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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/24/26 has been entered.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 6-12 and 27-34 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rudie et al. (7097871) in view of Furuya et al. (4614665) and Sztelek et al. (HU190466).
Rudie teaches a process for the production of a soybean flour having a high solubility corresponding to an NSI (nitrogen solubility index) value higher than 95%, said process comprising the steps of:
i) pre-drying soybeans at a temperature between 40°C and 60°C (col. 7 lines 4-6) for a time period between 6 hours and 18 hours (col. 7 lines 5-8)
a) drying said pre-dried soybeans in a first dryer set at a temperature above 90C (col. 8 lines 24-30), for a time period between 8 minutes and 18 minutes (col. 8 lines 53-54),
b) subjecting said dried soybeans kept at a temperature lower than 80C (col. 10 lines 30-34) to dry micronization (col. 10 lines 2-7, lines 35-44), thus obtaining a soybean micronizate having a particle size equal to or less than 200 microns (col. 10 lines 60-63).
Wherein said process does not comprise a step of defatting the soybeans (silent to defatting) and wherein after said pre-drying step i) (col. 6 lines 63-64) and before said drying step a), said soybeans are subjected to a decortication step ii) (col. 6 lines 63-65, col. 7 lines 21-25; dehulling after drying; col. 6 lines 27-28 “removing skin”).
Though silent to obtaining dried soybeans having a temperature between 75°C and 85°C during the drying of step a, Rudie teaches the same processing condition, i.e. a temperature above 90C (col. 8 lines 24-30), for a time period between 8 minutes and 18 minutes (col. 8 lines 53-54). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the dried soybeans of step a having a temperature between 75°C and 85°C thus providing a temperature of the soybean which promotes drying under the same conditions as taught by Rudie and the advantage of increasing stability of the powder and producing a pleasing flavor as further taught (col. 9 lines 32-34).
Rudie teaches a process to obtain soy flour of improved flavor and thus one of ordinary skill in the art would have been motivated to look to the art of soybean processing which further achieves a same desired improved flavor as taught by Furuya.
Furuya teaches the advantage of processing soybeans without water as taught by Rudie. Furuya teaches although water boiling may volatilize and remove from green soybeans any substances which would induce an unpleasant smell, the beans become substantially extracted with water. The boiled beans if dried give rise to a flavor or taste different totally from that of the green beans and can only be processed into limited foods such as bean paste (miso), bean curds (tofu), steamed and fermented beans (natto) and similar foods.
Furuya teaches drying soybean micronizate in a dryer set at a temperature between 110°C and 130°C (col. 3 lines 23-25) for a time period less than 20 seconds (col. 3 line 25), thus obtaining a dried soybean micronizate;
d) cooling said dried soybean micronizate, thus obtaining said soybean flour having a high solubility (col. 3 lines 18-20),
Thus since both teach the process not comprising any step of soaking said soybeans and/or said soybean micronizate in water or other aqueous solution and since both teach obtaining a same desired soybean flour product. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings and further taught the drying step of Furuya for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7)
Though silent to obtaining dried soybeans micronizate having a temperature between 75°C and 85°C, Furuya teaches the same processing condition, i.e. temperature between 110°C and 130°C (col. 3 lines 23-25) for a time period less than 20 seconds (col. 3 line 25). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the dried soybeans of step c having a temperature between 75°C and 85°C thus providing a temperature of the soybean which promotes drying under the same conditions as taught by both for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7)
More specifically since Furuya teaches heating in an airflow (col. 3 lines 21-22; steam) and the same processing condition, i.e. temperature between 110°C and 130°C (col. 3 lines 23-25) for a time period less than 20 seconds (col. 3 line 25). Though silent to a temperature of the material kept lower than 85C, since the time is variable, since the temperature encompasses a range and since the temperature of the product further depends on the amount during the processing conditions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to maintain the temperature of the material below 85C for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7).
Though silent to the claimed product temperature. Importantly since the conditions are taught, applicant is using known components to obtain expected results, result dependent variables. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... the explicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant obtaining predictable results, i.e. soybean micronizate. Applying a known technique, such as in the instant case a same taught processing conditions, yield predictable results. In addition to “Obvious to try”, i.e. choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as a result of same taught processing conditions.
