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 September 26, 2025 is acknowledged. Claims 1-5 are pending in the application. Claims 6-12 have been cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 26, 2025 has been entered.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
In claim 1 at line 23, it is suggested to remove the space after “molecular-“ and before “bonding” to correct the typographical error.
In claim 1 at line 24, it is recommended to remove the space after “wet-“ and before “nanopulverizer” to correct the typographical error.
In claim 1 at line 25, it is suggested to amend “disk” to “disc” before “mill” to correct the typographical error.
In claim 1 at line 29, it is recommended to amend “that’s” before “classified” to “that is”.
In claim 1 at line 29, it is recommended to insert “a” after “as” and before “carcinogen”.
In claim 1 at line 32, it is suggested to amend “wastes,” after “any” and before “; and” to “waste” to remove the “s” and comma “,” and correct the grammatical and typographical errors.
In claim 5 at line 2, it is suggested to remove the comma “,” after “step” and before “further” to correct the typographical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 recites “(carrageenan) that’s classified as a carcinogen by Japanese Food and Drug Administration” at lines 29-30 (emphasis added). While the instant specification provides support for carrageenan being classified as a carcinogen, the specification fails to provide support for the limitation “by Japanese Food and Drug Administration” as claimed. See paragraph [3] of the specification and the recitation of “the stabilizer ‘carrageenan’ induced cancer by animal testing”.
Claim 1 also recites “it provides a solution for increasing antiviral immunity for human health by 100% molecule bonding” at lines 30-31. However, this limitation is not explicitly or implicitly supported by the specification or the originally filed claims.
Claim 1 additionally recites “by preventing occurrence of useless pieces that are discarded” at line 33. However, this limitation is not explicitly or implicitly supported by the specification or the originally filed claims.
Claims 2 and 3 are not specifically discussed but are rejected due to their dependence on claim 1.
Claim 4 recites “a suspension of fruit selectively for making Ready To Drink (RTD) products” at lines 3-4. However, this limitation is not explicitly or implicitly supported by the specification or the originally filed claims.
Claim 5 is not specifically discussed but is rejected due to its dependence on claim 1.
Accordingly, there is no indication that applicant had possession of the presently claimed invention at the time of the filing the instant application.
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 1-5 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.
Independent claim 1 recites “the step of” at line 2. This recitation lacks antecedent basis as there is no prior mention of a step in the claim. Therefore, the scope of claim 1 is indefinite. For the purpose of the examination, the recitation of “comprising the step of” at line 2 of claim 1 (emphasis added) is interpreted as “comprising”.
Claim 1 also recites “a molecule bonding means selected from a combination of a wet-nanopulverizer, a bead mill, a disk mill and a colloid mill” at lines 24-25 (emphasis added). It is unclear what is encompassed by this limitation. More specifically, it is uncertain if the recitation is intended to be a Markush grouping OR if the limitation requires a combination of all of the listed equipment. Therefore the scope of the claim is indefinite. For the purpose of the examination, the recitation of “a molecule bonding means selected from a combination of a wet-nanopulverizer, a bead mill, a disk mill and a colloid mill” at lines 24-25 (emphasis added) of claim 1 is interpreted as “a molecule bonding means selected from the group consisting of a wet-nanopulverizer, a bead mill, a disk mill and a colloid mill” (emphasis added). Applicant is reminded that claim language defined by a Markush grouping requires selection from a closed group "consisting of" the alternative members. Id. at 1280, 67 USPQ2d at 1196. See also Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1376-78, 2020 USPQ2d 3197 (Fed. Cir. 2020) (stating that there is a strong presumption that a claim element set off with "consisting of" is closed to unrecited elements.). In a Markush grouping, alternatives may be set forth as "a material selected from the group consisting of A, B, AND C" (emphasis added). See MPEP 2111.03 and 2173.05.
