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 .
The amendment filed June 10, 2026 is acknowledged. Claims 1-5 are pending in the application. Claims 6-12 have been cancelled.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Atobe et al. JP 2007097440 (hereinafter “Atobe”) (refer to the corresponding machine translation)..
With respect to claim 1, Atobe teaches a method of producing a grain and soybean-containing milk-like beverage (paragraphs [0001] and [0010]).
Regarding the recitation of “for manufacturing vegetable substitute milk using a material selected from grains and beans” as recited in the preamble of claim 1, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising grinding the material after a process selected from roasting, boiling, and boiling after roasting of the material; forming a suspension by diffusing an oil ingredient of the ground material into purified water with a high-pressure diffusion means; reducing particles of the material in the suspension to a particle size of 500 nm to 1000 nm with a wet nano-pulverizing means, and forming molecular bonds by van der Waals force between the particles of the material and water molecules of the purified water during the pulverizing; and sequentially reducing the size of the particles by repeatedly circulating the suspension through a plurality of nano-grinding devices selected from the group consisting of a bead mill, a disc mill, a colloid mill, and a high-pressure homogenizer, wherein the vegetable substitute milk is produced without adding any chemical emulsifier or stabilizer that emulsifies the water and the oil ingredient of the material in claim 1, Atobe teaches the materials used include grains and soybeans which are pulverized with pure water by a high-pressure emulsifier after heat treatment or steaming and grinding of the material to less than 50 µm to form a suspension. The suspension may be wet pulverized by a nanomizer or nanogenorator. Homogenization with any homogenizer, such as high-pressure homogenizer, may be used in the method, and homogenization may be carried out two or more times. Auxiliary materials, such as emulsifiers, can be used as appropriate but are not required, and the reference is silent with respect to the use of stabilizers (paragraphs [0010], [0013]-[0016], [0020], [0028], [0029], [0032], [0033], [0035], [0042], [0046], and [0053]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the recitation of forming molecular bonds by van der Waals force between the particles of the material and water molecules of the purified water during the pulverizing in claim 1, it is noted that this feature is a function of the claimed process.
It is reasonable to assert that forming molecular bonds by van der Waals force between the particles of the material and water molecules of the purified water during the pulverizing would occur from the method of Atobe since the instant specification indicates forming molecular binding between the molecules of the water and the particles of the materials during a pulverizing process with a wet nano-pulverizer (paragraphs [0046], [0051], [0052], and [0054]-[0055]), and Atobe teaches the suspension is wet pulverized by a nanomizer or nanogenerator (paragraphs [0016], [0028], [0029], [0032], [0033], [0035], and [0046]).
With respect to claim 2, Atobe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the material selected from the grains and the beans has human immune enhancing ingredients including antioxidant ingredients in claim 2, Atobe teaches the grains and soybeans have natural health benefits and ingredients that eliminate active oxygen (paragraphs [0007], [0026], and [0050]).
With respect to claim 3, Atobe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of further comprising a step for mixing heterogenous material selected from the group consisting of plant and nuts, bulbs and tubers, fruits, vegetable, mushroom, ascidians, functional material, sweetener, and spices with the suspension in claim 3, Atobe teaches auxiliary materials may be mixed with the suspension, and the auxiliary materials include one or more of sugars, coffee, matcha, cocoa, functional ingredients, fruit juice, coconut, sesame, sweeteners, and flavorings (paragraphs [0028], [0032], and [0042]).
With respect to claim 4, Atobe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of further comprising a mixing step for mixing a powder or a juice of a fruit with the suspension in claim 4, Atobe teaches auxiliary materials may be mixed with the suspension, and the auxiliary materials include one or more of powder and fruit juice (paragraphs [0028], [0032], and [0042]).
