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 .
Status of the Claims
Claims 16, 19, 20, 23-34, and 37-39 are cancelled. Claims 1-15, 17, 18, 21, 22, 35 and 36 are pending and under examination.
Priority
This application is a national stage entry of PCT/EP2023/055934 filed on 3/8/2023, which claims priority from LU501621 filed on 3/8/2022.
Information Disclosure Statement
The information disclosure statement filed on 09/06/2024 has been considered by the examiner.
Claim Objections
Claim 2 is objected to for use of “and/or” in the claim with “selected from the group consisting of” structure that uses “and” before the final option. If applicant wants to allow for a combination thereof, then applicant can change “and/or rice protein.” to “, rice protein, and a combination thereof.”
Claim 3 is objected to for use of “and/or” in the claim with “selected from the group consisting of” structure that uses “and” before the final option. If applicant wants to allow for a combination thereof, then applicant can change “and/or p-hydroxy acid.” to “, p-hydroxy acid, and a combination thereof.”
Claim 6 is objected to for “particle dimension in the range 1 mm to 100 mm” as it should be “particle dimension in the range of 1 mm to 100 mm…”
Claim 35 is objected to for “FTIR” without having spelling it out first in the claims. It is noted that FTIR stands for “Fourier transform infrared spectroscopy” (see page 19 of specification).
Appropriate corrections are required.
Claim Rejections - 35 USC § 112 (b)
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 1-15, 17, 18, 21, and 36 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.
Claims 1, 2, 5 and 18 recite the limitations of “the plant-based proteins” in part (a) of claim 1, claim 2 and claim 18 or "the protein" in part (b) of claim 1 and in claim 5 as part of “the protein solution”, where the first recitation is actually “one or more plant-based protein(s)”. There is insufficient antecedent basis for this limitation in the claim. Applicant may amend these recitations to “the one or more plant based protein(s)” to have antecedent basis from this first recitation.
Claims 3, 4, 6-15, 17, 21 and 36 are rejected as being dependent on an indefinite claim.
Claim 11 is indefinite for “a rosin resin” as it is unclear what “a rosin resin” refers to if a type of ingredient or if applicant means to have these as “a rosin, a resin…” which are separate items.
Claim 15 is indefinite for the inclusion of “omega 3” in the group of “a vitamin or a mineral” as “omega 3” is a fatty acid nutrient, but neither a vitamin or a mineral. Thus, it is unclear if the group is also open to fatty acid nutrients or if it should be closed off to “a vitamin or a mineral” as seems to be suggested. Applicant may consider removing omega 3 from the group. For the purpose of compact prosecution, if the prior art teaches omega 3, it will teach the claim.
Claim 18 is indefinite for reciting “altering the pH of the emulsion such that it is different to the isoelectric point of the plant-based protein” as it is not clear if the “it” refers to the emulsion, a component of the emulsion as provided by claim 1. Applicant should amend the “it” to what it is meant to refer to. For the purpose of compact prosecution, the examiner will consider “it” as “the pH of the emulsion”.
Regarding claim 36, the phrase "(e.g. )" renders 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).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-12, 15, 17, 21-22 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia WO2020177881A1 and Kitagawa JP 2003093005 A (with Espacenet English translation).
