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 .
Claims 1-7, 9, 14-17 are pending. Claims 6-7, 9, and 15-17 are withdrawn. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/6/2025 has been entered. Claims 1-7, 9, and 14-17 are pending. Claims 6, 7, 9, and 15-17 are withdrawn.
Claim Rejections - 35 USC § 112
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 4 and 5 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.
Claim 4 recites the limitation wherein a “container-packed composition is a composition for suppressing a heat deterioration smell based on soy sauce or soy sauce and an ingredient”. First, it is unclear whether the composition is based on soy sauce, or whether the feature of “suppressing a heat deterioration smell” is based on soy sauce. Second, it is unclear what is intended to distinguish between “soy sauce” and “soy sauce and an ingredient”, since a composition comprising “soy sauce and an ingredient” necessarily includes soy sauce. Thus, any feature imparted by soy sauce will be present in both the “soy sauce” embodiment and the “soy sauce and an ingredient” embodiment.
Claim 5 recites the limitation of a composition compared to a “heated container-packed composition comprising corresponding soy sauce or soy sauce and an ingredient and having a phenethyl acetate content of less than 1.0 ppb”. First, it is unclear what is intended by the “comprising corresponding” limitation. Second, it is unclear whether the limitation of less than 1.0 ppb applies to the comparative composition as a whole or the soy sauce ingredient. For the purposes of examination, the limitation is interpreted as a comparative composition comprising soy sauce or soy sauce an ingredient, where the overall comparative composition has a phenethyl acetate content of less than 1.0 ppb.
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 1-5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi (JPH 02200161A) in view of Sugisawa (US 4842872A).
Regarding Claim 1, 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 ppb of phenethyl acetate, has up to 7 ppb of phenethyl acetate. 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 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 Claims 4 and 5, modified Higuchi does not address whether the composition is for “suppressing a heat deterioration smell” (Claim 4) or “suppresses a heated smell compared to a heated container-packed composition…having a phenethyl acetate content of less than 1.0 ppb”. However, given that modified Higuchi teaches a soy sauce composition with a phenethyl acetate content as claimed, the composition of modified Higuchi is interpreted to have the qualities as claimed.
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).
Response to Arguments
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues (Page 4 of Remarks) that the combination of Higuchi and Sugisawa does not teach or suggest a retort sterilized composition comprising 1-50 ppb of phenethyl acetate.
This argument is not convincing. Where Higuchi teaches a soy sauce comprising phenethyl acetate at 100 ppb, and Sugisawa teaches utilizing a soy sauce in a retort packaged composition, it would haven obvious to one having ordinary skill to modify Higuchi by utilizing the soy sauce of Higuchi in the composition of Sugisawa to arrive at a composition with the limitations as claimed as discussed above in regards to Claim 1.
Applicant additionally argues that as shown in the instant Specification, a change in aroma profile is observed at 1-50 ppb of phenethyl acetate in retort sterilized compositions in multiple instances and across different compositions, demonstrating that a retort sterilized composition with the claimed amount of phenethyl acetate will have an improved aroma over a retort sterilized composition that does not have the claimed amount of phenethyl acetate, and the combination of Higuchi and Sugisawa would not provide to one having ordinary skill a reasonable expectation of success of the effect of a modified aroma in a retort sterilized composition.
This argument is not convincing. Note that sufficient motivation is provided to utilize the soy sauce of Higuchi in the composition of Sugisawa, as discussed above in regards to Claim 1. Examiner notes that the instant Claims are directed towards a composition. Regardless, given that the product of modified Higuchi is similar to the claimed product, with a similar intended use, composition, and processing, there is an expectation that the product of the prior art have the property of a modified aroma profile after retort processing, as claimed. Additionally, note that while modified Higuchi does not discuss the modified aroma profile after retort processing, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145 II.
Conclusion
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.
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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.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791