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 .
DETAILED ACTION
Status of Claims
Claims 1-22 are pending and currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/18/2025 and 04/08/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
In this case, the Abstract recites “A method for producing a plant-derived protein processed food, including swelling a porous granular plant-derived protein with water or a seasoning liquid, and then adding a powdered plant-derived protein and transglutaminase and kneading the mixture, makes it possible to provide a plant-derived protein processed food having a texture equivalent to that of meat, particularly steak meat or sliced meat.” The Abstract is a run-on sentence, and the phrase “makes it possible to provide a plant-derived protein processed food…” can be construed as speculative application. As such, correction is required.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Claim Objections
Claims 1 are objected to because of the following informalities:
Claim 1 recites “and then” to indicate a subsequent step, but makes the claim appear narrative. The Examiner recommends listing the steps using i), ii) etc. or something similar.
Appropriate corrections are 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 3-4 and 9-10 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.
Claims 3-4 depend from Claim 1. The claims are rejected for indefiniteness for the recitation of “wherein the average particle size of the porous granular plant-derived protein is 1 mm to 100 mm” and “wherein the bulk density of the porous granular plant-derived protein is 30 g/L to 300 g/L”, respectively. These recitations are indefinite because it is unclear if the particle size and the bulk density measurements pertains to the state of the porous granular plant-derived protein prior to or after swelling.
Claim 9 recites “wherein gluten is further added as the powdered plant-derived protein”, which is indefinite. Claim 9 depends from Claim 5, which recites that the powdered plant-derived protein is a powder containing soybean protein. Because of the phrasing in Claim 9, it is unclear if the gluten replaces the soybean, or if the gluten is an additional powdered plant-derived protein separate from the soybean protein. Clarification is required. Claim 10, which depends from Claim 9, is also rejected.
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 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 1-2, 5-9, 12-14, 17-20, and 22 are rejected under 35 U.S.C. 103(a) as being unpatentable over Toho, et al. (US 2019/0037883 A1, cited in the IDS), hereinafter Toho.
Toho discloses adding transglutaminase and glucose oxidase or adding transglutaminase, glucose oxidase and phospholipase to a food raw material containing a vegetable protein to produce a plant protein-containing food (Abstract; Claim 1).
Regarding Claims 1-2, 13-14, and 22 Toho expressly teaches preparing soybean Hamburg steaks by blending granular soybean protein, powdery soybean protein, etc. (Example 1; Table 1). First, the granular soybean protein was rehydrated with hot water, then dehydrated, allowed to absorb 40% by weight of the seasoning group mixture (including water), and thereby made into crumbled soybean, which reads on the swelling step (Example 1). The other ingredients were mixed in, including the powdery soybean protein, to obtain a binder, after which the enzyme/s transglutaminase (TG), glucose oxidase (GO), and phospholipase D (PLD) were added, which also renders Claim 11 obvious (Example 1). Toho also teaches kneading, molding or leaving the food raw material as is, following the addition of enzymes [0054].
Regarding the granular plant-derived protein being porous, because the granular soybean protein of Toho is able to absorb water, i.e. hydrate, it indicates that the component is porous.
Further regarding Claims 13 and 22, the recitation of “…composition being acted on by transglutaminase” in Claim 13 and “…composition further acted on by glucose oxidase in addition to transglutaminase…" in Claim 22, these are product-by-process claims. However, patentability is based on the product itself. If the product is the same as a product from the prior art, the claim is unpatentable. The MPEP indicates that the process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences' distinguishing the claimed product from the prior art”. See MPEP 2113: “[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). The MPEP also indicates that “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. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences' distinguishing the claimed product from the prior art” Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012). In the instant case, there is no difference between the product of Toho and the instantly claimed product by process.
Regarding Claim 5 and 18, Toho expressly teaches powdered isolated soy protein; the Examiner interprets “isolated” to encompass extracted [0064].
Regarding Claim 6, Toho expressly teaches 8.8% powdered soy protein and 18.7% granular soybean protein (Table 1). By Examiner’s calculation, this means the powdered plant-derived protein is added in an amount of 47 parts by weight per 100 parts by weight of the dry weight of the porous granular plant-derived protein. This is near the claimed amount range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
Regarding Claim 7, while Toho teaches that the enzyme preparation may contain other raw materials including calcined calcium, calcium is not a requirement [0062]. Toho also relates that TGs are derived from various origins inter alia microorganisms [0043].
Regarding Claim 8, Toho teaches the preferred that the addition amounts of TG is 1.0x10-4 U or larger, preferably 1.0x10-3 U or larger, more preferably 1.0x10-2 U or larger, per 1 g of the food raw material [0046]. This overlaps with the claimed range.
Regarding Claims 9 and 20, Toho teaches that the enzyme preparation may contain other raw materials including gluten [0062].
