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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaori Okada (Principal Components Analysis of the Relationship Between the D-amino Acid Concentrations and the Taste of Sake).
Ayano Azaki (Effect of Kuratsuki Kocuria on Sake’s Taste Varies Depending on the Combination with Different Sake Yeast Strains).
In regard to claim 1, 2, 4 and 8, Kaori Okada discloses a sake beverage composition wherein said composition after being stored for a period of three months comprises an amount of 322 µM of D-aspartic acid, which corresponds to 42.86 mg/L of D-aspartic acid and an amount of 341.1 µM of D-glutamic acid, which corresponds to 50.19 mg/L of D-glutamic acid (page 496; left column; "Effects of storage on the D-amino acid Concentrations and the taste of sake" and Figs. 7(b) and (c)). It is noted that sake beverage composition disclosed by Kaori Okada meets the limitation of composition for foodstuff. Therefore, the total content of D-aspartic acid and D-glutamic is 93.05 mg/L.
The instant claims recite the concentration of D-aspartic acid and D-glutamic acid in mg/l per Brix. It is noted that Brix value, or °Bx, is a measure of the soluble solids content, primarily sugars, in a solution, expressed as the percentage of sucrose by weight. Kaori Okada does not disclose what is the solid content Brix of the sake samples. However, as evidenced by Ayano Azaki, sake has a °Brix value of about 3 (Figure 1 on page 8). According to Ayano Azaki, sake samples which have been subjected to a fermentation step for a duration of 13 days with three different yeast strains, have all a °Brix value of about 3. Therefore, the corresponding ratio according to claim 1 in the above sake composition of Kaori Okada is 93.05/3 = 31 ((mg/L)/Brix).
Further in regard to the concentration recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claim 1 has been amended to include the limitations of claim 9 reciting “the composition is a lactic acid fermented extract or a processed product thereof”. In regard to the recitation of “the composition is a lactic acid fermented extract or a processed product thereof”, Kaori Okada discloses that lactic acid bacteria present in sake produce during storage the above D-aspartic and D-glutamic acid. The presence of said D-amino acid fermentation products results to a final sake product (lactic acid fermented extract) with stronger taste (Nojun) (Abstract on page 489).
The recitation of “a composition for beer-taste beverage” is directed to the intended use of a composition and does not impart a patentable distinction to the composition. The recitation of “a composition for beer-taste beverage” simply states the purpose of using the composition, that the composition could be useful in beer-taste beverages.
In regard to claim 12, it is noted that the instant claims recite composition. The limitations of claim 12 are directed to the intended use of the composition and do not impart a patentable distinction to the composition. In any case, since Kaori Okada discloses that sake product has stronger taste due to the presence of D-aspartic and D-glutamic acids, it is inferred that the presence of D-aspartic and D-glutamic acids is also affecting sharpness in a beverage (sake).
In regard to claims 10-11, it is noted that the instant claims are directed to the composition. The composition claims 10-11 include the recitation of the method for the lactic acid fermentation. Kaori Okada already discloses that lactic acid bacteria present in sake produce during storage D-aspartic and D-glutamic acids. The nature of the D-aspartic and D-glutamic acids would not impart any patentable distinction to the composition as claimed.
In regard to claims 5-7, Kaori Okada does not disclose the concentrations of L-aspartic and L-glutamic acids. Kaori Okada discloses that L-aspartic and L-glutamic acids “were considered to have a slight effect on the taste of sake” (page 498 left column). Hence, Kaori Okada indicates that L-aspartic and L-glutamic acids are presents in sake, but do not affect the sake taste.
Further in regard to the concentration recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Response to Arguments
Applicant's arguments filed 07/10/2025 have been fully considered but they are not persuasive.
In the Reply to the Non-Final Office action mailed April 10, 2025, filed July 10, 2025, Applicant presents the following argument:
Claim 1 has been amended to clarify that the claimed composition is for a beer-taste beverage. Accordingly, Applicant respectfully traverses the rejection for the following reasons:
The present invention is directed specifically to compositions designed to improve sharpness in beer-taste beverages. However, Kaori Okada discusses the relationship between D- amino acid concentrations and the taste characteristics of sake, which is a fundamentally different beverage from the beer-taste beverages.
The specification explicitly defines a beer-taste beverage as “a carbonated beverage having a beer-like flavor” (Paragraph [0009]). In contrast, sake is a non-carbonated, fermented rice beverage with very different flavor attributes.
There is no suggestion in Okada that the disclosed compositions are suitable for use in beer-taste beverages or capable of improving sharpness as defined in the present specification. Since Ayano Azaki is also directed to sake, it does not cure the deficiencies.
In response to this argument, it is noted that pending claims are directed to the composition itself. The recitation of “a composition for beer-taste beverage” is directed to the intended use of a composition and does not impart a patentable distinction to the composition. The recitation of “a composition for beer-taste beverage” simply states the purpose of using the composition, that the composition could be useful in beer-taste beverages.
Conclusion
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 VERA STULII whose telephone number is (571)272-3221. The examiner can normally be reached Monday-Friday 5:30AM-3:30PM.
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.
/VERA STULII/Primary Examiner, Art Unit 1791