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 .
Status of the Application
Claims 1-17 filed in a preliminary amendment on 9/23/2024 are pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/16/2025 and 3/31/2026 was filed before the first Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1,6,9 and dependent claims 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 1-4 are directed to a method of producing a flavoring agent, claim 5 recites wherein the flavoring agent is a milk substitute and claims 6-8 are directed to a milk substitute produced by a method as in claims 1-4. However, claim 6 is presented as an independent claim. Claims 9-17 are directed to an oil-based food comprising the milk substitute . One dependent claim recites that the oil-based food comprising the milk substitute is free of milk raw material. Claims 11 and 12 are further limited to chocolates and as comprising an inorganic salt in claims 13-17.
One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. “Flavoring” and milk substitute are considered intended use of an undefined composition that is added to food. A food comprising the undefined composition is claimed with the limitation “which is chocolates” and “comprising an inorganic salt.”
Claim 1 recites treating a Gramineous seed with a protease. No method steps are provided. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Is the whole seed treated or is it dehulled or powdered seed or dehulled and powdered seed or an extract thereof?
As the invention is not clearly defined, a proper examination is not possible. Appropriate correction to clearly define compositions and/or methods claimed is required.
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 1-17 are rejected under 35 USC 103 as being unpatentable over Ernst (US4,282,319) cited in an IDS.
Ernst discloses the treatment of crushed cereals, ( wheat or barley for example) , in an aqueous environment with proteases at temperatures of around 50°C. In examples, the moisture/water content in the suspensions during the enzymatic reaction is well below 70 mass%, as a dry cereal would have a moisture content of less than 15% for storage stability.
The hydrolysate is dried and added to food products as flavoring or milk substitute as oat milk, rice milk and other milk substitutes are well known and impart flavor to food.
Ernst further discloses oil-based food products made with the hydrolysate applied as a milk-free creamer. Ernst claims a synergistic combination of a plant material, an endoprotease and a divalent cationic salt; wherein the plant material includes at least one plant protein; wherein the composition comprises a hydrolyzed plant based liquid; and wherein the hydrolyzed plant based liquid has synergistically improved functionality in at least one of feathering, foaming or organoleptic properties. A chocolate product with the creamer is not precluded, as the creamer is a milk substitute. Specifically, Ernst discloses that for chocolate formula, a small portion of water in the formula is used to make a cocoa slurry which is used in making a chocolate composition with emulsifier and other ingredients.
It would have been obvious to one of ordinary skill in the art to make a flavoring or milk substitute product as claimed for food applications with a reasonable expectation of success, based on the disclosure in Ernst.
Claims 1-17 are therefore prima facie obvious in view of the art.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793
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