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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/17/2026 has been entered.
Claim Objections
Claim 23 is objected to because of the following informalities:
Claim 23 recites “in the filing step the vessel are filled completely” and which contains typographical and grammatical errors of “filing” and “vessel are filled completely”. 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 1-12, 15, 21-25 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.
Regarding claim 1 and 25, each of claims 1 and 25 recites “harvesting…the whole content of the vessels and drying and grinding and/or milling the whole content harvested from the vessel”. However, the specification does not specify use the language “whole content” and therefore the use of “the whole content” in the limitation raises an issue of new matter.
Regarding claim 23, claim 23 recites “in the filling step the vessel are filled completely”. However, this is not taught in the specification. The specification only recites “the vessels are generally almost completely filled with substrate” (see PGPUB specification [0090]). Therefore, the new limitation raises an issue of new matter.
Claims 2-12 and 21-24 are rejected by virtue of their dependence on a rejected base claim.
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 1-12, 15, 21-25 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.
Regarding claims 1 and 25, each of claims 1 and 25 recites “harvesting…the whole content of the vessels and drying and grinding and/or milling the whole content harvested from the vessel”. It is unclear what “the whole content of the vessels” is referring to. There is insufficient antecedent basis for “the whole content of the vessels”.
Claims 2-12 and 21-24 are rejected by virtue of their dependence on a rejected base claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-12, 15, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kelly et al. US 2015/0257406 in view of Chen WO 2007045125 Google Patents Translation in view of The Home Depot in view of Brown et al. US 2015/0265958.
Regarding claim 1, Kelly discloses a process for a solid-state fermentation the process comprising the steps of providing a substrate to be cultured made of plant material (cacao beans or agricultural product) ([0014]-[0019]); filling vessels with the substrate to be cultured, each vessel having an inner volume of less than 50L (quart ball jars have a volume of 32 oz=0.95L) ([0144]) and three overall dimensions called height (H), width (W) and depth (D) measured in orthogonal directions; sterilizing the filled vessels ([0144], [0039]); inoculating the substrate under aseptic conditions with a microbial inoculant adapted to cause solid state fermentation of the substrate ([0144], [0011], [0014], [0086], [0140], [0077], [0065]). Kelly discloses that the vessels can be in a closed state after the inoculating step ([0151]). Kelly discloses storing without stirring the vessels in the closed state in controlled climate conditions during a sufficient time for fermentation of the substrate and harvesting the whole content of the vessels obviously under food grade conditions ([0151], [0086]).
The Home Depot discloses that quart ball jars commonly have dimensions of D = 7.6 in, H= 6.8 in, W= 7.6 in. Therefore, in light of the teachings of The Home Depot, Kelly teaches that the smallest of the height, width, and depth would have been less than 40 cm (6.8 inches = 17.2cm).
Claim 1 differs from Kelly in the recitation that the vessels are filled using an automated filling system.
Chen discloses a process for solid state fermentation including filling vessels with a substrate to be cultured using an automated filling system (‘125, Google Patents Translation, Pg.5, Paragraph 9). Chen discloses automating the process to avoid human exposure (‘125, Google Patents Translation, Pg. 2, claim 2) and to increase efficiency (‘125, Google Patents Translation, Pg. 3 Description). It would have been obvious to one of ordinary skill in the art to modify Kelly such that the vessels are filled using an automated filling system as taught by Chen in order increase efficiency and to reduce human exposure during processing steps.
Additionally, the court has held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. (MPEP 2144.04.III).
Regarding the limitations that the process is specifically large-scale solid-state fermentation by providing between 500 kg and 15 tons per production day of the substrate, it is noted that Kelly teaches in general that 1 to 1000 kg of substrate can be processed ([0045]), and while only 48 lbs was utilized in example 8, it would have been obvious to increase the amount of substrate processed in example 8 by increasing the amount of substrate and corresponding containers. Therefore, Kelly can be considered to teach large-scale solid-state fermentation by providing between 500 kg and 15 tons per production day of the substrate.
Regarding the sterilizing step being carried out on a batch of at least 100 filled vessels, it is noted that Kelly discloses performing fermentation using 48 containers, and the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04VI.B).