Claim 1 additionally recites “thickener (carrageenan) that’s classified as carcinogen by Japanese Food and Drug Administration as harmful” at lines 29-30. It is unclear what is encompassed by this claim language. More specifically, "(carrageenan)" renders the claim indefinite because it is unclear whether the phrase within the parentheses is part of the claimed invention. Also, the metes and bounds of “that’s classified as carcinogen by Japanese Food and Drug Administration as harmful” cannot readily be ascertained, and one of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention. Therefore, the scope of claim 1 is indefinite. For the purpose of the examination, the recitation of “thickener (carrageenan) that’s classified as carcinogen by Japanese Food and Drug Administration as harmful” at lines 29-30 (emphasis added) in claim 1 is interpreted as “carcinogenic thickener” (emphasis added).
Claim 1 further recites “increasing productivity by preventing occurrence of useless pieces that are discarded” at lines 32-33. It is unclear what is meant by this claim language. More specifically, it is not readily apparent the productivity that is being increased. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “increasing productivity by preventing occurrence of useless pieces that are discarded” at lines 32-33 (emphasis added) is interpreted as “preventing occurrence of useless pieces that are discarded”.
Claim 2 recites “ranked by having human immune enhancing ingredients including antioxidant ingredients for health according to beverage ingredient design” at lines 4-5. It is unclear what is encompassed by this claim language, and its ordinary and customary meaning is uncertain. The broadest reasonable interpretation of this claim language is unclear, and specification fails to provide any guidance. Additionally, it is uncertain how the ranking according to beverage ingredient design is determined or measured and how it is figured into the claimed method. Therefore, the scope of claim 2 is indefinite. For the purpose of the examination, the recitation of “ranked by having human immune enhancing ingredients including antioxidant ingredients for health according to beverage ingredient design” at lines 4-5 of claim 2 (emphasis added) is interpreted as “that have human immune enhancing ingredients including antioxidant ingredients for health” (emphasis added).
Claim 3 recites “the suspension of the ground material” at lines 3-4, and this claim depends upon claim 1. It is unclear what is meant by this limitation. More specifically, the recitation of “the suspension of the ground material” lacks antecedent basis as there is no mention of a suspension of ground material in claim 1. Therefore, the scope of claim 3 is indefinite. For the purpose of the examination, the recitation of “the suspension of the ground material” at lines 3-4 in claim 3 (emphasis added) is interpreted as “the materials and water in step (2)” (emphasis added).
Claim 4 recites “further comprising a mixing step for mixing a powder, a suspension of a fruit selectively for making Ready To Drink (RTD) products” (emphasis added). It is unclear what is encompassed by this limitation. It is uncertain if the powder AND the suspension of a fruit are mixed or whether the powder OR the suspension of a fruit are mixed. Additionally, it is uncertain what the powder or the suspension of fruit are mixed with. Therefore, the scope of the claim is indefinite. For the purpose of the examination, the recitation of “further comprising a mixing step for mixing a powder, a suspension of a fruit selectively for making Ready To Drink (RTD) products” in claim 4 (emphasis added) is interpreted as “further comprising a mixing step for mixing a powder or a suspension of a fruit selectively for making Ready To Drink (RTD) products with the materials and water in step (2)” (emphasis added).
Claim 5 recites “the suspension of the ground material” at lines 5-6, and this claim depends upon claim 1. It is unclear what is meant by this limitation. More specifically, the recitation of “the suspension of the ground material” lacks antecedent basis as there is no mention of a suspension of ground material in claim 1. Therefore, the scope of claim 5 is indefinite. For the purpose of the examination, the recitation of “the suspension of the ground material” at lines 5-6 in claim 5 (emphasis added) is interpreted as “the materials and water” (emphasis added).
Claim Rejections - 35 USC § 102
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 limitation 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 limitation of comprising, (1) downsizing particle size of the material to a size sufficient to form molecular bonds with water molecules in a liquid state by a wet nanopulverizing means after a process selected from roasting, boiling and grinding of the material in claim 1, Atobe teaches the materials used include grains and soybeans and are wet pulverized by a nanomizer or nanogenerator after heat treatment, steaming, or grinding (paragraphs [0010], [0013]-[0016], [0020], [0028], [0029], [0032], [0033], [0035], and [0046]).
