90-95 and 98 stand pending in the instant application and have been examined. Claims 3-5, 7, 9, 12, 14-21, 23-31, 33-47, 49-89 and 96-97 have been canceled.
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 § 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 ne gated 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 1-2, 6, 8, 10-11, 13, 48, 90-93 and 98 are rejected under 35 U.S.C. 103 as being unpatentable over US4500454 to Chang (Chang) in view of US 20170238590 A1 to Bansal-Mutalik et al. (Bansal-Mutalik), both of record, as evidenced by Martineau-Cote D. et al., "Faba Bean: An Untapped Source of Quality Plant Proteins and Bioactives", Nutrients 2022, 14, 1541. https://doi.org/10.3390/nu14081541 downloaded on March 30, 2026 from https://www.mdpi.com/journal/nutrients (Martineau).
Unless otherwise disclosed or stated, all percents disclosed without units are interpreted as weight % (wt%). Further, unless otherwise disclose or stated, wt% is interpreted as interchangeable with mass%.
Regarding instant claims 1-2, 6, 8, 10-11, 13, 48, 90-93 and 98, Chang at col. 1, line 61 to col. 2, line 5 discloses methods of making a plant protein concentrate or isolate (claims 48 and 98), including from faba beans as the plant. Chang at Example 1 (Ex. 1) at col. 5, lines 20-33 discloses extracting from a plant product into a basic aqueous solution at a basic pH (claims 1 and 2), wherein the basic aqueous solution comprises sodium hexametaphosphate (SHMP) (claim 1), then separating the protein solution from materials partitioned in the precipitated solid phase (“unsolubilized plant solids” - claims 1 and 2) directly by centrifugation, without a change in the temperature of the protein solution (at 35 °C - claims 13 and 93), and then acid-precipitating the protein isolate from the protein solution (“precipitating the protein from the protein solution by lowering pH” - claim 1, as “precipitating the protein from the protein solution by reducing the pH of the protein solution” - claim 2) to produce a plant protein isolate. Specifically, Chang at Ex. 1 discloses extraction of protein from a 10% solids (claims 11 and 92) aqueous suspension of soy flour at a pH of 7 for 45 minutes (claims 6 and 90) at 35 °C (claims 8 and 91).
Further, Chang at Ex. 1 discloses the precipitation of the protein solution at a pH of 4 without removing the SHMP (“precipitating protein from the protein solution in the presence of sodium hexametaphosphate (SHMP)” - claim 2). The Office considers the claim 2 precipitating from the protein solution by adding sodium hexametaphosphate and reducing the pH of the protein solution to include the mixing of a protein solution containing the sodium hexametaphosphate and an acid to reduce pH as disclosed in Chang at Example 1. In addition, Chang in Example 2 at col. 5, line 65 to col. 6, line 28 discloses extracting protein from soy flour (“bean product”) in a basic aqueous solution at a pH of 9.0 to create a protein solution and separating the protein solution from unsolubilized plant solids by centrifuging, followed by precipitating the protein from a soy whey solution (the “protein solution”) by adding 0.5% (w/v) of the SHMP, based on the total weight of the protein solution (claim 2) and reducing the pH of the protein solution to a pH of 3.0 (claim 2) to produce a plant protein isolate. Still further, Chang at col. 4, lines 24-31 discloses including SHMP in the protein isolation before extraction and before precipitation
Still further and regarding instant claim 10, Chang does not disclose an example of extracting protein from a faba bean product, separating the faba bean protein therefrom as a solution and then precipitating a faba bean protein from the solution as in claim 1; further, Chang does not disclose the extracting from a plant product into a basic aqueous solution at a pH of 7.5 as in claim 1; still further, Chang does not disclose extracting from faba bean product in a basic aqueous solution and doing so at a pH of 8 as in claim 2; yet still further, Chang does not disclose extracting protein from a faba bean product in a basic aqueous solution comprising 0.1 - 0.5% SHMP, based on the total weight of the protein solution as in claim 1; and, Chang does not or disclose an extraction solution comprising 0.5% SHMP as in claim 10. Even still further, Chang does not disclose a process to produce a faba bean protein isolate having about 80 wt% to about 98 wt% protein content as in claims 1 and 2. However, Chang discloses beans and faba beans at col. 2, lines 4-6 as a suitable plant protein source for extraction and isolation; and, at col. 2, lines 64-68 Chang discloses protein extraction and isolation while avoiding heat to limit protein denaturation..
