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 .
DETAILED ACTION
This action is in response to April 22, 2025 in reply to the Non-final Office Action mailed October 22, 2024. Claims 1, 3, and 15 have been amended; claim 2 has been canceled; and claims 17-20 have been newly added. Claims 4 and 9-13 have been withdrawn. Claims 1, 3, 5-8, and 14-20 are currently under examination.
Withdrawal of Prior Claim Rejections - 35 USC § 112(a)
Applicant has pointed specifically to where they find support in the original specification and claims for the subject matter of claims 1, 3, and 16. Applicant’s arguments are found persuasive. Therefore, the 35 USC 112(a) rejection presented in the Non-final Office Action mailed October 22, 2024 is hereby withdrawn.
Withdrawal of Prior Claim Rejections - 35 USC § 112(b)
Claims 1, 3, and 15 have been satisfactorily amended.
Regarding claim 16, Applicant’s explanation is being accepted. Hence, claim 16, which depends from claim 8, requires mixing a first portion of the sake lees in a first mixing step, mixing in a second portion of the sake lees in a second mixing step, and mixing in a third portion of the sake lees in a third mixing step. Claim 8 stipulates that the mixing of the sake and sake lees is “repeated a plurality of times”. In view of Applicant’s own admission, the mixing of the first, second, and third portions of the sake lees in first, second, and third mixing steps itself alone satisfies the limitation of claim 8. In other words, the mixing of the first, second, and third portions of the sake lees in first, second, and third mixing steps does not need to be repeated a plurality of times, but need only be done once.
Therefore, the 35 USC 112(b) rejection presented in the Non-final Office Action mailed October 22, 2024 is hereby withdrawn.
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.
I. Claims 1, 3, 5-8, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kazamat et al. (Japanese Patent Application No. 2001275647 A), in view of Sogi (Japanese Patent Application No. 2007260370 A), Lewis (Sciencing [online]; 2017), and Anonymous (Hakkaisan [online]; 2016).
I. Applicant Claims
Applicant’s elected subject matter is directed to a method of making a rice fermentation liquid comprising mixing sake and sake lees; injecting the resulting mixture into a container; “accommodating” the said container in a second container containing therein a 35-40 wt% salt water mixture in a slurry state; and storing mixture in “snow storage” at a temperature of 1-3 C for 3 months or more.
I. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Kazamat et al. discloses a method of making a refined, high amino acid sake (i.e. a rice fermentation liquid) comprising mixing sake with sake lees, which mixing is repeated a plurality of times.
Sogi discloses that a fermented liquid, e.g. sake wine, can be injected into a bottle, and the bottle capped, for further mixing and accommodation (i.e. storage) therein.
Lewis discloses a method of cooling a liquid beverage in a container (e.g. soda can) by “accommodating” the said container in a second container (e.g. an insulated bucket) containing therein a salt water mixture in a slurry state; wherein the salt water slurry represents an inexpensive cooling bath to rapidly chill the liquid beverage, and wherein the salt water mixture is prepared by adding 6 oz. salt to a pint of water.
Anonymous (Hakkaisan) discloses that a fermented liquid, e.g. sake, can be matured in “snow storage” at a temperature of 3 C for 3 months; which “snow storage” is environmentally-friendly, and provides perfect stability with high ambient moisture and without exposure to light; after which time the sake becomes round and very smooth.
I. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Kazamat et al. do not explicitly disclose that the refined sake is injected into a container, which container is “accommodated” in a second container with a salt water slurry, and then stored in “snow storage” at a temperature of 1-3 C for 3 months or more. These deficiencies are cured by the teachings of Sogi, Lewis, and Anonymous (Hakkaisan).
I. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Kazamat et al., Sogi, Lewis, and Anonymous (Hakkaisan), outlined supra, to devise Applicant’s presently claimed method.
