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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 9/14/2026 is acknowledged.
Claim Objections
Claim 4 is objected to because of the following informalities: a period is missing at the end of the claim. Appropriate correction is required.
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 4 and 12 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.
Claim 4 recites the limitation “each washing step” in line 2. There is insufficient antecedent basis for this limitation in the claim. The language “each” infers there are plural washing steps, however, the claims do not previously state this. If there are plural washing steps then Applicant is advised to consider earlier stating this.
Claim 12 recites the limitation “each washing step” in line 2. There is insufficient antecedent basis for this limitation in the claim. The language “each” infers there are plural washing steps, however, the claims do not previously state this. If there are plural washing steps then Applicant is advised to consider earlier stating this.
Clarification and/or correction required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 10, 12 and 13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fukushima et al. (US 3,865,956).
Regarding claim 1, Fukushima (‘956) teaches a method of making a treated soy protein product, comprising the steps of: a. providing an extruded soy protein material; and b. performing a washing step on the extruded soy protein material to obtain the treated soy protein product, wherein the washing step comprises washing the extruded soy protein material at a washing temperature of room temperature to 85° C with a washing agent; wherein the treated soy protein product has at least 70 wt % protein on a dry basis; and the washing agent to the extruded soy protein material in the washing step is in a ratio of 4:1 to 40:1; wherein the treated soy protein product has one or more improved attributes compared to the extruded soy protein material, wherein the one or more improved attributes are selected from the group consisting of an increased protein content, a reduced flavor component content, a reduced metal ion content, a reduced odor content, a reduced carbohydrate content, a reduced free amino acid content, and any combinations thereof (See col. 4, ll. 3-12 where the soy/vegetable protein material is extruded, washed with water after extrusion at the temperature within the processing room, thus, room temperature; wherein the water is used to wash at a ratio of 10:1; wherein the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 4, Fukushima (‘956) teaches wherein one or more process parameters of the method are the same or different in each washing step, and the one or more process parameters are selected from the group consisting of a ratio of the washing agent to the extruded soy protein material, pH of the washing agent, washing temperature, and duration of washing (See col. 4, ll. 3-12 where the claim is interpreted as only requiring a single washing step, thus, the parameters remain the same.).
Regarding claim 10, Fukushima (‘956) teaches a method of making a treated soy protein product, consisting of the steps of: a. providing an extruded soy protein material; and b. performing a washing step on the extruded soy protein material to obtain the treated soy protein product, wherein the washing step consists of washing the extruded soy protein material at a washing temperature of room temperature to 85° C with water; and c. drying the treated soy protein product at a drying temperature of 75 to 120° C; wherein the treated soy protein product has at least 70 wt % protein on a dry basis; and the ratio of water to the extruded soy protein material in the washing step is from 4:1 to 40:1; wherein the treated soy protein product has one or more improved attributes compared to the extruded soy protein material, wherein the one or more improved attributes are selected from the group consisting of an increased protein content, a reduced flavor component content, a reduced metal ion content, a reduced odor content, a reduced carbohydrate content, a reduced free amino acid content, and any combinations thereof (See col. 4, ll. 3-12 where the soy/vegetable protein material is extruded, washed with water after extrusion at the temperature within the processing room, thus, room temperature; wherein the water is used to wash at a ratio of 10:1; wherein the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 12, Fukushima (‘956) teaches wherein one or more process parameters of the method are the same or different in each washing step, and the one or more process parameters are selected from the group consisting of a ratio of the washing agent to the extruded soy protein material, pH of the washing agent, washing temperature, and duration of washing (See col. 4, ll. 3-12 where the claim is interpreted as only requiring a single washing step, thus, the parameters remain the same.).
Regarding claim 13, Fukushima (‘956) teaches wherein the extruded soy protein material is an extruded soy protein concentrate (See col. 4, ll. 3-12.).
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.
Claim(s) 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (US 3,865,956).
Regarding claim 3, Fukushima (‘956) teaches the method discussed above, however, fails to expressly disclose a step of: c. drying the treated soy protein product at a drying temperature of 75° C, to 120° C.
Applicant does not set forth any non-obvious unexpected results for providing one drying temperature over another. It would have been foreseeable and obvious prior to the earliest effective filing date to select a temperature based on type of heat source without being too high to detrimentally degrade the product.
It would have been foreseeable and obvious prior to the earliest effective filing date to select a higher or lower temperature based on the process flow requirements. If the process must flow faster, then a higher temperature would be required to maintain the processing requirements. If the process must flow slower then a lower temperature would be required to maintain the processing requirements. It would have been within the skill set of a person having ordinary skill in the art prior to the earliest effective filing date to select an operating temperature of the process.
Regarding claim 8, Fukushima (‘956) teaches the method discussed above including the material being extruded soybean meal (See col. 4, ll. 3-12.), however, fails to expressly disclose the extruded soy protein material is provided directly from an extruder without any intermittent pre-drying step before the washing step, and wherein the extruded soy protein material has a moisture content of 15 to 25%.
Regarding the without any intermittent pre-drying step, it would have been foreseeable and obvious prior to the earliest effective filing date, it would have been foreseeable and obvious not to remove water from the material by drying prior to adding water in washing as it would been a waste of energy and effort for no apparent advantage.
Regarding the moisture content, it would have been within the skill set of a person having ordinary skill in the art prior to the earliest effective filing date to select an operating moisture of the process based on customer requirements.
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 1, 3, 4, 10, 12, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 8, 10, 11, 12, 15, 19, 20 and 23 of copending Application No. 18/862,370 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the same invention is disclosed in various combinations of claims and the properties being inherent as the materials and end use are the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T O'HERN whose telephone number is (571)272-6385. The examiner can normally be reached M-Th 5:00 am - 3:30 pm.
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/BRENT T O'HERN/ Primary Examiner, Art Unit 1793
September 14, 2026
