DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/18/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 24, 34, 37, 40-45, 47 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over United States Patent No. 4,308,284 (NODA) in view of United States Patent No. 2010/0129821 (FREDRICKS).
Claim 24
NODA teaches koji prepared with Aspergillus oryzae (col. 3, lines 60-65). The koji substrate can be rice and steamed (col. 3, lines 15-35 and 40-45). NODA is silent as to using a strain with the claimed properties. However, NODA teaches at col. 5, lines 35-48 and col. 7, lines 35-41 that the amount and activity of protease and amylase are important to produce large amounts of useful components such as sugars, alcohols and organic acids and are organoleptically excellent. Table 1 of NODA shows that koji of NODA contains some specific protease activity and specific amylase activity. It would have been obvious to use a strain with the same properties, as NODA teaches the amount and activity of protease and amylase are important to produce large amounts of useful components such as sugars, alcohols and organic acids and are organoleptically excellent.
SEQ ID NO. 67 of FREDRICKS comprises SEQ ID NO. 1, as claimed:
PNG
media_image1.png
638
758
media_image1.png
Greyscale
SEQ ID NO: 67 of FREDRICKS shows that SEQ ID NO:1 is a sequence that occurs in Aspergillus oryzae. [0180] and Table 1 of FREDRICKS shows that SEQ ID NO. 67 as a phylogenetically sequence. Thus, the sequence is prevalent enough to be used to identify other microorganisms that contain the sequence. It would have been obvious to one skilled in the art to use a microorganism comprising SEQ ID NO: 1 with the properties taught by NODA, as FREDRICKS teaches it a known sequence found in such strains.
Claim 34 recites a rice hot pepper paste comprising the rice koji of claim 24, wherein one or more phenol compounds selected from 2-methoxy phenol or phenol is(are) not detected.
Claim 37 recites a rice hot pepper paste comprising the rice koji of claim 24, wherein the Aspergillus oryzae CJ 1354 produces no toxin and causes no allergy.
NODA provides no indication that a toxic or allergic reaction results. It is a food product designed for consumption. There is no indication that 2-methoxy phenol or phenol is(are) not detected.
Claims 40-45
NODA teaches at col. 5, lines 35-48 and col. 7, lines 35-41 that the amount and activity of protease and amylase are important to produce large amounts of useful components such as sugars, alcohols and organic acids and are organoleptically excellent. Table 1 of NODA shows that koji of NODA contains some specific protease activity and specific amylase activity. As NODA teaches that it is desirable to provide Aspergillus oryzae with enhanced amylase activity, it would have been obvious to one skilled in the art to use strains aspergillus oryzae that express amylase at high levels.
Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
As to the parameters of claims 40-45, applicant has created/chosen their own parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Claim 47
As to the manner in which the koji is prepared, does not result in a patentable difference. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
As to the whiteness, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Claims 28, 31, and 46 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over NODA and FREDRICKS as applied to claim 24 above, and further in view of United States Patent Application Publication No. 2004/0126458 (LEE).
Claim 28 recites that the rice hot pepper paste comprising the koji of claim 24, hot pepper powder, edible alcohol and rice.
Claim 31 recites that the rice hot pepper paste comprises steamed rice.
Claim 46 recites a hot pepper paste comprising the rice koji of claim 24.
As to claims 28, 31, and 46, NODA also teaches at col. 5, lines 35-48 and col. 7, lines 35-41 that the amount and activity of protease and amylase are important to produce large amounts of useful components such as sugars, alcohols and organic acids and are organoleptically excellent. Thus, it would have been obvious to select strains with increased amylase activities to enhance the organoleptic properties of the koji.
NODA is silent as to hot pepper paste powder.
LEE teaches that hot pepper powders can be added and in amounts that allow for the level of heat to be varied [0032]. Thus, it would have been obvious to add hot pepper paste with the KOJI of NODA, as this allows one to vary the amount of heat in the product.
NODA teaches that the koji substrate can be rice and steamed (col. 3, lines 15-35 and 40-45).
Response to Arguments
At the outset, it is noted that the indefiniteness rejection under 35 USC 112 and anticipation rejection under 35 USC 102 are withdrawn. The indefiniteness rejection under 35 USC 112 is withdrawn in view of the changes to claims 47.
The anticipation rejection under 35 USC 102 is withdrawn in view of the Declaration filed 2/27/2026.
As to the obviousness rejection, applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed 2/27/2026 is insufficient to overcome the obviousness rejection of claims 24, 28, 31, 34, 37, 40-47 based upon NODA and FREDRICKS as set forth in the last Office action.
While applicant’s arguments and the Declaration establish that the strains are not identical, Table 1 of NODA shows that koji of NODA contains some specific protease activity and specific amylase activity. It would have been obvious to use a strain with the same properties, as NODA teaches the amount and activity of protease and amylase are important to produce large amounts of useful components such as sugars, alcohols and organic acids and are organoleptically excellent. Moreover, FREDRICKS establishes that SEQ ID NO. 1 (i.e., see claim 24) is not a unique sequence. SEQ ID NO: 67 of FREDRICKS shows that SEQ ID NO:1 is a sequence that occurs in Aspergillus oryzae. [0180] and Table 1 of FREDRICKS shows that SEQ ID NO. 67 as a phylogenetically sequence. It would have been obvious to one skilled in the art to use a microorganism comprising SEQ ID NO: 1 with the properties taught by NODA, as FREDRICKS teaches it a known sequence found in such strains.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791