With respect to claim 5, Atobe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the wet nano-pulverizing means is configured in combination with a device selected from the group consisting of a bead mill, a disc mill, a colloid mill, a high-pressure valve device, a high-pressure and high-speed stirring device, and a high-pressure homogenizer to sequentially reduce the size of the particles and trigger the molecular bonds by repeatedly circulating the suspension in claim 5, it is noted that this claim language relates to functional language. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at this claimed feature since Atobe teaches a method that is substantially similar to the presently claimed method as addressed above in claim 1 and Atobe teaches the suspension is wet pulverized by a nanomizer or nanogenerator, homogenization with any homogenizer, such as a high-pressure homogenizer, valve-type high pressure processor, and high-speed stirrers, may also be used in the method, and this process may be carried out two or more times (paragraphs [0016], [0028], [0029], [0030], [0033], [0032], [0033], [0035], and [0046]).
Response to Arguments
Applicant’s remarks filed June 10, 2026 are acknowledged.
Due to the amendments to the claims, the claim objections, the 35 USC 112 rejection, and the 35 USC 102 rejection of claims 1-5 over Atobe in the previous Office Action have been withdrawn (P4-P6).
Applicant’s arguments with respect to Atobe have been fully considered, but they are unpersuasive (P6-P9).
Applicant argues Atobe does not disclose reducing the grain and soybean solids to the claimed nano-scale range. To the contrary, Atobe expressly teaches a particle size of "100 pm or less," and its working Examples grind to between 50 pm and 100 pm-that is, on the order of fifty to two hundred times larger than the 500 to 1000 nm particles required by amended claim 1. Atobe's broad disclosure of "100 pm or less" does not disclose the specific, much finer sub-range of 500 to 1000 nm with the specificity that anticipation requires. Atobe's reference to a "nanomizer" does not supply this missing limitation. The trade designation "nanomizer" does not establish that the grain solids are reduced to nano-scale; Atobe's own particle-size disclosure of 100 µm or less (50 to 100 µm in the Examples) is to the contrary. Operating at 50 to 100 µm, Atobe forms a conventional emulsion or suspension and relies on homogenization for stability with time; Atobe does not disclose, and at its disclosed micron-scale particle size could not achieve, molecular bonding between the grain solids and the water molecules. The position that molecular bonding would inherently result from Atobe's process is respectfully traversed: a process designed to produce and retain 50 to 100 µm particles does not necessarily produce 500 to 1000 nm particles exhibiting van der Waals molecular bonding, and inherency cannot rest on such a possibility. Atobe does not perform a high-pressure diffusion of the oil ingredient to form a suspension prior to a separate wet nano-pulverization that reduces the solids to nano-scale. Atobe does not disclose sequentially reducing the solids to nano-scale by circulating the suspension through a plurality of nano-grinding devices.
Examiner disagrees. The claimed invention is obvious in view of Atobe (paragraphs [0010], [0013]-[0016], [0020], [0028], [0029], [0032], [0033], [0035], [0046], and [0053]). As previously addressed, Atobe teaches the materials used include grains and soybeans which are pulverized with pure water by a high-pressure emulsifier after heat treatment or steaming and grinding of the material to form a suspension. The suspension may also be wet pulverized by a nanomizer or nanogenorator. Although the examples of Atobe teach particle sizes of 50 µm and 100 µm, Atobe is not limited to these embodiments since the reference teaches particle sizes of 100 µm or less or 50 µm or less and encompasses the presently claimed range (paragraphs [0020] and [0053]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
It is reasonable to assert that forming molecular bonds by van der Waals force between the particles of the material and water molecules of the purified water during the pulverizing would occur from the method of Atobe since the instant specification indicates forming molecular binding between the molecules of the water and the particles of the materials during a pulverizing process with a wet nano-pulverizer (paragraphs [0046], [0051], [0052], and [0054]-[0055]), and Atobe teaches the suspension is wet pulverized by a nanomizer or nanogenerator (paragraphs [0016], [0028], [0029], [0032], [0033], [0035], and [0046]). Atobe additionally teaches homogenization with any homogenizer, such as high-pressure homogenizer, may be used in the method, and homogenization may be carried out two or more times. Applicant is reminded if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
/T.L.M/Examiner, Art Unit 1793
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