Kazamat et al. discloses a method of making a refined, high amino acid sake (i.e. a rice fermentation liquid) comprising mixing sake with sake lees, which mixing is repeated a plurality of times. Since Sogi discloses that a fermented liquid, e.g. sake wine, can be injected into a bottle, and the bottle capped, for further mixing and storage therein; since Lewis discloses a method of cooling a liquid beverage in a container (e.g. soda can) by “accommodating” the said container in a second container (e.g. an insulated bucket) containing therein a salt water mixture in a slurry state; wherein the salt water slurry represents an inexpensive cooling bath to rapidly chill the liquid beverage down to near the freezing point of water; and since Anonymous (Hakkaisan) discloses that a fermented liquid, e.g. sake, can be matured in “snow storage” at a temperature of 3 C for 3 months; which “snow storage” is environmentally-friendly, and provides perfect stability with high ambient moisture and without exposure to light; after which time the sake becomes round and very smooth; one of ordinary skill in the art would thus be motivated to inject the refined sake into a container, place the container into a salt water slurry for rapid cooling down to near the freezing point of water, and then to store the chilled refined sake in “snow storage” at a temperature of about 3 C for about 3 months; with the reasonable expectation that the resulting refined sake will be well kept in stable conditions and mature to become round and very smooth.
It has been noted that Lewis teaches preparing the salt water mixture by adding 6 oz. salt to a pint of water. There are 28 g in 1 oz, and 473 ml in 1 pint. With some simple math, it can be calculated that the salt is present in the amount of 35.5 g/ 100 ml, or about 35%.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
II. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kazamat et al. (Japanese Patent Application No. 2001275647 A), in view of Sogi (Japanese Patent Application No. 2007260370 A), Lewis (Sciencing [online]; 2017), Anonymous (Hakkaisan [online]; 2016), and Gauntner (Sake World [online]; 2018).
II. Applicant Claims
Applicant’s elected subject matter is directed to a method of making a rice fermentation liquid comprising mixing sake and sake lees; injecting the resulting mixture into a container; “accommodating” the said container in a second container containing therein a 35-40 wt% salt water mixture in a slurry state; and storing mixture in “snow storage” at a temperature of 1-3 C for 3 months or more; wherein the sake is ginjoshu.
II. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Kazamat et al. discloses a method of making a refined, high amino acid sake (i.e. a rice fermentation liquid) comprising mixing sake with sake lees, which mixing is repeated a plurality of times.
Sogi discloses that a fermented liquid, e.g. sake wine, can be injected into a bottle, and the bottle capped, for further mixing and accommodation (i.e. storage) therein.
Lewis discloses a method of cooling a liquid beverage in a container (e.g. soda can) by “accommodating” the said container in a second container (e.g. an insulated bucket) containing therein a salt water mixture in a slurry state; wherein the salt water slurry represents an inexpensive cooling bath to rapidly chill the liquid beverage, and wherein the salt water mixture is prepared by adding 6 oz. salt to a pint of water.
Anonymous (Hakkaisan) discloses that a fermented liquid, e.g. sake, can be matured in “snow storage” at a temperature of 3 C for 3 months; which “snow storage” is environmentally-friendly, and provides perfect stability with high ambient moisture and without exposure to light; after which time the sake becomes round and very smooth.
Gauntner discloses that ginjoshu is a premium grade, refined sake which is significantly better in quality than regular sake.
II. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Kazamat et al. do not explicitly disclose that the refined sake is ginjoshu and is injected into a container, which container is “accommodated” in a second container with a salt water slurry, and then stored in “snow storage” at a temperature of 1-3 C for 3 months or more. These deficiencies are cured by the teachings of Sogi, Lewis, Anonymous (Hakkaisan), and Gauntner.
II. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Kazamat et al., Sogi, Lewis, Anonymous (Hakkaisan), and Gauntner, outlined supra, to devise Applicant’s presently claimed method.
Kazamat et al. discloses a method of making a refined, high amino acid sake (i.e. a rice fermentation liquid) comprising mixing sake with sake lees, which mixing is repeated a plurality of times. Since Sogi discloses that a fermented liquid, e.g. sake wine, can be injected into a bottle, and the bottle capped, for further mixing and storage therein; since Lewis discloses a method of cooling a liquid beverage in a container (e.g. soda can) by “accommodating” the said container in a second container (e.g. an insulated bucket) containing therein a salt water mixture in a slurry state; wherein the salt water slurry represents an inexpensive cooling bath to rapidly chill the liquid beverage down to near the freezing point of water; since Anonymous (Hakkaisan) discloses that a fermented liquid, e.g. sake, can be matured in “snow storage” at a temperature of 3 C for 3 months; which “snow storage” is environmentally-friendly, and provides perfect stability with high ambient moisture and without exposure to light; after which time the sake becomes round and very smooth; and since Gauntner discloses that ginjoshu is a premium grade, refined sake which is significantly better in quality than regular sake; one of ordinary skill in the art would thus be motivated to employ ginjoshu as the refined sake, and to inject the refined sake into a container, place the container into a salt water slurry for rapid cooling down to near the freezing point of water, and then to store the chilled refined sake in “snow storage” at a temperature of about 3 C for about 3 months; with the reasonable expectation that the resulting refined sake will be well kept in stable conditions and mature to become a premium grade, refined sake of good quality which is round and very smooth.