Regarding Claim 12, Toho teaches the preferred that the addition amounts of GO is 1.0x10-4 U or larger, preferably 1.0x10-3 U or larger, more preferably 1.0x10-2 U or larger, per 1 g of the food raw material [0046]. This overlaps with the claimed range.
Regarding Claims 17 and 19, Toho teaches making soybean Hamburg steaks comprising 18.7% granular soybean protein and 8.8% powdered isolated soybean protein, which are within the claimed amounts (Example 1).
Claims 3 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Toho, as applied to Claims 1-2 5-9, 12-14, 17-20, and 22 above, and in view of Nishimura et al. (US 2014/0010920 A1, cited in the IDS), hereinafter Nishimura.
Toho is silent on the particle size of the porous granular plant-derived protein.
Nishimura is in the related field, disclosing a process of producing meat-like foodstuff comprising textured vegetable protein, wherein textured vegetable proteins are granular vegetable protein (Abstract; Claim 1; []).
Regarding Claims 3 and 15, Nishimura expressly teaches using commercially available granular vegetable proteins of soy protein, “granular vegetable protein D” having a particle size ranging from 1 mm to 5 mm, which was used to prepare the meat-like foodstuff (Comparative Example 3, [0089]; [0092]).
Nishimura also relates vegetable protein food comprising a mix of aggregated tissue-like vegetable proteins having particle sizes ranging from 10 mm to 30 mm; 10 to 40 weight percent of tissue-like vegetable proteins, among which those having maximum particle sizes of less than 10 mm and particle sizes ranging from 1 mm to 5 mm account for at least 70 weight percent of the total amount of such tissue-like vegetable proteins; 5 to 40 weight percent of fibrous vegetable proteins with fiber lengths ranging from 5 mm to 30 mm; and a binder, and molding and coagulating the mixture by heating creating a texture analogous to natural meat.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Nishimura to the method of Toho, and use granular soy vegetable protein having varying particle size in the range taught by Nishimura, if the desire is to create a texture analogous to natural meat, and modify as needed as this is within the skills on an ordinary artisan. Note MPEP §2144.05 on this issue. Optimization of a range or other variable within the claims flows from the “normal desire of scientists or artisans to improve upon what is already generally known.” In re Peterson, 65 USPQ2d 1379, 1382.
Claims 4 and 16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Toho, as applied to Claims 1-2 5-9, 12-14, 17-20, and 22 above, and in view of Sato, T. (TW201507628A, machine translated in IP.com), hereinafter Sato.
Toho is silent on the bulk density of the porous granular plant-derived protein.
Sato discloses granular plant protein material having moderate bulk density and particularly high protein content, and softer to eat, which is desirable (Abstract; p. 2, middle of page; p. 3, 5th paragraph). The vegetable protein may be a soybean protein or a gluten, and more preferably a soybean protein (p. 3, 7th- – 8th paragraphs). The bulk density of the granular plant protein material is preferably 0.2 to 0.6 g/ml, more preferably 0.3 to 0.55 g/ml, still more preferably 0.35 to 0.5 g/ml because if the bulk density is too high, the eating sensation becomes too hard, and if it is too low, the richness is lowered (p. 6, 10th paragraph).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Sato to the teachings of Toho, and use granular soy vegetable protein with bulk density in the range taught by Sato, and optimizing according to the desired sensation and softness. Optimization of a range or other variable within the claims flows from the “normal desire of scientists or artisans to improve upon what is already generally known.” In re Peterson, 65 USPQ2d 1379, 1382. Note MPEP §2144.05.
Claims 10 and 21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Toho, as applied to Claims 1-2 5-9, 12-14, 17-20, and 22 above, and in view of Sato, T. (JP 2017-18097 A, machine translated in IP.com), hereinafter Sato2.
While Toho teaches gluten, it does not teach the amount of powdered gluten [0062].
Sato2 discloses processed food property-modifying agent containing smoked gluten, i.e. powdered gluten in contact with smoke, which provides a new texture to the processed food (Abstract; Claims 1-4).
Sato2 expressly teaches an example wherein a hamburger with granular soy protein is prepared with 1.5 parts by mass of the gluten sample was added (Example 6). The hamburger with granular soybean protein to which the gluten samples (E1) and (E2) were added had high fleshiness, juiciness and aroma (p. 10, Example 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Sato2 with that of Toho and use smoked gluten powder in the food product of Toho in order to obtain a food product, such as a hamburger analogue, with desirable texture, i.e. fleshiness and juiciness, and aroma.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Soeda et al. (US 6,383,533 B1) teaches a food containing a protein treated with at least one transglutaminase and at least one oxidoreductase, wherein the treated protein enhances the quality of the food.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANICE Y SILVERMAN/Examiner, Art Unit 1792
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