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 1-7 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.
With respect to Claim 1, The recitation “an oil-and-fat” renders the instant claim indefinite. The term “an oil-and-fat” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The use of the article “an” with the plural “oil-and-fat” makes it unclear as to whether the claim is reciting a component that requires a single mixture of oil-and-fat, either an oil or a fat, or both an oil and a fat. For the purposes of examination, the limitation will be interpreted as meaning an oil or a fat. This interpretation will be applied to all instances of the limitation in the instant claims.
Due to their dependency on claim 1, claims 2-7 are also rejected.
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.
Claim 4 is 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 4 recites “The oil-in-water emulsion composition according to claim 1, for a beverage”, but provides no method step or further limiting component, and therefore does not further limit claim 1. 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 § 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 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hanasaki et al. (WO 2019/240239 A1).
For the purposes of citation, Hanasaki et al. (US 2021/0092987 A1) will be used as the translation of WO 2019/240239 A1.
With respect to Claim 1, Hanasaki et al. teaches an oil-in-water emulsion composition comprising a solid particle, an oil phase component, a non-ionic amphilic substance, and an aqueous component, [0039] wherein the solid can be a protein, such as pea, [0058] the nonionic amphiphilic substance can be a sucrose fatty acid ester, [0095] wherein the monoester content is usually not less than 40%, [0097] the oil phase is any food oil, [0104] and the aqueous component comprises water. [0122] Hanasaki et al. teaches that the sucrose fatty acid ester comprises no more than 5% of the total composition [0101] and the protein comprises between 0.5% and 15% of the total composition. [0087]
The amount of monoester percentage of the sucrose fatty acid ester taught in Hanasaki et al. lies within the range recited in claim 1, and the ratio of sucrose fatty acid ester to pea protein can be between 0.3:1 to 10:1, a range which overlaps with the range recited in claim 1. MPEP 2144.05 I, states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hanasaki et al. in order to produce an oil-in-water composition emulsion comprising an oil or fat, a pea protein, and a sucrose fatty acid ester, wherein the sucrose fatty acid ester has a monoester ratio of 3-45% by mass, and is incorporated between 1-30 parts by mass with respect to the total amount of pea protein, thereby rendering claim 1 obvious.
With respect to Claims 2 and 3, Hanasaki et al. teaches the invention recited in claim 1, as described above. Additionally, Hanasaki et al. teaches a desire to avoid milk proteins in the composition, [0056] and teaches no embodiments wherein milk proteins are used. Therefore, Hanasaki et al. reads on claims 2 and 3.
With respect to Claim 4, Hanasaki et al. teaches the invention recited in claim 1, as described above, and teaches the use of the composition in a beverage. [0180] Additionally, the recitation “for a beverage” amounts to a recitation of intended use. MPEP 2111.02 II, states, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Therefore, Hanasaki et al. reads on claim 4.
With respect to Claims 5 and 6, Hanasaki et al. teaches the invention recited in claim 1, as described above. Additionally, Hanasaki et al. teaches that the oil phase comprising fatty acids not saturated is preferably no more than 5% by mass, [0112] and comprises between 30 and 50% of the total composition. [0121] The range of saturated fatty acids and total oil in the composition overlaps with the ranges recited in the instant claims. MPEP 2144.05 I, states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Therefore, Hanasaki et al. reads on claims 5 and 6.
With respect to Claim 7, Hanasaki et al. teaches the invention recited in claim 1, as described above. Additionally, Hanasaki et al. teaches the use of a glycerin fatty acid ester. [0095] Therefore, Hanasaki et al. reads on claim 7.
With respect to Claim 8-10, Hanasaki et al. teaches an oil-in-water emulsion composition comprising a solid particle, an oil phase component, a non-ionic amphilic substance, and an aqueous component, [0039] wherein the solid can be a protein, such as pea, [0058] the nonionic amphiphilic substance can be a sucrose fatty acid ester, [0095] wherein the monoester content is usually not less than 40%, [0097] the oil phase is any food oil, [0104] and the aqueous component comprises water. [0122] Hanasaki et al. teaches that the sucrose fatty acid ester comprises no more than 5% of the total composition [0101] and the protein comprises between 0.5% and 15% of the total composition. [0087] Hanasaki et al. teaches the use of the composition in a beverage, [0180] but is silent to the amount of emulsion used in a beverage.
The amount of monoester percentage of the sucrose fatty acid ester taught in Hanasaki et al. lies within the range recited in claim 1, and the ratio of sucrose fatty acid ester to pea protein can be between 0.3:1 to 10:1, a range which overlaps with the range recited in claim 1. MPEP 2144.05 I, states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Additionally, the amount of emulsion in the beverage recited in claim 9 discloses no criticality and is simply the results of routine optimization. MPEP 2144.05 II, states, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical”. A beverage comprising the emulsion taught by Hanasaki et al. would comprise some amount of emulsion and one of ordinary skill in the art would be motivated to determine the optimum amount to add to a beverage in order to achieve the most desirable effect, including a beverage with an amount of emulsion recited in claim 9.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hanasaki et al. in order to beverage comprising an oil or fat, a pea protein, and a sucrose fatty acid ester, wherein the sucrose fatty acid ester has a monoester ratio of 3-45% by mass, and is incorporated between 1-30 parts by mass with respect to the total amount of pea protein, and comprising between 0.2-42% of the invention recited in claim 1, thereby rendering claims 8-10 obvious.
Conclusion
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
/J.C.M./Examiner, Art Unit 1791
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