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 .
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 11, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Osaka USPN 3937843.
Regarding claim 11, Osaka teaches a distilled (concentrated) fermented soy beverage having a pH of 3.6. (Ex. 4) Although Osaka does not disclose the product-by-process limitations incorporated in claim 11 by its dependence from claim 1, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Osaka teaches that the beverages disclosed can have a protein concentration as high as 10-12%. (Col. 4, lines 43-45) This concentration reads on the protein concentration in claim 11.
Therefore, absent evidence of criticality regarding the process steps recited in claim 1 and given that the fermented soy concentrate product of Osaka meets the requirements of the claimed composition, the product of Osaka clearly meets the requirements of present claim 11, or in the alternative, renders such obvious.
Regarding claims 13 and 14, Osaka teaches a distilled (concentrated) fermented soy beverage having a pH of 3.6. (Ex. 4) Although Osaka does not disclose the product-by-process limitations incorporated in claims 13 and 14 by their dependence from claims 1, 9 or 10, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Osaka teaches that the beverages disclosed can have a protein concentration as high as 10-12%. (Col. 4, lines 43-45) This concentration reads on the protein concentration in claims 13 and 14. While claims 9 and 10 recite the pH of the solution following the volume increase step, these limitations not limit the pH of the final product because no indication is given in the processing claims regarding the pH after the concentration step.
Therefore, absent evidence of criticality regarding the process steps recited in claims 1, 9 or 10 and given that the fermented soy concentrate product of Osaka meets the requirements of the claimed composition, the product of Osaka clearly meets the requirements of present claims 13 and 14, or in the alternative, renders such obvious.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Osaka USPN 3937843.
Regarding claim 15, the only difference between the claimed beverage concentrate and Osaka is the viscosity recited in claim 15. The thickness of a beverage is an organoleptic property whose desirable value is determined by the subjective desires of a consumer. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have varied the concentration of the components in Osaka or to have added thickening ingredients if one desired a thicker beverage. As such claim 15 is rendered obvious by Osaka.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Response to Arguments
Applicant's arguments filed 9 March 2026 have been fully considered but they are not persuasive.
Applicant asserts on page 5 of the remarks that the process recited in claim 1 results in a viscosity increase compared to beverages produced without the recited volume increase. This assertion is not found germane as it cannot be ascertained whether a volume increase step was performed in the production of a soy beverage by inspection of only the claimed soy beverage. The volume increase step has not been shown by applicant to inherently impart any materially distinguishing characteristics to the final product claimed when it is performed in the unspecified way recited in the method claims. As such, applicant’s remarks regarding viscosity have no relevance to claims 11, 13 or 14.
Applicant asserts on page 6 that there is no motivation to modify Osaka to include the volume increase of the method claimed. This assertion is not germane as it is not necessary for the art to teach all of the limitations of a product-by-process claim as long as the prior art reads on the product produced. As explained above, the volume increase step does not impart any materially distinguishing characteristics.
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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