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 Dec. 30, 2025 has been entered. Claims 1 and 3-23 are pending. Claim 1 has been amended.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 and 3-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nagashima (JP H08-208496 Al, Aug. 13, 1996) in view of Lena et al. (US 2006/0083828 A1; April 20, 2006) and Kacker et al. (EP 2509433 A1; Oct. 17, 2012).
Regarding claims 1 and 6, Nagashima teaches a method for the preparation of dried fermented spice plant particles comprising:
Providing freshly harvested spice plant parts ([0011] of English Translation),
Breaking up the freshly harvest spice plant parts ([0012]),
Freezing the broken-up spice plant parts ([0013]-[0016]),
Defrosting the frozen broken up spice plant parts ([0017]), and
Drying the defrosted broken up spice plant parts to obtain dried fermented spice plant part particles ([0018]).
Nagashima teaches that the defrosting can be carried out by heat or the like, or carried out by leaving the composition at room temperature for a period of time ([0017]). Room temperature is known to be about 20-22 C, thus falling within the claimed range of 15-40 C.
While Nagashima teaches drying the defrosted broken up spice plant parts, Nagashima fails to specifically teach that it is done in a closed system.
Lena teaches a method of dehydrating peppers, wherein the method comprises drying the pepper pieces in a convection oven, which corresponds to applicant’s closed system as claimed and meets the drying apparatus as required by claim 6. Lena teaches that the use of a convection oven enables the process to become more sanitary and efficient ([0005]-[0006]).
It would have been obvious to one of ordinary skill in the art to have the drying process of Nagashima be performed in a closed system as taught by Lena. Doing so would yield the predictable result of producing a more sanitary product in a more efficient manner in the process of Nagashima as taught by Lena.
The examiner notes that step (f) is optional and therefore not required.
Nagashima teaches dried fermented spice plant particles as described above, but fails to specifically that the spice plant parts are vanilla beans.
Kacker teaches a method of recovering aroma compounds from vegetable material, wherein the method comprises a step of drying the vegetable material ([0030]-[0040]). Kacker teaches that the method does not compromise the quality of the vegetable material and therefore provides a higher recovery of aroma compounds ([0010]-[0015]). Kacker teaches using partially fermented vegetable material to further dry it and produce extracted aroma compounds, wherein the vegetable material can be vanilla beans ([0019] and [0030]).
It would have been obvious to one of ordinary skill in the art to use vanilla in the method of Nagashima as Kacker teaches that it is well known in the art to extract aroma compounds from vanilla and Nagashima teaches that other plants can be used ([0009]).
With respect to the limitations “whereby ice crystals are formed that break up the cell membrane to release glucovanillin and beta-glucosidases” and “whereby the glucovanillin is converted into vanillin by enzymatic hydrolysis of the released beta-glucosidases”, the examiner notes that Nagashima teaches the same steps as claimed that result in such function (e.g. the freezing and the defrosting steps), and therefore the process of the combined prior art, wherein vanilla plant parts are processed according to the method of Nagashim, would necessarily result in ice crystals formed that break up the cell membrane to release glucovanillin and beta-glucosidases (e.g. due to the freezing step) and conversion of glucovanillin into vanillin by enzymatic hydrolysis of the released beta-glucosidases (e.g. due to the defrosting step). The claims do not recite any additional method steps or conditions that are different than the method steps as taught by Nagashima and therefore the freezing step and defrosting step would necessarily result in the claimed limitations absent a showing otherwise.
Regarding claim 3, Nagashima teaches that the freezing can take place at a temperature ranging from -5 C to -30 C ([0013]-[0016]), thus falling within the claimed range of -1 C to -80 C.
Regarding claim 4, Nagashima teaches that the freezing and thawing are done for a certain period of time that is well within the ordinary skill. Nagashima teaches that the freezing is performed until all of the spice plants parts reach the targeted temperature and can be held there for a desired time with no negative effect ([0014]-[0018]).