Garcia teaches “A method to produce a plant-based material comprising: a) forming a solution comprising one or more plant based protein(s) in a solvent system, wherein the solvent system comprises miscible co-solvents; wherein a first co-solvent increases solubility of the plant based protein(s), and a second co-solvent decreases solubility of the plant based protein(s); and b) inducing the protein in the solution to undergo a sol-gel transition to form a plant-based protein hydrogel” (claim 1 of Garcia). Garcia teaches forming the plant based protein hydrogel into a structured material and the hydrogel is formed into the structured material before, during or after the sol-gel transition (claims 2-3 of Garcia). Garcia teaches plant sources for protein including soybean, pea and others (claim 6 of Garcia). Garcia teaches “mechanical shear, preferably ultrasonication of said protein solution comprising one or more plant based protein(s) and a solvent system” (claim 10 of Garcia). Garcia then teaches “the protein solution is heated to a first temperature above the sol-gel temperature of the one or more plant based protein(s), then reduced to a second temperature below the sol-gel temperature of the one or more plant based protein(s) to form a hydrogel” (claim 11 of Garcia). In example 3, Garcia teaches forming the microgel suspension and centrifugation and then washing with ethanol and centrifuging again. The centrifugation will cause shear. Additionally, see pages 10-11 for the general embodiment of the method. Example 2 provides for “Lactic acid was mixed with deionised water at different ratios (10%v/v, 30 %v/v, 50 %v/v, 70 %v/v and 90%v/v). Soy protein isolate was added to the Dl water/lactic acid solution at a final protein concentration of 100 mg/ml. A dispersion of non-soluble protein was obtained.” Example 2 also teaches “During this process, the sample temperature was kept at 85°C-90°C” and also leaving the sample to cool down (lower temperature) (example 2). Example 4 provides for a microcapsule that would contain/encapsulate an oil-in-water microemulsion with the prepared microgels (also see figures 7a-7b). Example 4 teaches “For the fabrication of core-shell microcapsules containing a lipophilic active, 450 pi of soybean oil were pre-emulsified in 550 pi SPI protein solution (20mg/ml, 30% v/v acetic acid)” (example 4). Soybean oil is a vegetable oil. Co-solvent types are further provided on page 13. This provides for dispersion of the oil/lipophile in the formulation. Garcia teaches inclusion of various actives in microcapsules including dyes, colorants, personal care products, fragrances for detergents, fragrances useful to the invention are any of the compounds belonging to the list of standards published and updated by the International Fragrance Association (IFRA), flavors, enzymes, bioactives, pesticides, herbicides, and vitamins as vitamins A, B, C, D and E (pages 16-17). Microbeads are taught to be less than 1 mm in diameter down to less than 100 microns (page 15, lines 8-11). Example 3 notes that “The resultant microgels were stable in aqueous solution under acidic conditions, as well as in the presence of 100% ethanol” (example 3). Figure 11 teaches use of fragrance oil (example 8). Garcia teaches “It is clear from the 2nd derivative analysis that SPI hydrogels have a high content of a-helix (1656 cm 1) intermolecular parallel b-sheet (1625 cm 1) secondary structure” (example 1 and figure 4). Claim 17 of Garcia provides for food, cosmetic, pharmaceutical, medical device or biomaterial with the plant-based material. Example 4 of Garcia does not that adjustments in microencapsulation were made due to the pH of starting protein solution that is very low due to acetic acid initially present. Garcia teaches adjusting pH to 2 in its process of making the hydrogels and also notes suspending stable microgels in aqueous solution of pH of 2 (example 3). Garcia teaches FITR in example 1.
Garcia does not teach the protein solids content of the emulsion.
Kitagawa teaches oil-in-water emulsions with an amount of protein solid content (claim 1 of Kitagawa and paragraph 4). Kitagawa teaches 0.1 to 3 wt% of protein solid content (claim 1 of Kitagawa). Kitagawa teaches storability and little sourness with its products (paragraph 1). Proteins of Kitagawa include soybean protein, wheat protein and others (English translation). Kitagawa teaches “This is achieved by obtaining a paste-like oil-in-water emulsion in which the emulsified state is stable while the protein solid content is low.” (English translation).
One of ordinary skill in the art before the time of filing would have produced oil-in-water emulsions as with teachings of Garcia’s process while keeping the protein solids content low to enhance the stability, storability and flavor of the composition by teachings of Kitagawa as both references provide for oil-in-water compositions with proteins. Therefore, there was a reasonable expectation of success in having oil-in-water compositions with protein solids content down in the range of applicant’s claims based on the overlapping range of 0.1 to 3 wt% presented in Kitagawa for oil-in-water emulsions as this is one factor that would help with stability, storability and flavor.
Claims 13, 14 and 18 in addition to Claims 1-12, 15, 17, 21-22 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia WO2020177881A1, Kitagawa JP 2003093005 A and Struillou WO2021122630A1.
Garcia and Kitagawa teach the claims as discussed above.
Garcia and Kitagawa does not teach the fragrance characteristics as in claims 13 and 14.