It has been noted that Lewis teaches preparing the salt water mixture by adding 6 oz. salt to a pint of water. There are 28 g in 1 oz, and 473 ml in 1 pint. With some simple math, it can be calculated that the salt is present in the amount of 35.5 g/ 100 ml, or about 35%.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed April 22, 2025 have been fully considered but they are not persuasive.
i) Applicant contends that “claim 1 does not require the recited salt water to rapidly chill the liquid beverage, much less does it mention the use of ice” and “without the ice, the process described by the Lewis NPL does not actually work”; that “the question is whether the disclosure of Lewis, without the benefit of Applicant’s own disclosure of a salt water mixture, would motivate one of ordinary skill in the art to incorporate the salt water limitation by itself, i.e. without ice” as “claim 1 does not require that the salt water mixture be an ice bath” and “the language of dependent claim 5 makes clear that…storing…in snow storage…provides the source of cooling”; that “the Office Action completely mischaracterizes Lewis” which “primarily discloses not salt water but ice water, the temperature of which may admittedly be allowed to become lower with the addition of salt”; that “while the Office Action seems to suggest that salt water of Lewis cools or could cool the sake by itself without ice, it does not as ice must also be present” and “the salt lowers the freezing point of water and when you add ice the combo can get not just cold but too cold”; that “Applicant uses the salt water second mixture in the second container to regulate the temperature of the sake in the first container…to allow slow cooling by an outside cooling source” and “the addition of ice as disclosed by Lewis could even cause the sake to get too cold or to be cooled too rapidly and thereby degrade or ruin it”; that “another example of a slurry is a sand and water slurry” and “wet cement is a slurry”, and thus “slurry does not imply ice, nor does slurry require ice”; and thus “Lewis would not help one of ordinary skill in the art arrive at the claimed invention” since “the second mixture containing the salt water in the second container is not strictly used for cooling”, that “Lewis discloses the ice water bath as reaching -20C and cannot be reasonably expected to maintain the claimed, low, but non-freezing and narrow temperature range of 1-3C”, that “the Lewis NPL discloses the ice bath as the source of cooling, whereas claim 17 explicitly calls for cooling by snow storage outside of both the first container and the second container”, and thus “the method or subject matter disclosed by the Lewis NPL is rendered inoperable for its intended purpose by the modification proposed by the Office Action”.
The Examiner, however, would like to point out the following:
1. To clarify, claim 1 merely requires that the second container contains a salt water mixture. That’s it. Dependent claim 3 further stipulates that the said salt water mixture is in the form of a slurry. Dependent claim 15 further stipulates that the salt water mixture has a salt concentration of 35-40%. No claims stipulate that the salt water mixture necessarily excludes ice. Therefore, the cited prior art meets the required limitations. Indeed, the Lewis reference alone discloses the second container containing the salt water slurry in which the salt concentration is about 35%.
2. In stark contrast to Applicant’s assertions, the present claims do not necessarily exclude ice from the salt water slurry. Further, Lewis certainly need not somehow be “modified” to exclude ice from the salt water slurry disclosed therein. In stark contrast to Applicant’s assertion, the question is not whether the disclosure of Lewis, without the benefit of Applicant’s own disclosure, would motivate one of ordinary skill in the art to incorporate the salt water limitation by itself, i.e. without ice. Rather, the question is whether one of ordinary skill in the art, in view of the cited prior art, would arrive at the claimed subject matter with a reasonable expectation of success. The claimed subject matter does not require that ice is necessarily excluded from the salt water slurry. Further, the Office has neither attempted to establish reasons why Lewis would exclude ice from the salt water slurry, nor suggested that the Lewis salt water mixture could cool the sake without the ice. Indeed, Lewis is never rendered inoperable.