Therefore, it would have been obvious to one of ordinary skill in the art to freeze and/or thaw the spice plant parts over a period of at least 1 day depending on the amount of material to be frozen/thawed. A larger amount of material will take a longer time to freeze and thaw. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 5, Nagashima teaches drying, but fails to specifically teach a temperature.
As stated above, Lena also teaches drying pepper pieces in a convection over and further teaches a drying temperature of 125-155 F, or 57-68 C ([0005]-[0007]), which falls within the claimed temperature range of 20 C to 70 C.
It would have been obvious to use a similar temperature as taught by Lena in the process of Nagashima as Lena teaches that such temperature is suitable for drying plant parts and would predictably be a suitable temperature to dry the tea of Nagashima.
Regarding claim 7, as stated above, Nagashima and Lena both teach a drying process. Lena further teaches that the drying is carried out in a convection oven (which circulates air) for a period of at least 48 hours ([0007]), which fails within the claimed time of at least 5 hours.
It would have been obvious to use a similar time for drying as taught by Lena in the process of Nagashima as Lena teaches that such time is suitable for drying plant parts and would predictably be a suitable time to dry the tea of Nagashima.
Regarding claim 8, Nagashima in view of Kacker teaches dried fermented spice plant particles that can be vanilla beans as described above with respect to claim 1, but fails to specifically teach vanilla pod particles.
With respect to the yield of vanillin, Kacker teaches that the method does not compromise the quality of the vegetable material and provides a higher recovery of aroma compounds ([0010]-[0015]), but fails to specifically teach a 70% yield of vanillin based on original vanillin content.
However, it would have been obvious to one of ordinary skill in the art to vary the processing conditions, such as the drying process, including temperature and time, to result in a desired yield. This is merely routine experimentation that is well within the art.
Regarding claim 9, Kacker further teaches collecting a condensate-water phase from the drying step and recovering flavor substances contained in the condensate water phase ([0050]-[0056]).
It would have been obvious to perform such additional steps in the method of Nagashima in order to further obtain aroma compounds. This uses all the by products of the processing steps and therefore would increase the aroma compound yield in the process of Nagashima.
Regarding claim 10, as stated above with respect to claim 9, it would have been obvious to recover the flavor substances contained in the condensate water phase after the drying step of Nagashima.
Kacker further teaches that such process includes providing the condensate water phase containing flavor substances, providing an adsorption material, passing the condensate water phase through the adsorption material and separating the flavor substances from the adsorption material to obtain a flavor extract ([0050]-[0056]).
Kacker teaches that the condensate water phase can be concentrated using adsorption, but fails to specifically teach stripping the flavor substances from the adsorption material with a solvent or solvent mixture to obtain a flavor extract.
As stated above, Nagashima also discloses obtaining a flavor extract and further teaches that a solvent can be used to obtain the flavor extract ([0008] and [0016]).
As such process of using a solvent is well known in the art. It would have been obvious to further extract the flavor from the adsorption material of Kacker using a well known process as in Nagashima.
As stated above, it would have been obvious to recover the flavor substances contained in the condensate water phase after the drying step of Nagashima. It further would have bene obvious to process the condensate water phase according to the methods of Kacker and Nagashima as described above in order to obtain a flavor extract from the condensate water phase. This is merely combining known processes for obtaining flavor extracts from plants and would have been obvious to do so in order to efficiently obtain as much extract as possible.
Regarding claim 11, Nagashima in view of Kacker teaches producing vanilla flavor substances from the condensate water phase as described above.
With respect to the yield, Kacker teaches that the method does not compromise the quality of the vegetable material and provides a higher recovery of aroma compounds ([0010]-[0015]), but fails to specifically teach a 0.1-20% yield of flavor substances based on the original aroma content.
However, it would have been obvious to one of ordinary skill in the art to vary the processing conditions, such as the adsorption rate, to result in a desired yield. This is merely routine experimentation that is well within the art.
Regarding claim 12, Nagashima in view of Kacker render obvious dried fermented vanilla bean particles obtained by the process of claim 1 ([0019]).
Regarding claim 13, as stated above, Nagashima and Lena in view of Kacker render obvious a vanilla flavoring extract obtained by the process of claim 9.