Regarding the inoculating step being an automatic inoculating step and the emptying being an carried out with an automatic emptying system, the court has held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. (MPEP 2144.04.III).
Regarding the further limitation that each vessel in the closed state comprises a bacteria filtering hydrophobic porous membrane forming a filter allowing gaseous exchange between an internal volume of the vessel and the controlled climate area, it is noted that Kelly discloses that the vessels are constructed to allow gaseous diffusion ([0144]). Kelly discloses that in general fermenters and bioreactors may be used in the invention and in some embodiments the containers have a means for gas exchange that precludes passage of contaminants such as filter zones or valves ([0043]). Kelly teaches the use of hydrophobic filters ([0145]) and discloses that the filter precludes the passage of contaminant’s ([0043]), and therefore Kelly obviously suggests that each vessel in the closed state comprises a bacteria filtering hydrophobic porous membrane forming a filter allowing gaseous exchange between an internal volume of the vessel and the controlled climate area.
Additionally, Brown discloses a filter body for a bioreactor that is made of a porous material through which gas can pass but through which unwanted contaminants, such a bacteria and microorganisms cannot. The material is typically hydrophobic ([0005], [0006], [0129]). Therefore, it additionally would have been obvious to one of ordinary skill in the art to modify Kelly such that each vessel in the closed state comprises a bacteria filtering hydrophobic porous membrane forming a filter allowing gaseous exchange between an internal volume of the vessel and the controlled climate area as suggested by Brown, since it has been held that “Combining prior art elements according to known methods to yield predictable results” (MPEP 2143.I.A) supports a conclusion of obviousness.
Further regarding claim 1, Kelly discloses the method further comprises drying the harvested whole content of the vessels ([0123], [0124]). Regarding the step of grinding in addition to the drying to form a fermented flour, Kelly already teaches grinding the cacao (‘406, [0156], [0091]) and discloses that the fermented product (myceliated cacao) can be subjected to known processing steps of nonfermented cacao (non-myceliated ([0126],[0086]), therefore based on the teachings of Kelly as a whole it would have been obvious to modify Kelly to comprise the step of grinding in addition to the drying to form a fermented flour.
Regarding claim 2, Kelly discloses a step of closing the vessels before the sterilizing (‘406, [0041]) and wherein the inoculating comprises opening the vessels, implanting the microbial inoculant on the substrate and closing the vessels (‘406, [0151]).
Regarding claim 3, Kelly discloses that the microbial inoculant comprises filamentous fungi (Ganoderma lucidum) (‘406, [0144]).
Regarding claim 4, Kelly discloses that the microbial inoculant comprises fungi belonging to the fungal phyla: Basidiomycota (Ganoderma lucidum) (‘406, [0144]).
Regarding claim 5, Kelly discloses that the microbial inoculant comprises a white rot fungus (Ganoderma lucidum) (‘406, [0144]).
Regarding claim 6, Kelly discloses that the moisture content of the substrate is above 50% (‘406, [0027], claim 6).
Regarding claim 7, Kelly discloses that the substate to be cultured comprises fruit by products (cacao beans are byproduct of cacao fruit) (‘406, [0144]).
Regarding claim 8, Kelly discloses that the substrate to be cultured comprises cereal (‘406, [0019]).
Regarding claim 9, Kelly discloses that the substate to be cultured comprises a majority in weight of by-products of the food industry (cacao beans are byproduct of cacao fruit) (‘406, [0144]).
Regarding claim 10, Kelly discloses that the vessels are bottles (quart jars) (‘406, [0144]).
Regarding claim 11, the vessels of Kelly are obviously made of food grade material (ball quart jars) (‘406, [0144]).
Regarding claim 12, Kelly discloses that each of the vessels has a maximum capacity between 0.5L and 50L (32oz =0.95L, ball quart jar volume) (‘406, [0144]).
Regarding claim 15, Kelly discloses that the vessels used in the process are clean (‘406, [0144]) and since quart ball jars are obviously reusable, it would have been obvious to one of ordinary skill in the modify the method of Kelly to include a step of cleaning the vessels after harvesting for re-use in an upcoming same process.