3. Furthermore, one of ordinary skill in the art may have had their own reasons for utilizing the various constituent elements and performing the various steps to arrive at the claimed method. More specifically, the reason why one of ordinary skill in the art may have “accommodated” the first container in a second container containing the salt water slurry certainly need not be precisely the very same reason Applicant had for performing this very same step. In the United States, one of ordinary skill in the art need only arrive at the actual claimed method itself, defined by the set of requisite active steps to be performed by the hand of man, to preclude the patentability of the claimed method. One of ordinary skill in the art need not also have precisely the very same reasons Applicant had for performing each step or employing each constituent element. If the prior art discloses or renders obvious a method of making a rice fermentation liquid comprising steps A, B, C, and D, Applicant cannot patent or re-patent a method of making a rice fermentation liquid comprising steps A, B, C, and D, merely because e.g. the prior art discloses performing e.g. step B for reason X and Applicant asserts to be performing step B for reason Y.
4. The present claims merely require a salt water mixture, and only certain dependent claims require that the salt water mixture is a slurry, or has a salt concentration of 35%. It is simply of no consequence whatsoever to argue that there are different types of slurry, e.g. wet cement, or sand and water, that do not require ice, or to argue that a slurry does not necessarily mean including ice. Rather, the standard practice in attempting to overcome the cited prior art in a prima facie obviousness rejection is to amend the claims to limit the salt water mixture to a slurry, and to limit the slurry as desired, e.g. to exclude ice. Of course, Applicant must have adequate support in the original specification and claims for any claim amendments that are made.
5. According to the prior art rejection:
“one of ordinary skill in the art would thus be motivated to inject the refined sake into a container, place the container into a salt water slurry for rapid cooling down to near the freezing point of water, and then to store the chilled refined sake in “snow storage” at a temperature of about 3 C for about 3 months; with the reasonable expectation that the resulting refined sake will be well kept in stable conditions and mature to become round and very smooth”;
Yet, Applicant argues the following:
“the salt lowers the freezing point of water and when you add ice the combo can get not just cold but too cold”; “the addition of ice as disclosed by Lewis could even cause the sake to get too cold or to be cooled too rapidly and thereby degrade or ruin it”; and “Lewis discloses the ice water bath as reaching -20C and cannot be reasonably expected to maintain the claimed, low, but non-freezing and narrow temperature range of 1-3C”;
However, while the 35% salt in the Lewis salt water mixture would, in principle, lower the freezing point of water, and while it’s possible, in principle, that the water could, under the proper conditions, reach a temperature of -20C without freezing, the prior art rejection as a whole is not based on cooling the sake to -20C, but rather rapidly cooling the sake to the required snow storage condition of 1-3C. Furthermore, while the salt can lower the freezing point of water, the mere presence of the salt alone is certainly not sufficient to lower the water temperature to -20C. That would be a mischaracterization, and would also appear to defy the laws of thermodynamics. Indeed, the laws of thermodynamics would require that the salt water mixture placed in the snow storage would attain a temperature of about 1-3C, the temperature of the snow storage environment. So, even assuming, arguendo, that the salt water mixture was at -20C when the sake in the first container was placed therein, and the sake cooling is initially more rapid than it would otherwise be, the “system” all must settle to the ambient temperature of the snow storage environment, which is 1-3C. The same phenomenon occurs when e.g. a hot cup of coffee cools to the room temperature, which cooling curve typically follows an exponential decay with an asymptote at ambient room temperature. A hot cup of coffee sitting in a room at room temperature is simply never going to cool to -20C. Finally, to the extent that Applicant argues that the basis for the invention lies in employing salt to lower the freezing point of water, this cannot be the basis for attaining a U.S. Patent. The ability of solutes, like salt, to lower the freezing point of water is a basic tenet of chemistry long known since at least Berthollet in 1822, and applied in practice for hundreds of years prior to that.
ii) Applicant contends that the claimed method has “commercial success” because “a product that in Applicant’s view embodied the claimed invention sold 800 units on-site at just a single seminar in Japan” while “a conventional product of comparable cost…sold only about 1200 units in one entire year in Japan”.
The Examiner, however, would like to point out the following:
1. This argument has already been addressed in prior Office Actions.
2. The claims have not been rejected in view of “the conventional technology” or “a conventional cosmetic”. The claims are directed to a rice fermentation liquid production method, not to a cosmetic. Selling a new cosmetic product at e.g. a new product expo could merely be indicative of general interest in any new product and may not necessarily be indicative of a special merit specific for Applicant’s invention only. Hence, Applicant is not making any proper and meaningful comparisons, and has not established anything of any real substance that can overcome the prima facie case of obviousness that has actually been made.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
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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/DAVID BROWE/Primary Examiner, Art Unit 1617