Though silent to a second dryer. Since both teach the desired drying and since providing a second dryer would allow the process to be continuous as desired by Rudie. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a second dryer relative the drying step of Furuya thus achieving increased output due to being continuous as opposed to batches and since the mere scaling up or down of a prior art process capable of being scaled up, or down, if such were the case, would not establish patentability in a claim to an old process so scaled such as in the instant case relative multiple dryers for multiple drying steps.
Alternatively with respect to wherein all the steps are performed in a dry manner. Since Rudie both teach the process not comprising any step of soaking said soybeans and/or said soybean micronizate in water or other aqueous solution and since both teach obtaining a same desired soybean flour product including steaming. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the broadly taught steam of Rudie with superheated steam as taught by Furuya (col. 2 line 51) for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of regulating the temperature of the steam thereby heat treating the beans and maintaining protein dispersibility which improves the functional value of the powder compared to products without steam treating as taught by Rudie (col. 8 lines 4-15).
Rudie and Furuya teach methods of drying of soybeans and thus one of ordinary skill in the art would have been motivated to look to the art of known drying apparatus for drying crops for human food as taught by Sztelek (eng. Translation pg. 2 par. 1)
Thus since the intent of drying is the same, since Furuya teaches the claimed processing times and temperatures to achieve drying and since Sztelek teaches type of dryer which provides advantages known in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a second dryer relative the drying step of Furuya of a specific type which achieves a same processing conditions, such as in the instant case a flash drying thermopneumatic treatment since the selection of a known device based on its suitability for its intended use supports a prima facie obviousness determination and further achieving its art recognized advantage of achieving drying which due to thermopneumatic treatment, the combined use of drying and crop transfer has the unlimited advantage that less specific gravity-fed, crop-fed crop particles travel through the channels of the drying apparatus at a higher rate than the crop stream of particles with higher water content. The drier particles travel at higher speeds until they reach a channel section containing particles of the same specific gravity, thereby avoiding over drying and leaving the dried product with a constant moisture content as taught by Sztelek (pg. 2 9th par.)
With respect to the preamble, the production of a soybean flour having a high solubility corresponding to an NSI (nitrogen solubility index) value higher than 95%.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in composition and are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
Burden shift to applicant to provide evidence the same soybean flour does not encompass applicants claimed NSI value. A same pulse, i.e. soybean and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present minus any clear and convincing arguments and/or evidence.
Claim 2, wherein at the end of said pre-drying step i), said soybeans have a moisture content lower than 13% (col. 7 lines 10-11).
Wherein at the end of said drying step a), said soybeans have a moisture content lower than 10% (col. 9 lines 56-57).
Wherein said soybean flour having a high solubility has a moisture content lower than 5% (col. 11 lines 29-30).
Wherein said soybean flour having a high solubility has a particle size of less than 200 um (col. 11 lines 36-38).
With respect to claim 8, since Rudie teaches a same processing condition and since Furuya teaches NSI which is 80% or greater or 90% (col. 4 lines 4-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach a desired NSI value higher than 97% because given the teaching of Rudie in view of Furuya and the process parameters taught, one of skill in the art would have a reasonable expectation of success that through routine experimentation they would impart the claimed NSI value.
Claim 9, since both teach the same soybean powder. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach a protein content higher than 35%, by weight on the dry weight as a result of known properties of the product itself, i.e. soybean protein.
Wherein said soybean flour having a high solubility has a shelf-life at room temperature under vacuum of more than 6 months (col. 7 lines 54-55) where it is noted though silent to vacuum, vacuum is intended. It is further noted vacuum would increase shelf life relative the shelf stable product of Rudie of 1 year.
Claim 11, wherein said soybean flour having a high solubility has a lipoxygenase content reduced by at least 75% with respect to the lipoxygenase content of said soybeans to be subjected to said step a) or said step i) (col. 7 lines 45-50).
Claim 12, wherein before said step b) and after said step a), the dried soybeans are cooled down to a temperature of between 0°C and 30°C (col. 9 lines 46-49).
Claim 27, wherein at the end of said pre- drying step i), said soybeans have a moisture content between 10% and 12% (col. 7 lines 14-16).
Claim 28 at the end of said drying step a), said soybeans have a moisture content between 7% and 9% (col. 7 lines 10-11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the soybean flour having a high solubility has a moisture content lower than 3% with respect to the processing condition of Rudie and Furuya thus achieving moisture content which provides advantageous stability against spoilage by microorganisms as taught by Rudie (col. 7 lines 14-16).
