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 § 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.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Geistlinger (US 2015/0296834) in view of Song (“Transglutaminase cross-linking effect on sensory characteristics and antioxidant activities of Maillard reaction products from soybean protein hydrolysates”, DOI: 10.1016/j.foodchem.2012.07.100, July 2012)
Regarding Claim 1, Geistlinger teaches a plant protein composition comprising plant protein [0118-0119], sugar, amino acids [0113], and hydrolyzed vegetable (plant) protein [0116]. It would have been obvious to have selected plant protein, sugar, amino acids, and hydrolyzed protein in the composition of Geistlinger, since Geistlinger teaches all the ingredients for inclusion in the plant protein composition. Note that where Geistlinger teaches plant protein and hydrolyzed plant protein as separate ingredients, Geistlinger teaches a first plant protein and second plant protein as claimed.
Geistlinger does not teach how the hydrolyzed protein is prepared.
Song teaches that hydrolyzed plant protein is prepared by hydrolyzing a peptide and cross-linking the peptide (Page 145, Section 2.2). Song teaches that the method provides a hydrolyzed protein that has improved flavor (Page 144, Introduction, Paragraph 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention utilize the method of Song for the hydrolyzed protein of Geistlinger. One would have been motivated to make such a modification to utilize a hydrolyzed protein with improved flavor.
Additionally, note that the instant Claim is directed towards a product-by-process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Regarding Claim 2, Geistlinger teaches the sugar, amino acid, and hydrolyzed protein (i.e. crosslinked peptide) as minor optional components [0113 and 0116]. It would have been obvious to have combined the minor compositional components prior to blending with additional components. It additionally would have been obvious to have pre-heated any of the ingredients, including a mixture comprising sugar, amino acid, and hydrolyzed protein, prior to a step of heating the entire composition for e.g., ensuring a uniform temperature.
Additionally, note that the instant Claim is directed towards a product by process. The product of both the instant Claim and the prior art of Geistlinger is a composition comprising a heated mixture of sugar, amino acid, hydrolyzed protein, and an additional plant protein. Note that Geistlinger teaches a step of heating [0007]. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Additionally, selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04 IV C.
Regarding Claims 3 and 4, Geistlinger teaches the addition of fat, oil, or fatty acids [0077].
Note that the instant Claim is directed towards a product by process. The effect of both the instant Claim and the prior art of Geistlinger is a composition comprising a mixture of sugar, amino acid, hydrolyzed protein, an additional plant protein, and fat, oil, or fatty acids. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Regarding Claims 5-8, Geistlinger teaches the addition of methylcellulose [0094] and agar [0113].
Note that the instant Claim is directed towards a product by process. The effect of both the instant Claim and the prior art of Geistlinger is a composition comprising a mixture of sugar, amino acid, hydrolyzed protein, an additional plant protein, and methylcellulose or agar. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Regarding Claim 9, Geistlinger teaches a step of heating [0007].
Note that the instant Claim is directed towards a product by process. The effect of both the instant Claim and the prior art of Geistlinger is a composition comprising a heated mixture of sugar, amino acid, hydrolyzed protein, an additional plant protein. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Regarding Claim 10, Geistlinger teaches a step of drying subsequent to heating [0098].
Note that the instant Claim is directed towards a product by process. The effect of both the instant Claim and the prior art of Geistlinger is a composition comprising a heated and dried mixture of sugar, amino acid, hydrolyzed protein, and an additional plant protein. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) See MPEP 2113 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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