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 Objections
Claims 1 and 6 are objected to because of the following informalities:
Claim 1 recites treatment with a protein deamidase “of 5 °C to 50 °C” and should properly read “at 5 °C to 50 °C”.
Claim 6 recites “no protein aggregation occurs in a case of being mixed the nut milk” and should properly read “no protein aggregation occurs when the nut milk is mixed”. Claim 6 additionally recites “a pH of mixture” and should properly read “a pH of the mixture”.
Appropriate correction is required.
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) 1-3, 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (US 6251651 B1) in view of Kunarayakul (“Optimization of coconut protein deamidation using protein-glutaminase and its effect on solubility, emulsification, and foaming properties of the proteins”, DOI: 10.1016/j.foodhyd.2017.12.031, December 2017), Butler (https://www.healthline.com/health/food-nutrition/is-tea-acidic, October 2017), and Scott (https://driftaway.coffee/temperature/, March 2015).
Regarding Claims 1-3, Yamaguchi teaches the use of a plant protein treated with a protein-deamidating enzyme (Column 11, Lines 24-25). Yamaguchi teaches that the protein may be used in, e.g. coffee whitener (Column 21, Example 13). Note that where Yamaguchi teaches the use of deamidated plant protein in a coffee whitener, which is known in the art to be added to coffee, it would have been obvious to have added the deamidated plant protein of Yamaguchi to coffee. Note that it additionally would have been obvious to have introduced a coffee whitener cooled to below room temperature to the coffee, since coffee whiteners are commonly cooled to reduce bacterial growth.
Yamaguchi teaches that any protein which can be treated with a deamidase enzyme can be used, but does not specifically address the use of nut milks obtained from a raw material nut.
Kunarayakul teaches that deamidated coconut protein has improved solubility in acidic conditions (Page 206, Conclusion). Kunarayakul additionally teaches that coconut milk comprises coconut protein (Abstract, Paragraph 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to modify the method of Yamaguchi by utilizing coconut milk. One would have been motivated to make such a modification since Yamaguchi teaches the use of any deamidated protein, and Kunarayakul teaches that coconut milk comprises coconut protein (which can be deamidated). Note that the coconut milk of Kunarayakul is derived from coconuts and is therefore interpreted to be “obtained from a raw material nut” as claimed.
Regarding the limitation that the protein is treated with a protein deamidase at 0.2-5 U/g of protein at 5-50 °C for 3-24 hours, Yamaguchi teaches that a plant protein for use in a coffee whitener (Column 21, Example 13) may be treated at 5 U/1g protein at 37 °C for 20 hours (Column 20, Example 11).
Modified Yamaguchi teaches the use of the plant protein in a coffee whitener (which is added to coffee) but does not discuss the temperature or pH of the coffee.
Butler teaches that a typical coffee has a pH of 5.35 (Page 3, “Is tea more acidic than coffee?”), which lies within the claimed range. Scott teaches that coffee can be consumed at 120-140 °F (48.9-60 °C), which touches the claimed range.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the coffee whitener of modified Yamaguchi in a coffee with a pH of 5.35 and 60 °C. One would have been motivated to make such a modification since Butler and Scott teach that such properties are typical for coffee prior to consumption. Additionally, note that the claim does not require that any particular amount of the plant nut milk is added to the coffee. The coffee of Butler and Scott, modified with the plant nut milk of modified Yamaguchi, is therefore interpreted to have a pH as claimed.
Regarding Claim 5, Yamaguchi teaches that the dispersibility of the protein is improved compared to an unmodified protein (Column 2, Lines 51-59).
Regarding Claims 6 and 7, modified Yamaguchi teaches that the plant protein has improved solubility in acidic conditions such as in coffee (Column 11, Lines 38-41). Note that coffee has a pH of between 5 and 7 (see evidence of Butler, page 3, “Is tea more acidic than coffee?”). Modified Yamaguchi is therefore interpreted to have the protein aggregation properties as claimed.
Regarding Claim 8, modified Yamaguchi does not discuss the addition of an emulsifier or polysaccharide.
Regarding Claim 9, Yamaguchi teaches that the deamidase is derived from a Chryseobacterium organism (Column 1, Line 10-15).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi in view of Kunarayakul, Butler, and Scott as applied to Claim 1, above, taken with evidentiary reference of Alyaqoubi (“Study of antioxidant activity and physicochemical properties of coconut milk (Pati santan) in Malaysia”, Journal of Chemical and Pharmaceutical Research, 2015, 7(4):967-973, https://www.jocpr.com/articles/study-of-antioxidant-activity-and-physicochemical-properties-of-coconut-milk-pati-santan-in-malaysia.pdf)
Regarding Claim 4, modified Yamaguchi teaches the method as discussed above in regard to Claim 1, but does not discuss the protein content of coconut milk. The protein content of coconut milk ranges from 2.06-3.5 percent (see evidentiary reference of Alyaqoub, Page 971, Table 3). Therefore, the coconut milk of modified Yamaguchi is interpreted to have the protein content as claimed.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi in view of Kunarayakul, Butler, and Scott as applied to Claim 1, above, and further in view of Suppavorasatit (“Optimization of the Enzymatic Deamidation of Soy Protein by Protein-Glutaminase and Its Effect on the Functional Properties of the Protein”, DOI: dx.doi.org/10.1021/jf2028973, September 2011)
Regarding Claim 10, Yamaguchi teaches that the enzyme is derived from a Chryseobacterium organism (Column 1, Line 15) but does not discuss the specific use of Chryseobacterium proteolyticum.
Suppavorasatit teaches that Chryseobacterium proteolyticum is a known source of enzymes that can deamidate proteins (Introduction, paragraph 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize a deamidase derived from Chryseobacterium proteolyticum in the method of Yamaguchi. One would have been motivated to make such a modification since Suppavorasatit teaches that such a bacterium is a known source of an enzyme that can deamidate proteins.
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, 2, 3, 4, 7, 9, and 10 are provisionally rejected on the grounds of nonstatutory double patenting over Claims 20, 22, 23, 25, 27, 28, and 32 of copending Application No. 17/433,072. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Regarding Claims 1 and 7, Application No. 17/433,072 discloses a method for preparing nut milk comprising providing nut milk, treating the nut milk with a protein deamidase at an overlapping temperature, and introducing the nut milk to a beverage or liquid food with identical pH and temperature properties (Claim 20).
Regarding Claim 2, Application No. 17/433,072 teaches an overlapping list of beverages or liquid foods (Claim 25)
Regarding Claim 3, Application No. 17/433,072 teaches a food or beverage comprising a nut milk derived from the same raw materials (Claims 22 and 32).
Regarding Claim 4, Application No. 17/433,072 teaches a nut protein concentration according to the Claim (Claim 23)
Regarding Claims 9 and 10, Application No. 17/433,072 teaches a deamidase derived from Chryseobacterium proteolyticum (Claims 27 and 28).
This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
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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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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