Regarding claim 14, Nagashima teaches dried fermented spice plant particles, but fails to specifically teach vanilla bean particles.
Kacker teaches using partially fermented vegetable material to further dry it and produce extracted aroma compounds, wherein the vegetable material can be vanilla ([0019] and [0030]).
With respect to the yield and amount in the dry product, Kacker teaches that the method does not compromise the quality of the vegetable material and provides a higher recovery of aroma compounds ([0010]-[0015]), but fails to specifically teach a 70% yield of vanillin based on original vanillin content.
However, it would have been obvious to one of ordinary skill in the art to vary the processing conditions, such as the drying process, including temperature and time, to result in a desired yield and final amount. This is merely routine experimentation that is well within the art.
It further would have been obvious to one of ordinary skill in the art to use vanilla in the method of Nagashima as Kacker teaches that it is well known in the art to extract aroma compounds from vanilla and Nagashima teaches that other plants can be used ([0009]).
Regarding claim 15, as stated above with respect to claim 10, Nagashima and Lena in view of Kacker further teach extracting vanilla aroma compounds through a solvent mixture to obtain a extract and filtering the extract to remove solids ([0003], [0008], [0016]).
Regarding claim 16, Nagashima further teaches drying the filtered spice plant parts to obtain dried fermented spice plant part particles ([0018]).
Regarding claims 17 and 21, Nagashima and Lena in view of Kacker render obvious a vanilla extract and dried vanilla extract (e.g., powder).
Regarding claim 18, Nagashima and Lena in view of Kacker render obvious a vanilla extract and dried vanilla extract (e.g., powder).
It would have been obvious to combine the different flavor extracts as taught in the prior art to produce a single flavor extract.
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Regarding claim 19, with respect to the yield and amount in the dry product, Kacker teaches that the method does not compromise the quality of the vegetable material and provides a higher recovery of aroma compounds ([0010]-[0015]), but fails to specifically teach a 60% yield of vanillin based on original vanillin content.
However, it would have been obvious to one of ordinary skill in the art to vary the processing conditions, such as the drying process, including temperature and time, to result in a desired yield and final amount. This is merely routine experimentation that is well within the art.
It further would have been obvious to one of ordinary skill in the art to use vanilla in the method of Nagashima as Kacker teaches that it is well known in the art to extract aroma compounds from vanilla and Nagashima teaches that other plants can be used ([0009]).
Regarding claim 20, with respect to the aroma profile, the prior art renders obvious a vanilla extract according to claim 17. The examiner notes that the aroma profile would be dependent upon the consumer. Aroma is subjective and can vary among individuals and therefore it would have been obvious to one of ordinary skill in the art to obtain a vanilla extract having a desired aroma by varying the processing conditions/steps. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claims 22-23, Nagashima further teaches using the dried fermented particles in pharmaceutical products, or food products (e.g., medicinal tea packs) ([0019]).
Therefore, it would have been obvious to use the dried vanilla bean particles of Nagashima in view of Kacker in the same products taught by Nagashima depending on the desired aroma of the products.
Response to Arguments
Applicant’s arguments with respect to the 103 rejections have been fully considered but were not found persuasive.
Applicant argues that none of the applied references teach or suggest specifically treating vanilla beans as now claimed. Applicant states that Nagashima does not disclose or suggest two features now expressly recited in the independent claims: Applicant goes on to state since Nagashima fails to disclose two features, Nagashima is fundamentally different from the claimed invention as it does not mention vanillin, glucovanillin, or beta-glucosidases and therefore there is no disclosure or suggestion that the described process involves any enzymatic or microbial fermentation.
