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 .
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, 11, 16, 17, 19 and 20 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 5 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 11 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 16 recites the limitation “an increased protein content” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the increased protein content”.
Claim 16 recites the limitation “an unwashed extruded vegetable protein material” in line 2. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the unwashed extruded vegetable protein material”.
Claim 17 recites the limitation “a protein content” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the increased protein content”.
Claim 19 recites the limitation “the metal ion” in line 2. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “metal ion”. The earlier stated phrase of “metal ion content” is not the same as “metal ion”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation “at least 10%”, and the claim also recites “at least 30%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 19 recites the limitation “the one or more metal ions” in line 3. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “one or more metal ions”. The earlier stated phrase of “one or more metal ions content” is not the same as “one or more metal ions”.
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, 3, 5-7, 15-17, 19, 21-23 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fukushima et al. (US 3,865,956).
Regarding claims 1 and 23, Fukushima (‘956) teaches a method, and product made by the method, of making a treated vegetable protein product, comprising the steps of: a. providing an extruded vegetable protein material; and b. performing a washing step on the extruded vegetable protein material to obtain the treated vegetable protein product, wherein the washing step comprises washing the extruded vegetable protein material at a washing temperature of room temperature to 85° C. with a washing agent; wherein the treated vegetable protein product has one or more improved attributes compared to the extruded vegetable protein material; and the washing agent to the extruded vegetable protein material in the washing step is in a ratio of 4:1 to 40:1; wherein the one or more improved attributes are selected from the group consisting of an increased protein content, a reduced metal ion 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 3, Fukushima (‘956) teaches wherein the treated vegetable protein product has a protein content in a range of from 55 to 90 wt % on a dry basis (See col. 4, ll. 3-12 where the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 5, 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 vegetable 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 6, Fukushima (‘956) teaches wherein the extruded vegetable protein material is extruded soy concentrate (See col. 4, ll. 3-12.).
Regarding claim 7, Fukushima (‘956) teaches wherein the extruded vegetable protein material is not extruded soy flour (See col. 4, ll. 3-12, pellets.).
Regarding claim 15, Fukushima (‘956) teaches a treated vegetable protein product having one or more improved attributes compared to an unwashed extruded vegetable protein material, wherein the one or more improved attributes are selected from the group consisting of an increased protein content, a reduced metal ion 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 16, Fukushima (‘956) teaches having an increased protein content compared to an unwashed extruded vegetable protein material (See col. 4, ll. 3-12 where the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 17, Fukushima (‘956) teaches a protein content in a range of from 55 to 90 wt % on a dry basis (See col. 4, ll. 3-12 where the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 19, Fukushima (‘956) inherently teaches wherein the metal ion is selected from the group consisting of calcium ion, copper ion, iron ion, potassium ion, magnesium ion, and sodium ion (See col. 4, ll. 3-12, where these ions naturally occur in soybeans.).
Regarding claim 21, Fukushima (‘956) teaches wherein the extruded vegetable protein material is extruded soy concentrate (See col. 4, ll. 3-12.).
Regarding claim 22, Fukushima (‘956) teaches wherein the extruded vegetable protein material is not extruded soy flour (See col. 4, ll. 3-12, pellets.).
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) 4, 8, 10-13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (US 3,865,956).
Regarding claim 4, Fukushima (‘956) teaches the method discussed above, however, fails to expressly disclose a step of: c. drying the treated vegetable protein product at a drying temperature of 75° C to 120° C.
The claimed temperature range is very broad and includes virtually all conceivable values.
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 provide a higher or lower temperature based on whether the material needs to be dried faster or slower, the heat-transfer surface area available, heating source capacity and various other process factors. It would have been foreseeable and obvious prior to the earliest effective filing date to select a processing temperature, including a temperature with the claimed range, that is effective for drying the material. The selection of temperature would have been within the skill set of a person having ordinary skill in the art.
Regarding claim 8, Fukushima (‘956) teaches washing an extruded vegetable protein material on the extruded vegetable protein material to obtain the treated vegetable protein product, wherein the washing step comprises washing the extruded vegetable protein material at a washing temperature of room temperature to 85° C. with a washing agent; wherein the treated vegetable protein product has one or more improved attributes compared to the extruded vegetable protein material; and the washing agent to the extruded vegetable protein material in the washing step is in a ratio of 4:1 to 40:1; wherein the one or more improved attributes are selected from the group consisting of an increased protein content, a reduced metal ion 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.), however, fails to expressly disclose drying the washed material at a drying temperature of from 75° C to 120° C to obtain a treated vegetable protein product.
The claimed temperature range is very broad and includes virtually all conceivable values.
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 provide a higher or lower temperature based on whether the material needs to be dried faster or slower, the heat-transfer surface area available, heating source capacity and various other process factors. It would have been foreseeable and obvious prior to the earliest effective filing date to select a processing temperature, including a temperature with the claimed range, that is effective for drying the material. The selection of temperature would have been within the skill set of a person having ordinary skill in the art.
Regarding claim 10, Fukushima (‘956) teaches wherein the treated vegetable protein product has a protein content in a range of from 55 to 90 wt % on a dry basis (See col. 4, ll. 3-12 where the protein content is increased to about 70% and the ion content is decreased upon solubilization in the water solvent.).
Regarding claim 11, 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 vegetable 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 12, Fukushima (‘956) teaches wherein the extruded vegetable protein material is extruded soy concentrate (See col. 4, ll. 3-12.).
Regarding claim 13, Fukushima (‘956) teaches wherein the extruded vegetable protein material is not extruded soy flour (See col. 4, ll. 3-12, pellets.).
Regarding claim 20, Fukushima (‘956) teaches the method discussed above, however, fails to expressly disclose having one or more metal ions content at least 10%, preferably at least 30%, more preferably at least 50%, lower than the one or more ions content of an unwashed extruded vegetable protein material, wherein the one or more ions are selected from calcium ion, copper ion, iron ion, potassium ion, magnesium ion, and sodium ion.
The claimed range is very broad and includes virtually all conceivable values.
Applicant does not set forth any non-obvious unexpected results for providing one value over another. It would have been foreseeable and obvious prior to the earliest effective filing date to provide a higher or lower value based on what is desired by a customer. It would have been foreseeable and obvious prior to the earliest effective filing date to select a value, including a value with the claimed range, that is effective for a customer. The selection of value would have been within the skill set of a person having ordinary skill in the art.
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, 4, 5, 6, 8, 10, 11, 12, 15, 19, 20 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 10, 12, 13, 16, 26, 27 and 40 of copending Application No. 18/862,285 (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 July 13, 2026
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