Regarding claim 21, Modified Kelly obviously suggests that the controlled climate conditions of said controlled climate are for storing the vessels comprises control of the temperature, hygrometry, dioxygen level and carbon dioxide level (‘406, [0011], [0089]-[0090]), [0095]) (‘125, google patents translation claim 10, Pg. 5, second paragraph, Pg. 7 second paragraph).
Regarding claim 22, Modified Kelly discloses that the filter is a hydrophobic porous membrane having a pore diameter of less than 40 micrometers (‘958, [0129]).
Regarding claim 23, since Modified Kelly already teaches a solid state fermentation of a substrate, it is not seen that patentability can be predicated on the specific degree of filling, as it would have been obvious to one having ordinary skill in the art to vary the degree of filling, as an obvious scaling up of the process for increasing the amount of fermented product produced from each vessel (see MPEP 2144.04(IV)(A)).
Regarding claim 24, claim 24 differs from Modified Kelly in the recitation that Kelly explicitly discloses that after the filling vessel with the substrate to be cultured the filled vessel is shaken to accommodate the substrate. However, Kelly discloses that the substrates for myceliation in jars or bags were gently mixed every few days until they commanded the substrate and become somewhat resistant to mixing or shaking, thereby suggesting that mixing can be carried out by shaking ([0138], [0082]). Therefore, Kelly obviously suggests that after the filling vessel with the substrate to be cultured the filled vessel is shaken to accommodate the substrate.
Regarding claim 25, claim 25 is rejected for the same reasons given above as for claim 1.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered but they are not persuasive. Regarding the new limitations, Brown has been brought to teach the newly required limitations.
On pg. 7 of the remarks, Applicant argues that Kelly does not teach the combination of limitations required by claim 1, Applicant argues that Kelly does not disclose the use -in the context of large scale process- of relatively small containers with the dimensions recited in claim 1.
This argument has not been found persuasive. While Kelly describes example 8 as small batch while utilizing 48 ball quart jars, (the ball quart jars which would have the dimensions of the claims as discussed in the obviousness rejection), to modify Kelly by increasing the amount of material and ball quart jars processed as in example 8 to be considered a large scale production is merely seen to be a duplication of parts of the process of Kelly and the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04VI.B). Additionally, MPEP 2144.04.IV.A recites "mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled."
Additionally, regarding the limitations that the process is specifically large-scale solid-state fermentation by providing at least 500 kg per production day of the substrate, it is noted that Kelly teaches in general that 1 to 1000 kg of substrate can be processed ([0045]), and while only 48 lbs was utilized in example 8, it would have been obvious to increase the amount of substrate processed in example 8 by increasing the amount of substrate and corresponding amount of containers. Therefore, based on the teachings of Kelly as a whole, Kelly can be considered to teach large-scale solid-state fermentation by providing at least 500 kg per production day of the substrate.
In response to Applicant’s argument on pg. 7 regarding Kellys description involving small scale manual process without mention of automation, it is maintained that the court has held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. (MPEP 2144.04.III).
On Pg. 7-8 of the remarks, Applicant argues that Kelly teaches using large containers within an industrial or large-scale production context. Applicant argues that small batch is not supposed to be capable of being scaled up and that multiplication of parts would not lead to the claimed method. Applicant argues that Kelly suggests increasing the size of containers to increase the scale and not to multiply the vessels to increase the scale.
These arguments have not been found persuasive; the reasoning is relied upon is from the MPEP and Applicant has not provided evidence that such modifications would not be capable of being applied to Kelly..
In response to the arguments regarding Chen, Chen was only relied upon for disclosing a process for solid state fermentation including filling vessels with a substrate to be cultured using an automated filling system (‘125, Google Patents Translation, Pg.5, Paragraph 9). Chen discloses automating the process to avoid human exposure (‘125, Google Patents Translation, Pg. 2, claim 2) and to increase efficiency (‘125, Google Patents Translation, Pg. 3 Description), and that therefore it would have been obvious to one of ordinary skill in the art to modify Kelly such that the vessels are filled using an automated filling system as taught by Chen in order increase efficiency and to reduce human exposure during processing steps.
Conclusion
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
