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 .
Election/Restrictions
Applicant’s election of claim 15-23 in the reply filed on February 12, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 15, 16 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wojnowska et al. (“Processing of Potato Protein Concentrates and Their Properties”, Journal of Food Science, Volume 47, (1981), pp. 167-172) in view of Dabestani et al. (“Protein recovery from potato processing water: Pre-treatment and membrane fouling minimization”, Journal of Food Engineering, 195, (2017), pp. 85-96) and as evidenced by Marais et al. (“The use of trichloroacetic acid as precipitant for the determination of ‘true protein’ in animals feeds”, S. Afr, Tydskr. Vekk., 13 (s), (1983), pp. 138-139).
Regarding claims 15 and 23, Wojnowska et al. disclose a method of making a potato protein concentrate (i.e., potato protein powder) obtained from potato juice (Abstract, p. 167/Figure 1). Wojnowska et al. disclose the method of making the potato protein concentrate comprises the steps of: (a) ultrafiltering potato juice and recovering the retentate; and (b) spray-drying the retentate to produce the potato protein concentrate (p. 167/Figure 1).
Given Wojnowska et al. disclose a potato protein concentrate
Wojnowska et al. is silent with respect to a microfiltration step.
Dabestani et al. teach a process of recovering protein from potato processing water using ultrafiltration (Abstract, p. 87/2. 2.1-.2.3 of Experimental). However, Dabestani et al. teach fouling of the ultrafiltration membranes is a problem (p. 86/Column 2). Dabestani et al. teach pre-treating potato processing water using microfiltration to mitigate fouling (p. 86/Column 2). Dabestani et al. teach studies wherein the inclusion of a microfiltration process prior to ultrafiltration let to the reduction of ultrafiltration fouling by 30% assessed from transmembrane pressure (Abstract).
Wojnowska et al. and Dabestani et al. are combinable because they are concerned with the same field of endeavor, namely methods of obtaining potato proteins from potato processing waste water or potato juice. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present application, to have added an ultrafiltration pre-treatment step (i.e., microfiltration), as taught by Dabestani et al., to the method of Wojnowska et al. to minimize fouling.
Wojnowska et al. disclose that when the concentration is carried out a volume of 1:15, the spray-dried potato protein concentrate comprises 79.04 wt% crude protein (Ntotal X 6.25), 9.21 wt% mineral substances (i.e., ash), 9.16 wt% nitrogen, determined by precipitating in TCA, and 93.91 wt% total solids (p. 168/Table 1 – all values are in d.s. wt%).
As evidenced by Marais et al. ‘true protein’ is determined by precipitating protein in a solution of TCA, determining the amount of nitrogen in the precipitate, using the Kjeldahl procedure, and multiplying this value by 6.25 (p. 139/column 1). Therefore, Wojnowska et al. disclose a spray-dried potato protein concentrate comprising 57.25 wt% true protein. Here, a claimed value of about 60 wt% true protein includes values above and below 60 wt%, including 57.25 wt%. In the alternative, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Wojnowska et al. is silent with respect to free amino acid and an amino acid score. However, given Wojnowska et al. disclose a potato protein concentrate obtained from potato juice using ultrafiltration, a process substantially similar to that of the disclosed invention, inherently the potato protein concentrate would exhibit a free amino acid content and amino-acid score in the range presently claimed.
Regarding claim 16, modified Wojnowska et al. disclose all of the claim limitations as set forth above. Given the reverse osmosis step if optional, the limitations of claim 16 are satisfied by the combination of Wojnowska et al. and Dabestani et al. which do not teach step of reverse osmosis.
Regarding claim 20, modified Wojnowska et al. disclose all of the claim limitations as set forth above. Given Wojnowska et al. disclose a step of a step of spray-drying, it necessarily follows the liquid stream is evaporated prior to drying (p. 167/Figure 1). .
Regarding claims 21 and 22, modified Wojnowska et al. disclose all of the claim limitations as set forth above. Given the combination of Wojnowska et al. and Dabestani et al. teach the claimed process of making a potato protein concentration (i.e., protein powder) inherently the concentrate would exhibit the claimed potassium and amino acid score.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wojnowska et al. (“Processing of Potato Protein Concentrates and Their Properties”, Journal of Food Science, Volume 47, (1981), pp. 167-172) in view of Dabestani et al. (“Protein recovery from potato processing water: Pre-treatment and membrane fouling minimization”, Journal of Food Engineering, 195, (2017, published online September 28, 2016), pp. 85-96) as applied to claim 15, and further in view of Giuseppin et al. (US 2015/0183840).
Regarding claims 17-19, modified Wojnowska et al. disclose all of the claim limitations as set forth above. Wojnowska et al. disclose glycoalkaloids lower the nutritional value of potato proteins (i.e., antinutritional substance). Wojnowska et al. disclose lowering the content of the potato protein concentrate (a glycoalkaloid content of 47.20 mg/100 g preparation (i.e., 4.7 ppm or less than 75 ppm-p. 171/Table 8) by thermally coagulating the potato juice (p. 171/Substance lowering the nutritional value of potato proteins). However, Wojnowska et al. disclose that when a thermal process is used , the amino acids in the concentrates are reduced.
Giuseppin et al. teach a process of making a potato protein fraction from potato juice (Abstract, [0010]). Giuseppin et al. teach pre-treating potato juice to remove unwanted substances, e.g., glycoalkaloids. Giuseppin et al. teach processes for removing glycoalkaloids from potato juice streams by contact with a layered silicate or activated carbon ([0020]).
Wojnowska et al. and Giuseppin et al. are combinable because they are concerned with the same field of invention, namely methods of making potato protein products from potato juice. It would have been obvious to one of ordinary skill in the art to have removed the glycoalkaloids from the potato juice of Wojnowska et al. using a layered silicate or activated carbon, as taught by Giuseppin et al. in order to obtain a potato protein product without unwanted and toxic glycoalkaloids. One of ordinary skill in the art would have looked to Giuseppin et al. because Wojnowska et al. disclose that thermal processes for removing glycoalkaloids are detrimental to the quality of the potato protein.
While Giuseppin et al. disclose removing glycoalkaloids as a pre-treatment, the reference is silent with respect to conducting the removing step after microfiltration or after ultrafiltration. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP §2144.04 IVC).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759