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Chang to make its plant protein isolate from faba beans as in claims 1 and 2 because Chang discloses that a faba bean product is a desirable substrate from which to produce a protein isolate; and, the ordinary skilled artisan in Chang would have found it obvious include the SHMP in the amount of from 0.1-0.5 wt%, based on the total weight of the protein solution before extraction as in claim 1 because Chang discloses in Example 2 that it is desirable to include the claimed amount of SHMP in precipitating a protein from a protein solution and Chang at col. 4, lines 24-31 discloses that it is desirable to include the SHMP either before precipitation or before extraction.
Bansal-Mutalik discloses methods for producing a protein isolate from mung beans by extracting the protein as a slurry of a bean product in an extraction solution (“basic aqueous solution”) at a pH between about 6.5 and 10, followed by precipitating the protein at a pH of about 5.0-6.0, then concentrating and recovering the purified protein isolate. At [0118], Bansal-Mutalik discloses plant protein isolates comprise nondenatured proteins. Further, at [0163] Bansal-Mutalik discloses an extraction slurry of basic aqueous solution to flour or bean product slurry at 15:1; and, at [0165] Bansal-Mutalik discloses that its basic aqueous solution desirably has a pH of 7.5 and 8.0 to create a protein solution. And at [0242], Bansal-Mutalik discloses that its protein isolate has a high purity protein content of at least 80%.
Chang at col. 2, lines 4-6 discloses beans including faba beans and mung beans as a suitable plant protein source for extraction and isolation; and, at col. 4, lines 33-26 discloses an amount of SHMP of about 25 to about 45 wt%, based on the total protein in the starting material. Further, Martineau at Table 1 on page 2 discloses that whole dried faba beans have a mean protein content of about 27.6 wt%. Accordingly, Chang discloses using an amount of SHMP of about 27.6% of 25 to 45 wt% of starting bean material or about 6.9 to about 12 wt% of the starting bean material.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Bansal-Mutalik for Chang to extract a protein at a pH 7.5 and precipitate the protein at pH 8.0, further to create a protein extraction solution having a SHMP content of 0.1-0.5 wt%, based on the total weight of the protein solution, and to produce a faba bean protein isolate having about 80 to 98 wt% protein content as in Bansal-Mutalik. Both references disclose extracting bean proteins from whole bean products in a basic aqueous solution, followed by lowering the pH of the solution and precipitating the protein to produce a bean protein isolate. The ordinary skilled artisan in Chang would have desired to treat its faba been protein in its extraction and precipitation at the claimed pH and at a low solids content as disclosed in Bansal-Mutalik as desired for efficient bean protein isolation with limited denaturation. Thus, a 1:15 basic aqueous solution of solids to water in Chang as modified by Bansal-Mutalik comprises SHMP in the amount of 1/16th of about 6.9 to about 12 wt% of the total protein solution or about 0.43 to about 0.78 wt%, which the claimed 0.1-0.5 wt%, based on the total weight of the protein solution overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I.
Claims 22, 32, 92 and 94-95 are rejected under 35 U.S.C. 103 as being unpatentable over US4500454 to Chang (Chang) in view of US 20170238590 A1 to Bansal-Mutalik et al. (Bansal-Mutalik), both of record, as evidenced by Martineau-Cote D. et al., "Faba Bean: An Untapped Source of Quality Plant Proteins and Bioactives", Nutrients 2022, 14, 1541. https://doi.org/10.3390/nu14081541 downloaded on March 30, 2026 from https://www.mdpi.com/journal/nutrients (Martineau) as applied to claims 1 and 2, above, and further in in view of US20210274807 A to Homyak et al. (Homyak), of record, and WO2021260169 A1 to Schwab (Schwab), of record.
Unless otherwise disclosed or stated, all percents disclosed without units are interpreted as weight % (wt%). Further, unless otherwise disclose or stated, wt% is interpreted as interchangeable with mass%.
As applied to claims 1 and 2, Chang at col. 2, lines 4-6 and 64-68, col. 4, lines 33-36, Example 1 at col. 5, lines 20-33 and Example 2 as modified by Bansal-Mutalik at [0118], [0163] and [0165] discloses a process for producing a faba bean protein isolate comprising extracting protein from a faba bean product in a basic aqueous solution at pH 7.5 or 8.0 comprising sodium hexametaphosphate (SHMP) to create a protein solution, wherein the SHMP is 0.1-0.5 wt%, based on the total weight of the protein solution; separating the protein solution from unsolubilized plant solids; and precipitating protein from the protein solution by lowering or reducing the pH to produce a faba bean protein isolate having about 80 wt% to about 98 wt% protein content, wherein the process alternatively comprises adding the SHMP and reducing the pH of the protein solution to precipitate the protein, wherein the SHMP is 0.1-0.5 wt%, based on the total weight of the protein solution.
