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 .
DETAILED ACTION
Status of Claims
Claims 1-11 are pending and currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/23/2024 and 03/27/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were 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 5-6, 8, and 11 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 5-6, 8, and 11 recites “with the enzyme including glutaminase.” The use of the word “including” produces a lack of clarity in the resulting claim limitations because, as written in these claims, “including” can be interpreted to mean “such as”, which is indefinite as it does not clearly set forth the metes and bounds of the patent protection desired. In order to move prosecution forward, the recitation of “including” is given the broadest reasonable interpretation to mean “comprising”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)2 as being anticipated by Imaura et al. (JP 2020-178664 A), hereinafter Imaura.
Imaura discloses the invention of a novel masking agent for wort and/or malt extract-derived odors in malt-based products, wherein the masking agent consists of methyl cinnamate, phenylacetaldehyde, and l-menthol, nerol, anethole, gamma-hexalactone, delta-hexalactone, etc., which anticipates Claim 1 (Abstract; Claim 1). The degree of off-flavor of non-alcoholic beer with odor derived from wort and/or malt extract was used for sensory evaluation (Experimental Example 7; p. 13, 4th paragraph).
Regarding the recitation of “for off-flavor of a plant-based protein ingredient”, this limitation is not related to subject matter eligibility issues. See MPEP 2106.05b. The identity of the ingredient being masked, does not negate the masking property/capability of phenylacetaldehyde absent persuasive evidence to the contrary. Furthermore with regards to the intended use (“for off-flavor of a plant-based protein ingredient”), nothing precludes the use of the phenylacetaldehyde of Imaura as instantly claimed (see MPEP 2112.02(II), nor does the recitation impart any structural characteristic that would distinguish it from the prior art compound. "It is not invention to perceive that the product which others had discovered had qualities they failed to detect". See 67 USPQ 155, 326 US 242, 249 (1945). Consequently, the intended use is not limiting.
Claim 5 is rejected under 35 U.S.C. 102(a)2 as being anticipated by Kato et al. (JP 2006-141231 A, cited in the IDS, machine translated in IP.com), hereinafter Kato.
Regarding Claim 5, Kato discloses a method of improving the flavor and lowering the viscosity of soybean protein by reacting transglutaminase with a solution of soy protein and followed by a protease treatment for use in inter alia beverage (Abstract; Claim 1; pp. 7-8 Examples 1-2 and Comparative Examples 1-3). Kato relates that the soybean odor and bitterness are reduced by the transglutaminase action, indicating a change in peptide components (p. 8, last paragraph).
Claims 1-2 and 5 are rejected under 35 U.S.C. 102(a)2 as being anticipated by Naknukool et al. (EP 4180528 A1), hereinafter Naknukool.
Naknukool discloses a novel production method of a plant protein food comprising treating a starting plant protein material with both of a lipase and a protein deamidase, for example, protein glutaminase, to thereby improve the flavor of a plant protein food, anticipating Claim 1 (Abstract; Claims 1-2).
The art teaches soybean-derived plant protein raw material, reading on Claim 2 (Claim 2). Specifically, soy milk was obtained from soybeans and treated with protein glutaminase; the soy milk is fermented to obtain a soy milk yogurt, and the yogurt subjected to sensory test for flavor and smoothness (Test Examples 1 and 2). As such, Claim 5 is also anticipated.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(b) as being anticipated by Imaura or in the alternative, under 35 U.S.C. 103(a) as being unpatentable over Imaura as applied to Claim 1 above.
Regarding Claims 1-2 and 4, how or what material is being masked does not materially affect the component of the masking agent. The filter or cheesecloth are not related to subject matter eligibility issues. See MPEP 2106.05b. It is the Applicant’s burden to show that the protein-ingredient derived from legume is also an integral part of the claim.
Regarding Claim 3, the Examiner interprets “food or a food raw material” to encompass liquid. Imaura expressly teaches adding phenylacetaldehyde dissolved in ethanol to a maltol solution and to off-flavor beverages (Experimental Examples 3 and 7-8).
Claims 6-11 are rejected under 35 U.S.C. 102(b) as being anticipated by Kato or in the alternative, under 35 U.S.C. 103(a) as being unpatentable over Kato as applied to Claim 5 above.
Regarding Claims 6 and 8 and 11, because Kato teaches the same method of enzymatically treating a plant-based protein-containing ingredient, i.e. soybeans, which the instant claim and specification notes to make a product comprising phenylacetaldehyde (PAA) and/or 4-hydroxyphenylacetaldehyde (4-HPAA), Kato therefore reads on the claimed feature of PAA or HPAA being in the product as its production is inherent to the claimed method also taught by Kato.
Regarding Claims 7 and 10, Kato teaches the presence of Glu-Lys in the product (p. 8, 4th paragraph). While Kato does not expressly teach the [Symbol font/0x67] linkage, one skilled in the art knows that the Lys bond connects to the [Symbol font/0x67]-carboxyamide group of glutamine.
Regarding Claim 9, Kato teaches soybean protein used in beverage applications (p. 2, 7th paragraph).
Claims 6-11 are rejected under 35 U.S.C. 102(b) as being anticipated by Naknukool or in the alternative, under 35 U.S.C. 103(a) as being unpatentable over Naknukool as applied to Claims 1-2 and 5 above.
Regarding Claims 6 and 8 and 11, because Naknukool teaches the same method of enzymatically treating a plant-based protein-containing ingredient, i.e. soy milk, which the instant claim and specification notes to make a product comprising phenylacetaldehyde (PAA) and/or 4-hydroxyphenylacetaldehyde (4-HPAA), Naknukool therefore reads on the claimed feature of PAA or HPAA being in the product as its production is inherent to the claimed method also taught by Kato.
Regarding Claims 7 and 10, Naknukool teaches wherein the protein deamidase acts on a glutamine residue in a protein, indicating that there are glutamyl peptides (Claims 7 and 11; [0022]). While Naknukool does not expressly teach the [Symbol font/0x67] linkage, one skilled in the art knows that the Lys bond connects to the [Symbol font/0x67]-carboxyamide group of glutamine.
Regarding Claim 10, Naknukool teaches application of the invention in plant protein beverage, for example plant milk [0064].
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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/JANICE Y SILVERMAN/Examiner, Art Unit 1792
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