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 4/5/2026 has been entered. Claims 1-3, 14, 21-24 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Information Disclosure Statement
The information disclosure statement filed 4/5/2026 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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.
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 1-3, 14, and 21- 23 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi (JPH 02200161A) in view of Sugisawa (US 4842872A).
Regarding Claims 1 and 23, Higuchi teaches soy sauce with an improved aroma containing phenethyl acetate between 0.1-10ppm (100-10,000 ppb) (Abstract), which touches the claimed range.
Higuchi does not discuss utilizing soy sauce as part of a composition packed in a container.
Sugisawa teaches meat such as beef or pork packaged with soy sauce (Column 1, Lines 14-18) in a sterilized retort package (Column 2, Lines 9 and 18). Note that a package is a container. Sugisawa additionally teaches that the flavoring liquid comprises 2-25% of the weight of the meat (Column 3, Line 18), and the flavoring liquid comprises 15-35% soy sauce (Column 2, Line 59). Sugisawa therefore teaches an overall composition comprising up to 7% soy sauce (25 grams soy sauce / (25 grams soy sauce + 100 grams meat) * 35%)). Note that a composition comprising up to 7% soy sauce, where the soy sauce comprise 100-10,000 ppb of phenethyl acetate, has up to 7-700 ppb of phenethyl acetate, which encompasses the claimed range. Sugisawa teaches that the soy sauce provides flavor (e.g. Column 2, Line 50).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize any soy sauce, including the soy sauce of Higuchi, in the retort packaged product of Sugisawa to provide flavor, and arrive at the phenethyl acetate concentration as claimed. The selection of a known material based on its suitability for its intended use support a prima facie obviousness determination. See MPEP 2144.07
Regarding the limitation that the “composition comprises a decrease retort smell” compared to a retort sterilized composition comprising less than 1.0 ppb phenethyl acetate and soy sauce, given that modified Higuchi teaches the phenethyl acetate content as claimed, there is an expectation that the product of the prior art have the property of a reduced retort smell, as claimed.
Regarding Claims 2 and 3, Sugisawa teaches meat such as beef or pork packaged with soy sauce (Column 1, Lines 14-18). Note that a package is a container.
Regarding Claim 14, Sugisawa teaches a packaged food which is sterilized in a retort pouch, which meets the limitation of a “container-packed processed food” (Column 2, Line 19).
Regarding Claims 21 and 22, given that modified Higuchi teaches the phenethyl acetate content as claimed, there is an expectation that the product of the prior art have the property of a reduced retort smell in comparison a composition comprising soy sauce, at least one ingredient, and less than 1.0 ppb of phenethyl acetate, as claimed.
Claims 1 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi (JPH 02200161A) in view of Asaki (JP 2019146523 A, reference is made to the provided machine translation).
Regarding Claims 1 and 24, Higuchi teaches soy sauce with an improved aroma containing phenethyl acetate between 0.1-10ppm (100-10,000 ppb) (Abstract).
Higuchi does not discuss utilizing soy sauce as part of a composition packed in a retort container or the claimed range of phenethyl acetate.
Asaki teaches a retort container packaged food (Page 2, Paragraph 8, [1]) with 10-90% soy sauce (Page 3, Paragraph 3). Asaki teaches that such a composition has an excellent flavor (Page 4, last paragraph). Asaki additionally teaches the use of any suitable soy sauce (Page 2, Paragraph 13).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the soy sauce of Higuchi in the retort food of Asaki. One would have been motivated to make such a modification to formulate a food with excellent flavor.
Note that where Higuchi teaches 100-10,000 ppb of phenethyl acetate, and Asaki teaches 10-90% soy sauce, modified Higuchi teaches 10-9,000ppb of phenethyl acetate in the retort packaged food comprising soy sauce.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize any soy sauce, including the soy sauce of Higuchi, in the retort packaged product of Asaki to provide flavor, and arrive at the phenethyl acetate concentration as claimed. The selection of a known material based on its suitability for its intended use support a prima facie obviousness determination. See MPEP 2144.07
Response to Arguments
Applicant’s arguments filed 4/5/2026 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues (Pages 4-5 of Remarks) that Higuchi describes the use of a general group of aromatic esters, added to a heated soy sauce, in compositions outside of the claimed range. Applicant argues that Higuchi therefore teaches that a composition having the defined components of the claimed invention would have no effect on retort smell.
This argument is not convincing. Higuchi is not relied upon to teach an effect on retort smell. Note that the motivation to combine references (e.g. adding an improved flavor soy sauce to a food) is not required to be the same as the motivation of the present Claims. Additionally, note that the combination of Higuchi and Sugisawa (or Asaki) renders obvious the claimed range.
Applicant additionally argues that the data at Table 2 of Higuchi would lead one having ordinary skill to conclude that at least 10 ppm of phenethyl acetate is required to change the aroma.
This argument is not convincing. Prior art is available for all teachings and not only preferred embodiments. See MPEP 2123.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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.
/D.L./
Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
Prosecution Insights