Struillou teaches perfume delivery systems with perfume oil having at least 35% of perfuming ingredients having a log P above 3 (abstract and claim 2 of Struillou). Struillou teaches various perfuming ingredients (pages 11-13). Struillou teaches the perfume formulation entrapped/encapsulated in a carrier (page 3). Example 10 teaches adjusting pH to 5.5 to 6.0 and Example 23 teaches adjusting a pH to 6-6.3.
One of ordinary skill in the art before the time of filing would have utilized fragrance oils with claimed characteristics as these are available fragrance ingredients for encapsulated fragrance formulations of the prior art as taught by Struillou. Struillou also recognizes adjusting the pH of its formulations and includes pH’s within applicant’s claimed range (Struillou provides for pH adjustments into pH ranges of 5.5 to 6 or to 6-6.3). Such standard pH adjustments of formulations would produce environments where plant-based proteins can differ by isoelectric point with that of the composition/emulsion as in applicant’s claim. Additionally, one of ordinary skill in the art with teachings of the prior art for pH adjustment would have the ability to adjust the pH at different stages of making a formulation. Therefore, there was a reasonable expectation of success in using such fragrances as the active ingredient for making emulsion fragrance delivery systems as motivated by teachings of Garcia and Kitagawa and routinely adjusting pH to be within a range desired for the given formulation.
Non-Statutory 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 21, 22, 35 and 36 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 16, 27, 41 and 44 of copending Application No. 18/844862 (reference application) in view of Kitagawa JP 2003093005 A. Although the claims at issue are not identical, they are not patentably distinct from each other because, although ‘862 does not provide the process of applicant’s claims, each claim set would provide a product with plant-based protein with hydrogel based on sol-gel transition with emulsified/emulsion form.
‘862 does not teach the protein solids content of the emulsion.
Kitagawa teaches oil-in-water emulsions with an amount of protein solid content (claim 1 of Kitagawa and paragraph 4). Kitagawa teaches 0.1 to 3 wt% of protein solid content (claim 1 of Kitagawa). Kitagawa teaches storability and little sourness with its products (paragraph 1). Proteins of Kitagawa include soybean protein, wheat protein and others (English translation). Kitagawa teaches “This is achieved by obtaining a paste-like oil-in-water emulsion in which the emulsified state is stable while the protein solid content is low.” (English translation).
One of ordinary skill in the art before the time of filing would have produced oil-in-water emulsions as with teachings of 862’s process while keeping the protein solids content low to enhance the stability, storability and flavor of the composition by teachings of Kitagawa as both references provide for oil-in-water compositions with proteins. Therefore, there was a reasonable expectation of success in having oil-in-water compositions with protein solids content down in the range of applicant’s claims based on the overlapping range of 0.1 to 3 wt% presented in Kitagawa for oil-in-water emulsions as this is one factor that would help with stability, storability and flavor.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22, 35 and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 21-23, 30, 34 and 35 of copending Application No. 18/025782 (reference application) in view of Kitagawa JP 2003093005 A. Although the claims at issue are not identical, they are not patentably distinct from each other because, although ‘782 does not provide the process of applicant’s claims, each claim set would provide a product with plant-based protein with hydrogel based on sol-gel transition and emulsified/emulsion form.
‘782 does not teach the protein solids content of the emulsion.
Kitagawa teaches oil-in-water emulsions with an amount of protein solid content (claim 1 of Kitagawa and paragraph 4). Kitagawa teaches 0.1 to 3 wt% of protein solid content (claim 1 of Kitagawa). Kitagawa teaches storability and little sourness with its products (paragraph 1). Proteins of Kitagawa include soybean protein, wheat protein and others (English translation). Kitagawa teaches “This is achieved by obtaining a paste-like oil-in-water emulsion in which the emulsified state is stable while the protein solid content is low.” (English translation).
One of ordinary skill in the art before the time of filing would have produced oil-in-water emulsions as with teachings of 782’s process while keeping the protein solids content low to enhance the stability, storability and flavor of the composition by teachings of Kitagawa as both references provide for oil-in-water compositions with proteins. Therefore, there was a reasonable expectation of success in having oil-in-water compositions with protein solids content down in the range of applicant’s claims based on the overlapping range of 0.1 to 3 wt% presented in Kitagawa for oil-in-water emulsions as this is one factor that would help with stability, storability and flavor.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusions
No claim is allowed.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
Prosecution Insights