Regarding the limitation of (2) forming molecular-bonding between molecules of the water and the materials with a molecule bonding means selected from the group consisting of a wet-nanopulverizer, a bead mill, a disc and a colloid mill to sequentially reduce the size of the materials again and trigger molecule bonding by repeatedly circulating the materials and water in claim 1, it is noted that the features of forming molecular-bonding between the molecules of the water and the materials and triggering molecular bonding are a function of the claimed process.
It is reasonable to assert that forming molecular-bonding between the molecules of the water and the materials and triggering molecular bonding 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, a bead mill, a disc mill, or a colloid mill and the pulverizing may be repeated (paragraphs [0046], [0051], [0052], and [0054]), and Atobe teaches water and the downsized grains and soybeans are wet pulverized by a nanomizer or nanogenerator and this process may be carried out two or more times (paragraphs [0016], [0028], [0029], [0032], [0033], [0035], and [0046]).
Regarding the claim language of thereby (1) a pure vegetable substitute milk as soft as animal milk is produced without generating sediment, (2) chemical-free beverage produced without adding any chemical-emulsifier, stabilizer that emulsifies water and oil component of the materials, and carcinogenic thickener; (3) it provides a solution for increasing antiviral immunity for human health by 100% molecule bonding of antioxidant immune components of the materials without any waste; and (4) it has effect of preventing occurrence of useless pieces that are discarded in claim 1, it is noted that this claim language relates to the resulting effect of practicing the claimed method. 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 these claimed features since Atobe teaches a method that is substantially similar to the presently claimed method as addressed above and Atobe teaches making the ground particle size finer reduces and eliminates problems such as residual dissolution (poor dissolution) as well as defects such as powderiness, the produced grain and soybean-containing milk-like beverage has smooth mouthfeel and improved stability, the materials used in the beverage have natural health benefits and ingredients that eliminate active oxygen, all of the nutrients of the materials can be easily provided without generating waste, and auxiliary materials, such as emulsifiers and thickeners, can be used as appropriate but are not required, and the reference is silent with respect to the use of stabilizers (paragraphs [0001], [0007], [0009], [0012], [0020], [0026], [0028], [0033], [0042], [0046], and [0050]). Additionally, this claim language is not considered to confer patentability to the claim.
With respect to claim 2, Atobe is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the limitation of wherein the materials selected from the grains and the beans that have human immune enhancing ingredients including antioxidant ingredients for health 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 limitation 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 materials and water in step (2) in claim 3, Atobe teaches auxiliary materials may be mixed with water and downsized grains and soybeans, and the auxiliary materials include one or more of sugars, coffee, matcha, cocoa, functional ingredients, fruit juice, coconut, sesame, sweeteners, and flavorings (paragraphs [0028] 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 limitation of further comprising a mixing step for mixing a powder or a suspension of a fruit selectively for making Ready To Drink (RTD) products with the materials and water in step (2) in claim 4, Atobe teaches auxiliary materials may be mixed with water and downsized grains and soybeans, and the auxiliary materials include one or more of sugars, powder, and fruit juice (paragraphs [0028] 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 limitation of wherein the molecular bonding step further comprises configuring the wet nano-pulverizing process in combination with a component selected from the group consisting of a bead mill, a disc mill, a colloid mill, a high-pressure valve, a high-speed stirrer, and a high-pressure homogenizer to sequentially reduce the size of particles of the material and trigger molecular bonding by repeatedly circulating the materials and water in claim 5, Atobe teaches water and the downsized grains and soybeans are 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 September 26, 2025 are acknowledged.
Applicant’s arguments with respect to Atobe have been fully considered, but they are unpersuasive (P4-P6).