Claim 30, the soybean flour having a high solubility has a particle size between 190 um and 5 um. (col. 12 lines 5-7).
With respect to claim 31, since Rudie teaches a same processing condition and since Furuya teaches NSI which is 80% or greater or 90% (col. 4 lines 4-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach a desired NSI value higher given the teaching of Rudie in view of Furuya and the process parameters taught, one of skill in the art would have a reasonable expectation of success that through routine experimentation they would impart the claimed NSI value.
Claim 32, since both teach the same soybean powder. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach a protein content between 38 and 45% by weight on the dry weight as a result of known properties of the product itself, i.e. soybean protein.
Claims 33 and 34, at the end of step d) said soybean flour has a moisture content lower than 5% or between 1 and 3% (col. 11 lines 29-20; 3wt.%).
Response to Arguments
With respect to applicants urging step a) is performed on whole soybeans. It is noted step a) is silent to “whole” soybeans.
With respect to applicants urging Rudie is silent to micronized material. Rudie teaches a same process not comprising any step of soaking said soybeans and/or said soybean in water or other aqueous solution.
With respect to applicants urging Furuya is limited to a temperature of 120-200C, it is noted this temperature encompasses applicants claimed range of 110-130C. Applicant urges Furuya is limited to a time of 60 seconds. Col. 3 lines 25 teaches the time in the range of 10-180 seconds which further encompasses applicants claimed less than 20 seconds, i.e. 10-19.99 seconds.
Thus since both teach the process not comprising any step of soaking said soybeans and/or said soybean micronizate in water or other aqueous solution and since both teach obtaining a same desired soybean flour product. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings and further taught the drying step of Furuya for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7)
Though silent to obtaining dried soybeans micronizate having a temperature between 75°C and 85°C, Furuya teaches the same processing condition, i.e. temperature between 110°C and 130°C (col. 3 lines 23-25) for a time period less than 20 seconds (col. 3 line 25). Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the dried soybeans of step c having a temperature between 75°C and 85°C thus providing a temperature of the soybean which promotes drying under the same conditions as taught by both for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7)
More specifically since Furuya teaches heating in an airflow (col. 3 lines 21-22; steam) and the same processing condition, i.e. temperature between 110°C and 130°C (col. 3 lines 23-25) for a time period less than 20 seconds (col. 3 line 25). Though silent to a temperature of the material kept lower than 85C, since the time is variable, since the temperature encompasses a range and since the temperature of the product further depends on the amount during the processing conditions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to maintain the temperature of the material below 85C for its art recognized purpose of processing soybeans without soaking as taught by both and further achieving the advantage of eliminating any offensive smell from the soybeans and achieving a more palatable product of greater solubility coefficient of Nitrogen, or NSI compared to previously known processes as taught by Furuya (col. 4 lines 1-7).
Though silent to the claimed product temperature. Importantly since the conditions are taught, applicant is using known components to obtain expected results, result dependent variables. "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of... the explicit content of issued patents." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 419. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416., The question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR, 550 U.S. at 417.
In addition, a conclusion of obviousness can be made from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Such as in the instant obtaining predictable results, i.e. soybean micronizate. Applying a known technique, such as in the instant case a same taught processing conditions, yield predictable results. In addition to “Obvious to try”, i.e. choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, as a result of same taught processing conditions.
With respect to applicants urging directed to the preamble, the production of a soybean flour having a high solubility corresponding to an NSI (nitrogen solubility index) value higher than 95%.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in composition and are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
Burden shift to applicant to provide evidence the same soybean flour does not encompass applicants claimed NSI value. A same pulse, i.e. soybean and its properties are inseparable. Therefore, if the prior art teaches the identical pulse type, the properties applicant discloses and/or claims are necessarily present minus any clear and convincing arguments and/or evidence.
With respect to step c, Sztelek et al. is relied upon to teach thermopneumatic drying and the advantages provided by such.
With respect to applicants urgings directed to the second references, in view of the teachings of Furuya and thus in response to applicant's arguments against the references individually it is noted one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven Leff whose telephone number is (571) 272-6527. The examiner can normally be reached on Mon-Fri 8:30 - 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN N LEFF/Primary Examiner, Art Unit 1792
Prosecution Insights