This is not found persuasive as one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, the examiner recognizes that Nagashima fails to specifically teach vanilla particles, but teaches spice plant particles. Kacker teaches a method of recovering aroma compounds from vegetable material, wherein the method comprises a step of drying the vegetable material ([0030]-[0040]). Kacker teaches that the method does not compromise the quality of the vegetable material and therefore provides a higher recovery of aroma compounds ([0010]-[0015]). Kacker teaches using partially fermented vegetable material to further dry it and produce extracted aroma compounds, wherein the vegetable material can be vanilla beans ([0019] and [0030]). It would have been obvious to one of ordinary skill in the art to use vanilla in the method of Nagashima as Kacker teaches that it is well known in the art to extract aroma compounds from vanilla and Nagashima teaches that other plants can be used ([0009]). This is a simple substitution of one known spice particle for another to yield the predictable result of extracting aroma from a desired spice.
With respect to the limitations “whereby ice crystals are formed that break up the cell membrane to release glucovanillin and beta-glucosidases” and “whereby the glucovanillin is converted into vanillin by enzymatic hydrolysis of the released beta-glucosidases”, the examiner notes that Nagashima teaches the same steps as claimed that result in such function (e.g. the freezing and the defrosting steps), and therefore the process of the combined prior art, wherein vanilla plant parts are processed according to the method of Nagashim, would necessarily result in ice crystals formed that break up the cell membrane to release glucovanillin and beta-glucosidases (e.g. due to the freezing step) and conversion of glucovanillin into vanillin by enzymatic hydrolysis of the released beta-glucosidases (e.g. due to the defrosting step). The claims do not recite any additional method steps or conditions that are different than the method steps as taught by Nagashima and therefore the freezing step and defrosting step would necessarily result in the claimed limitations absent a showing otherwise. Simply because the prior art fails mention vanillin, glucovanillin, or beta-glucosidases, does not mean that it would not be present due to the processing of the vanilla plant particles, which is the same as the instant invention.
Applicant further argues that Nagashima does not teach or suggest drying in a closed system and Lena is directed to drying peppers to provide a crispy texture using high temperature, which would not be obvious to combine with Nagashima as the products are fundamentally different.
This is not found persuasive as Lena is merely being relied upon to show that a convection oven is known in the art to be useful for dehydrating. Lena teaches that the use of a convection oven enables the process to become more sanitary and efficient ([0005]-[0006]).
Applicant is arguing how the convection oven is operated and the full process of Lena to produce a crispy texture. This is not found persuasive as Nagashima is the primary reference being relied upon to render obvious the claimed process. As stated above, it would have been obvious to one of ordinary skill in the art to have the drying process of Nagashima be performed in a closed system as taught by Lena. Doing so would yield the predictable result of producing a more sanitary product in a more efficient manner in the process of Nagashima as taught by Lena.
Further, Lena teaches drying pepper pieces in a convection over and further teaches a drying temperature of 125-155 F, or 57-68 C ([0005]-[0007]), which falls within the claimed temperature range of 20 C to 70 C. Therefore, the convection oven in Lena would be capable of drying fundamentally different products.
Regarding applicant’s argument that Nagashima fails to teach fermentation during defrosting at a temperature in the range of 15-40 C, the examiner notes that Nagashima teaches that the defrosting can be carried out by heat or the like, or carried out by leaving the composition at room temperature for a period of time ([0017]). Room temperature is known to be about 20-22 C, thus falling within the claimed range of 15-40 C. While Nagashima fails to specifically teach “fermentation during defrosting”, the examiner notes that applicant’s arguments are not commensurate in scope with the claims as the claims do not require any fermentation step. As Nagashima teaches defrosting as claimed, Nagashima meets such claimed method step. If there are other factors or steps needed to induce fermentation, the claimed language should reflect such process.
With respect to the yield of vanillin, Kacker teaches that the method does not compromise the quality of the vegetable material and provides a higher recovery of aroma compounds ([0010]-[0015]), but fails to specifically teach a 70% yield of vanillin based on original vanillin content. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It would have been obvious to one of ordinary skill in the art to vary the processing conditions, such as the drying process, including temperature and time, to result in a desired yield. This is merely routine experimentation that is well within the art.
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the combination of the prior art as applied above, renders obvious a method for producing vanilla aroma, wherein the defrosting is conducted at room temperature and the drying is conducted in a closed system, and therefore applicant’s arguments are not found persuasive.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791