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
Application Status
This application is a Non-Provisional patent application filed on 09/04/2025.
Claims 166-169, 175-176, , 178-180, and 181 are currently pending in the instant application.
In response to a previous Office action, a Non-Final Rejection Office action (mailed on 06/17/2026), Applicants filed a response and an amendment on 09/15/2026, amending claims 166, 169, 176, canceling claims 170-174, and 177, and adding new claims 178-180, and 181 is acknowledged.
Applicants' arguments filed on 09/15/2026, have been fully considered and are deemed persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claims 166-169, 175-176, , 178-180, and 181 are present for examination.
Priority
Acknowledgement is made of applicants claim for priority of US Provisional applications 63/692,708, filed on 09/09/2024, and 63/765,492, filed on 02/28/2025.
Withdrawn-Drawings objections
The previous objection of the Drawings for reciting incorrect Drawings not following Sequence Rules, is withdrawn in view of Applicant’s amendment to the Drawings and persuasive arguments. See particularly 37 CFR 1.821(d).
Withdrawn-Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
A. Written Description
The previous rejection of Claims 166-171, 173, 175 and 176-177 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
Withdrawn-Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
MPEP-2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is "not novel") over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. See, e.g., MPEP § 2114, subsections II and IV.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
MPEP-2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an "enabled disclosure;"
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
The previous rejection of Claims 166-171, 173 and 175-177 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention as anticipated by Clark et al. (Use of enzymes to de-flavor pea protein. US 2020/0245640 A1, publication 08/06/2020), is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
New-Claim Rejections – AIA 35 U.S.C. § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
According to MPEP 2143:
“Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products)
in the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in
either the same field or a different one based on design incentives or other market
forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art
reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.”
Claims 166-167, 168, 169, 175-176, 178-79, and 181 are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al. (Use of enzymes to de-flavor pea protein. US 2020/0245640 A1, publication 08/06/2020), in view of common knowledge of a skilled artisan.
The Broadest Reasonable Interpretation (BRI) of claim 166, which is drawn to any pea protein modification composition, comprising: an enzyme blend including at least any transferase and any hydrolase in a carrier (liquid); wherein the composition is configured to treat a pea protein comprising at least one of pea protein isolate or pea protein concentrate at a temperature within a range of 18oC to 35oC to produce modified pea protein having reduced presence of at least one off-flavor comprising a beany compound compared to untreated pea protein.
Regarding claims 166-167, 168, 169, 175-176, 178-79, and 181, Clark et al. teach a method for producing a pea plant protein product comprising treating the plant protein with at least one an exogenous enzymes comprising an oxidoreductase and/or a hydrolase and a combinations thereof, wherein the treated plant protein product has reduced undesirable flavors and reduced undesirable aromas compared to an untreated plant protein product, wherein the oxidoreductase or the hydrolase is selected from the group consisting of esterase, nuclease, phosphodiesterase, lipase, phosphatase, glycosylase, glycoside hydrolase, protease, peptidase, mannosyl-transferase 2, a glycosyltransferase, which transfer mannose to an acceptor molecule; beta-glucosidase A, glucan 1,3-beta-glucosidase, and combinations thereof, wherein the exogenous enzyme is an oxidoreductase, wherein the oxidoreductase is a laccase, wherein said enzymes are mixed with pea proteins at pH 5.5-7.5 at 30 to 50oC for 10 minutes to 2 hours, wherein the method further comprising adding the exogenous enzyme to a solution (carrier) or suspension of plant protein, wherein the plant protein comprises plant protein isolate or plant protein concentrate, and adding the exogenous enzyme to a solution (carrier) or suspension of plant protein containing at least 50% (weight/weight) plant protein on a dry weight basis, wherein at least one the exogenous enzyme is added in an amount sufficient to increase the viscosity of a solution or suspension of the plant protein or increase the water holding capacity and/or water binding of a solution or suspension of the plant protein, wherein the method further comprising heating the treated plant protein to a temperature and for a time sufficient to inactivate the exogenous enzyme, wherein the plant protein comprises pea protein, rice protein, or combinations thereof, wherein the plant source comprises pea, wherein the method further comprises the step of drying the plant protein product, wherein the reduced undesirable flavor is a pea flavor or a bitterness flavor, wherein the reduced undesirable aroma is a beany aroma, and further comprising preparing a food product with the treated plant protein (see, abstract, para 14, 16, 31, claims 1-15).
Claim 168 is included in this rejection because Clark et al. indeed teach using peptidase inherently an amino peptidase, and further teach an enzyme which breaks Sulfur-Sulfur bond inherently a sulfo lyase (see, para 16).
Since, pea protein contains off flavor, bitter flavor or a beany flavor, the pea protein inherently comprises an 20% less off-flavor compound, bitter favor compound as well as astringent compound (for claims 175-176).
Because the composition comprising pea protein of the claimed invention and that of composition comprising pea protein of the reference is one and the same, Examiner takes the position that the limitations of claims 175, 176, 1178-179 and 181 inherently associated with the pea protein composition of Clark et al. Since the Office does not have the facilities for examining and comparing applicants' pea protein for reducing recited off-flavor or chemicals, or increased fiber content by the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Therefore, it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention as a whole before the effective filing date of the invention was made by combining the teachings of Clark et al. and common knowledge of a skilled artisan to optimize pea protein for reducing recited off-flavor or chemicals, or increased fiber content by trial and error method, which are well known to a skilled artisan and modify Clark et al. in view of the common knowledge of a skilled artisan in the same field and it is obvious to an ordinary skilled in the art in the same field to arrive the claimed invention.
One of ordinary skilled in the art would have been motivated to modify pea protein and reducing off-flavor, bitter tase, astringency properties in the pea protein in order to make pea protein based food having less astringent, bitter and off-flavor, which is commercially, industrially, food industry and financially beneficial.
One of ordinary skilled in the art would have a reasonable expectation of success because Clark et al. could successfully produce modified pea protein having less astringent, bitter and off-flavor.
Thus, the above references render the claims prima facie obvious to one of ordinary skill in the art.
Conclusion
Status of the claims:
Claims 166-167, 168, 169, 175-176, 178-79, and 181 are rejected.
Claims 180 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Applicant's amendment (see, claims 166-167, 168, 169, 175-176, 178-79, and 181) necessitated the new ground(s) of rejection presented in this Office action.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IQBAL H CHOWDHURY whose telephone number is (571)272-8137. The examiner can normally be reached on M-F, at 9:00-5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Iqbal H. Chowdhury, Primary Patent Examiner
Art Unit 1656 (Recombinant Enzymes and Protein Crystallography)
US Patent and Trademark Office (USPTO)
Ph. (571)-272-8137 and Fax (571)-273-8137
/IQBAL H CHOWDHURY/
Primary Examiner, Art Unit 1656