Applicant argues Atobe does not disclose roasting or boiling rains or beans at a temperature sufficient to convert starch into soluble dextrin. The present invention requires that step before grinding. The present invention also requires nanopulverization to reduce the material to particles in the range of 500 to 1000 nanometers. Atobe teaches only micron-sized particles that remain one hundred times larger. The present invention requires circulation of the material through devices such as a wet nanopulverizer or bead mill to trigger molecular bonding with purified water molecules. Atobe does not disclose circulating or molecular bonding. Atobe’s explicit disclosure of 100 µm particle size with controlled size distribution demonstrates that its process is designed to achieve and maintain micron-scale particles. A process designed for micron-scale particles does not inevitably produce nanoparticles. Atobe’s single-pass homogenization at 15-50 MPa cannot achieve the molecular binding that requires the claimed combination of high-pressure diffusion followed by wet nano-pulverization with circulation.
Examiner disagrees. In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., roasting or boiling grains or beans at a temperature sufficient to convert starch into soluble dextrin; reducing the material to particles in the range of 500 to 1000 nanometers) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, Atobe teaches the claimed invention. As addressed above, Atobe teaches downsizing the grains and soybeans after roasting, boiling, or grinding since Atobe teaches the materials used include grains and soybeans and are pulverized by a nanomizer or nanogenerator after heat treatment, steaming, or grinding (paragraphs [0010], [0013]-[0016], [0020], [0028], [0029], [0032], [0033], [0035], and [0046]). Atobe also teaches water and the downsized grains and soybeans are wet pulverized by a nanomizer or nanogenerator and this process may be carried out two or more times (paragraphs [0016], [0028], [0029], [0032], [0033], [0035], and [0046]). It is reasonable to assert that forming molecular-bonding between the molecules of the water and the materials and triggering molecular bonding 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, a bead mill, a disc mill, or a colloid mill and the pulverizing may be repeated (paragraphs [0046], [0051], [0052], and [0054]), and Atobe teaches water and the downsized grains and soybeans are wet pulverized by a nanomizer or nanogenerator and this process may be carried out two or more times (paragraphs [0016], [0028], [0029], [0032], [0033], [0035], and [0046]).
Applicant argues the present invention explicitly excludes all emulsifiers, stabilizers, and carrageenan, solving the health concerns associated with these chemicals. Atobe lists emulsifiers among materials that “can be appropriately used,” indicating contemplation of chemical additives as part of its formulation approach. Atobe follows conventional practice of using additives for stability, while the present invention achieves stability through molecular binding alone.
Examiner disagrees. Although Atobe auxiliary materials, such as emulsifiers and thickeners, can be added, Atobe is not limited to this embodiment since the reference teaches the auxiliary materials are used as appropriate but are not required (paragraphs [0028] and [0042]). Additionally, Atobe is silent with respect to the use of stabilizers and carrageenan (paragraphs [0028] and [0042]). Applicant is reminded that 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).
Applicant argues the present invention achieves unexpected results. The product remains stable without sediment. Atobe requires additives to address sedimentation The present invention avoids digestive disorders because roasting converts starch into dextrin. Atobe does not disclose starch dextrinization and cannot achieve that effect. The present invention eliminates waste and increases productivity by forty percent. Atobe still produces waste material These are not predictable results from homogenization. They arise only from the combination of dextrinization, nanopulverization, and exclusion of chemicals.
Examiner disagrees. The benefits as described by Applicant are indeed expected in view of the prior art since Atobe teaches the materials used include grains and soybeans and are wet pulverized by a nanomizer or nanogenerator after heat treatment, making the ground particle size finer reduces and eliminates problems such as residual dissolution (poor dissolution) as well as defects such as powderiness, the produced grain-containing milk-like beverage has smooth mouthfeel and improved stability, the grains used in the beverage have natural health benefits and ingredients that eliminate active oxygen, and all of the nutrients of the grains can be easily provided without generating waste (paragraphs [0007], [0009], [0010], [0012]-[0016], [0020], [0026], [0028], [0029], [0032], [0033], [0035], [0046], and [0050]). Applicant is reminded any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793