Regarding instant claims 22, 32 and 94-95, Chang at Ex. 1 at col. 5, lines 20-33 discloses precipitating protein from a protein solution containing SHMP by reducing the pH of the at a pH of 3 (claim 22 and 94) in the presence of sodium hexametaphosphate (SHMP) at a temperature of 35 °C (claims 22 and 94) and reslurrying the precipitate in water and adjusting the pH to 7.0 (“e. diluting the protein isolate to make a slurry, wherein said diluting is with water, and wherein said diluting further comprises adjusting the pH of the said slurry to neutral” - claims 32 and 95), and then spray drying (“h. drying the protein isolate” - claims 32 and 95) to give a protein isolate product. Further, at col. 3, lines 15-22 Chang discloses treating its product in an oven to sanitize it (“g. sterilizing the protein isolate” - claims 32 and 95).
Chang as modified by Bansal-Mutalik does not disclose an example of performing acid precipitating from a protein solution for 10-60 minutes as in claims 22 and 94; and, further, Chang as modified by Bansal-Mutalik does not disclose washing its faba bean protein isolate, wherein said washing is at precipitating pH; and, Chang as modified by Bansal-Mutalik does not disclose homogenizing its dilute slurry as in claims 32 and 95.
Homyak at [0045] and Example 6 at [0151], respectively, discloses methods of making a plant protein isolate including, at [0091] a faba bean protein isolate. Further, Homyak at [0074]-[0075] discloses methods of washing a plant protein precipitate in aqueous protein solution at the precipitating pH of from 3 to 6 to obtain a refined protein product. And at [0107], Homyak discloses homogenizing its product to provide metastable emulsions having smaller particle sizes.
Schwab at page 17, lines 3-11 discloses extracting a plant protein, including (at page 6, lines 20-21) extracting faba bean protein in a basic aqueous solution at from 20 to 50 °C and for 10 to 20 minutes to optimize the extracting. Further, Schwab at page 8, lines 14-16 discloses a standard acidic precipitation as comprising precipitating protein at a pH 4-5 and 55 °C for 15 minutes (claims 22 and 94).
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Schwab to precipitate a faba bean protein from a protein solution for from 10 to 60 minutes and at 30 to 80 °C as in Schwab; and, further, would have found it obvious in view of Homyak for Chang as modified by Bansal-Mutalik to wash its faba bean protein isolate at a precipitating pH as in Homyak, and then homogenize the slurry or emulsion as in Homyak to stabilize it. All references disclose basic aqueous solution extraction of bean proteins followed by isolating the proteins by acid precipitation. The ordinary skilled artisan in Chang would have desired to optimize its faba bean protein isolation by precipitating its faba bean protein from its protein solution for from 10 to 60 minutes as in Schwab to more completely insolubilize the plant protein, by washing said faba bean protein isolate at a precipitating pH as in Homyak to further dissolve non-protein materials, and by homogenizing the slurry or emulsion as in Homyak to stabilize it.
Response to Arguments
In view of the amendment dated January 28, 2026, the following rejections have been withdrawn as moot:
The rejection of claims 1-2, 6, 8, 10-11, 13, 22, 32, 48, 90-95 and under 35 U.S.C. 112(b) as being indefinite in regard to the recited percents in claims 1-2 and 10, and the recited basis or denominator for the percent in claims 1-2 and 10; and,
The rejections of claims 1-2, 6, 8, 10-11, 13, 22, 32, 48, 90-95 and 98 are rejected under 35 U.S.C. 103 as being unpatentable over US4500454 to Chang in view of US20210274807 A to Homyak et al. and WO2021260169 A1 to Schwab.
The positions taken in the remarks accompanying the amendment dated January 28, 2026 (Reply) with respect to motivation or lack thereof to use the claimed amount of SHMP in extracting or precipitating faba bean protein or other plant protein in Homyak, Schwab or any combination of Homyak and/or Schwab with Chang have been considered but are moot because the new ground of rejection does not rely on any of those references for any teaching or matter specifically challenged in the argument.
Regarding the position taken in the Reply, the positions have been fully considered but are not found persuasive for the following reasons:
Regarding the allegation of unexpected results and Examples 1 and 5 of the instant specification, while the results appear promising the unexpected superiority of the results has not been established over the closest prior art. The Office considers the closest prior art with respect to claim 1 to be Chang at Example 1 at col. 5, lines 20-33, modified to treat a faba bean product and, with respect to claim 2 to be Chang at Example 2 at col. 5, line 65 to col. 6, line 27 wherein a “bean product” is the whey modified to treat a faba bean product. The Office considers a “faba bean product” or “bean product” as recited to include any plant product that contains protein. Be advised that Chang discloses at col. 2, lines 38-42 that in general its method gives a highly water soluble product.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.E.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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