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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/6/2026 has been entered. Applicants Declaration filed under 37 CFR 1.132 by inventor Yamamoto has been entered and considered.
Claims 27, 28, 31-76, 78-81, 83 are pending.
Claims 35-75 are withdrawn.
Claims 27, 28, 31-34, 76, 78-81, 83 have been considered on the merits herein.
The following rejections have been withdrawn in light of applicants claim amendments; Claims 77, 78, 82 and 83 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and Claim(s) 27, 28, 33, 34 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2016214241 (IDS).
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.
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) 27, 28, 31-34, 76, 78-81, 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP6209371B2 (IDS) in view of JPS60105489 (IDS), Jung et al. (1994, IDS), JP2016214241 (IDS).
The claimed method requires a single step of performing lactic acid fermentation in the presence of at least one organic acid selected from malic acid and fumaric acid.
Regarding claims 27, 28, 33, 34, JP371 teaches a method for producing an extracellular polysaccharide (EPS) comprising performing lactic acid fermentation with an EPS producing strain, L. delbrueckii subsp. bulgaricus, specifically strain OLL1073R-1. JP371 teaches that malic acid may be added to the lactic acid EPS producing culture medium (p. 9, last 2 parag.-p. 10, 1st parag.).
Regarding claims 31, 32, 80, 81, JP371 teaches that L. delbrueckii subsp. bulgaricus , specifically strain OLL1073R-1, is a lactic acid bacteria used in fermented milk production which produces EPS (p. 2, 2nd parag.).
Regarding claim 76, 79, the reference is drawn to only using L. delbrueckii subsp. bulgaricus, OLL1073R-1, in the fermentation method to produce EPS.
The reference teaches that improving the number/increasing growth of the lactic acid bacteria in the fermentation also increases EPS production.
While the reference exemplifies formate used in the fermentation medium in amounts ranging from 0.4 to 10 mM (p. 3, last parag., p. 5, 1st parag.) to increase lactic acid bacteria growth and therefore EPS production, the reference suggests that organic acids including malic acid may be added to the EPS production medium (p. 6 2nd to last parag., p. 7, 1st parag.). Thus, regarding claims 27, 78 and 83, JP371 teaches adding amounts of a growth promoter within applicants claimed range, and thus, a posita has good reason to pursue known options within his or her technical grasp when adding growth promoters to the medium. See below for teachings related to malic and fumaric acid.
JP489 teaches a method comprising performing lactic acid fermentation in the presence of malic acid, wherein the presence of malic acid increases growth of the lactic acid bacteria in the starter medium (p. 1, 5th and 6th parag., p.3, last 3 parag.-p. 4, 1st parag., 2nd parag., p. 5, 6th parag.).
Regarding claims 27, 33, JP489 teaches adding malic acid in amounts ranging from 0.05 to 0.5M, i.e. 50 mM, to the culture medium (p. 3, 3rd parag.).
Jung teaches that the addition of 1% wt. fumaric acid to fermentation medium of L. delbrueckii subsp. bulgaricus increases bacterial growth and malic acid is produced from the fumaric acid addition (p. 470, test sample section, Table 1, p. 471, 1st and 2nd parag., p. 474, Summary section).
JP241 teaches performing lactic acid fermentation in the presence of organic acids selected from fumaric acid and malic acid. (p. 2, whole pg., p. 3, 3rd and 4th parag.). The reference teaches that the organic acid is added in amounts ranging from 0.001-0.07% by weight based on the total fermentation milk raw material (p. 3, 3rd-5th parag.).
Regarding claim 27, the lactic acid bacteria is L. delbrueckii subsp. bulgaricus (p. 8, 2nd parag., Ex. 2, p. 12, Ex. 3).
Therefore, before the effective filing date of the claimed invention, it was known in the art that the lactic acid bacterium L. delbrueckii subsp. bulgaricus produces EPS during fermentation. Additionally, organic acids added to the fermentation medium including malic and fumaric acid were known to increase the growth rate of lactic acid bacterium and thus, increasing EPS production. While JP371 teaches using formate to increase lactic acid growth, organic acids malic and fumaric acids were disclosed by the prior art references to successfully increase L. delbrueckii subsp. bulgaricus growth during the fermentation process. Thus, a posita would have had a reasonable expectation of successfully substituting the formate of JP371 with malic or fumaric acid (of JP489, Jung, and JP421) in a fermentation method and medium for producing EPS because the art collectively teaches that not only is the claimed strain an EPS producing strain, but adding growth promoters to the fermentation medium increases the lactic acid bacteria growth thereby increasing EPS production. Therefore, the results of the substitution would have been predictable at the time of the claimed invention and one would have had a reasonable expectation of successfully producing EPS in culture with the claimed strains and organic acids as growth promoters.
A "whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d. The only method step is performing lactic acid fermentation in the presence of malic or fumaric acid, and thus the “wherein EPS is produced by the method” and “wherein a succinic acid is produced” of claim 28 is an intended result of the fermentation step, 1614, 1620 (Fed. Cir. 2003)) as well as a function of the fermentation with the organic acid. The method of the prior art are drawn to the same method as claimed, i.e. fermentation of L. bulgaricus with an organic acid. Thus, it is the Examiners position that these results are inherent to the fermentation step taught by the art. One would necessarily expect to achieve the same results when practicing the prior art method of performing lactic acid bacterial fermentation is the presence of an organic acid selected from malic or fumaric acid to a fermentation, which is the same as applicants claimed method.
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive. Applicants arguments are that the results in the Declaration by inventor Yamamoto demonstrates that the growth of lactic acid bacteria and production of EPS is not correlated. These same arguments were presented in the After Final filed on 6/3/2026. As stated by the Examiner in the Advisory Action mailed 6/25/2026, it cannot be seen from the data provided how applicant has demonstrated that the growth of lactic acid bacteria and EPS are not correlated. All three lactic acid starter cultures produce EPS, and further the data is drawn to adding inosinic acid to the raw milk, which is not commensurate in scope with the claimed invention, which requires malic and/or fumaric acid.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIFFANY MAUREEN GOUGH whose telephone number is (571)272-0697. The examiner can normally be reached M-Thu 8-5.
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/TIFFANY M GOUGH/Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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