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
The status of the claims stands as follows:
Canceled claims: 1-18
New claims: 19-35
Claims currently under consideration: 19-35
Currently rejected claims: 19-35
Allowed claims: None
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 24, 28, and 34 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.
Regarding claim 24, the word “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 28 recites the limitation "e1)" in line 2. There is insufficient antecedent basis for this limitation in the claim, since the method of claim 19 does not recite a step of “e1)”.
Claim 34 is vague and indefinite in that it claims a process but does not require any actual process step.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 29-31 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 29 requires the temperature in step d1) to be lowered to a temperature between 30-60°C. However, parent claim 19 already requires lowering the temperature “to a maximum of 30°C”. Claim 29 thus fails to include all the limitations of the claim from which it depends. (The claimed temperature values are interpreted as being target values, as opposed to the temperature of claim 29 being a transitory temperature that is achieved in the process of cooling to the temperature range of claim 19.)
Claim 30 similarly requires a temperature range that is above the maximum value claimed in parent claim 19.
Claim 31 requires the temperature in step e2) to be lowered to a temperature between 2-8°C. However, parent claim 19 already requires lowering the temperature “to a maximum of 2°C”. Claim 31 thus fails to include all the limitations of the claim from which it depends. (The claimed temperature values are interpreted as being target values, as opposed to the temperature of claim 31 being a transitory temperature that is achieved in the process of cooling to the temperature range of claim 19.)
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 19-24, 26-31, 34, and 35 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Loponen et al. (WO 2020/025856 A1). MPEP 2113 III.
Regarding claim 19, the claim is directed to a liquid food product obtained by a detailed process. MPEP 2113 I states: “[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 terms of examining the claim, “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
The only limitations that appear relevant to the claimed food product per se are that it is required to be a liquid that is produced from oat starting material that is exposed to four enzymes—a glycosidase, a protease, a deamidase, and a transglutaminase—with some precipitated portion removed. The method does not require any of the enzymes to actually even produce any result, except for the glycosidase potentially causing the precipitation of some component. Loponen et al. discloses a liquid oat product ([0001], [0016]) prepared by a method wherein oat raw material that may be oat flour ([0030]) is subjected to enzymatic treatment with a glycosidase (α-amylase), a protease, a deamidase, and a transglutaminase, and separation of insoluble components ([0041], [0056]). The claimed product thus appears to be the same as or obvious in view of the disclosed product of Loponen et al., where the structure implied by the relevant process steps (oat material and resultant components from the enzymatic treatment steps, as well as presumably the enzymes per se, with insoluble material being separated) appears to be indistinguishable between the two.
As for claim 20, Loponen et al. discloses the product as being subjected to heat treatment ([0057]) that would result in microbiological stabilization of the product.
As for claims 21 and 22, Loponen et al. discloses treatment with at least two glycosydases that are α-amylase and β-glucanase ([0041]).
As for claims 23, 24, and 26-31, the claims are directed only to limitations pertaining to process steps that would not affect the composition of the claimed product. As such, the same rationale as detailed in relation to claim 19 applies, and the claimed products remain anticipated or obvious in view of the disclosure of Loponen et al.
As for claim 34, Loponen et al. discloses a process of preparing a liquid food product suitable for human consumers wherein the liquid food product is used as a starting material ([0001], [0062]).
As for claim 35, Loponen et al. discloses the product is “non-dairy” ([0034], [0062]) such that is would be suited for consumption by human consumers that are allergic to dairy products.
Claims 25, 32 and 33 are rejected under 35 U.S.C. 103 as obvious over Loponen et al. (WO 2020/025856 A1) in view of Brown et al. (U.S. 2011/0236545 A1).
Regarding claim 25, Loponen et al. discloses the liquid food product as being treated with protease that may be an endoprotease ([0041]).
Loponen et al. does not specifically disclose the protease as being a carboxypeptidase.
However, Brown et al. discloses an endoprotease that is a carboxypeptidase ([0043], [0061]) that is used to enzymatically treat oat protein ([0052]).
It would have been obvious to one having ordinary skill in the art to use a carboxypeptidase in the process disclosed in Loponen et al. Since Loponen discloses the use of a protease/endoprotease without providing additional detail, a skilled practitioner would be motivated to consult Brown et al. for more specific instruction. Since Brown et al. discloses an enzyme suitable for hydrolyzing oat protein that may be characterized as being a carboxypeptidase ([0043]), a skilled practitioner would find the use of a carboxypeptidase in the process of Loponen et al. to be obvious.
Regarding claim 32, Loponen et al. discloses incorporating the liquid food product into a beverage ([0062]).
Loponen et al. does not specifically disclose the beverage a being a tea- or coffee-beverage.
However, Brown et al. discloses a non-dairy creamer composition ([0001]) that may comprise enzymatically-treated ([0043]) oat protein ([0052]) suited for use in a coffee beverage ([0002], [0147]).
It would have been obvious to one having ordinary skill in the art to incorporate the product of Loponen et al. into a coffee-based beverage. Since Loponen et al. discloses incorporating the food product into a beverage only in a general sense ([0062]), a skilled practitioner would be motivated to consult Brown et al. for further clarity regarding suitable beverage formulations. Since Brown et al. discloses the incorporation of non-dairy creamer compositions that may be comprised of hydrolyzed oat protein into coffee ([0043], [0052], [0002], [0147]), a skilled practitioner would find the similar use of the product of Loponen et al. to be obvious, such that producing a coffee-based beverage comprising the liquid food product would be obvious.
As for claim 33, Brown et al. discloses mixing brewed coffee with a liquid food product comprising hydrolyzed protein that is immediately subjected to taste evaluation ([0147]), where “brewed coffee” is presumed to refer to coffee that is hot. As such, mixing the liquid food product of Loponen et al. with coffee at a temperature close to its boiling point would be obvious to skilled practitioner.
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 19-31, 34, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,096,786. Although the claims at issue are not identical, they are not patentably distinct from each other because the present product claims would be obvious in view of the claims of the ‘786 patent that are directed to the method for producing the presently-claimed products. Claims 34 and 35 would be obvious due to not requiring any additional substantive limitations beyond simply preparing the liquid food product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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