DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 01/14/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: (1) the objection to the specification has been withdrawn; and (2) the 35 U.S.C. §112(b) rejection of claim 13 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-19
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: 1, 5-6, 13
New claims: 18-19
Claims currently under consideration: 1-19
Currently rejected claims: 1-19
Allowed claims: None
Claim Objections
Claims 1, 5, 10, and 18-19 are objected to because of the following informalities:
In claim 1, “substate” should be read as “substrate”.
In claim 1, the second step (c) should be labeled as step (d).
In claim 1, “incubating the inoculate substrate” should be read as “incubating the inoculated invertase treated substrate”.
In claim 5, “Prapionibacterium freudenreichii” should be read as “Propionibacterium freudenreichii”.
In claim 5, “Propionibacterium acidiprapinonici” should be read as “Propionibacterium acidipropinonici”.
In claim 10, “0450 mg” should be read as “0-150 mg”.
In claims 18 and 19, “the microorganism in (b)” should be read as “the microorganism in (c)”.
In claims 18 and 19, “the incubating temperature in (c)” should be read as “the incubating temperature in (d)”.
Appropriate correction is required.
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, 7-13, 15-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst (WO 2018/106109; IDS citation) in view of Stürtz (WO 2017/157417; English translation relied on for citations; previously cited), Maeda (JP2003102417A; English translation relied on for citations), and Hundt (WO 2019/143566; IDS citation).
Regarding claims 1, 2, 4, and 9, Hilhorst teaches a method of preparing a meat treatment composition containing a cultured vegetable extract wherein the vegetable may be onion (page 7, lines 22-26; page 8, lines 14-17; page 13, lines 14-16). Since the meat treatment composition may contain cultured, also known as fermented, onion extract, the meat treatment composition corresponds to the fermented onion composition recited in present claim 1 so that Hilhorst teaches a method of preparing a fermented onion composition as recited by present claim 1. Hilhorst teaches that the method comprises: obtaining an onion substrate (corresponding to onion juice and/or onion juice concentrate); inoculating the substrate with lactic acid bacteria; and incubating the inoculated substrate under conditions favorable for the bacteria to produce an onion ferment (page 8, lines 1-2; page 8, lines 14-17; page 9, lines 3-14, 19-27) as recited by present claims 1 and 4. Since Hilhorst discloses that the onion substrate may be onion juice and/or onion juice concentrate, then 100 wt.% of the dry matter of the onion substrate may be provided by onion juice as recited in present claims 1 and 2.
Hilhorst does not teach that the onion substrate comprises 10-50 wt.% dry matter and 50-90 wt.% water as recited by present claim 1. Hilhorst also does not teach that the onion substrate is treated with invertase to provide an invertase-treated substrate; or that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Stürtz teaches an onion juice concentrate for an edible composition (page 1, lines 11-12), wherein the onion juice concentrate has a dry matter content of at least 30 wt.% (corresponding to at least 30° Brix) (page 4, lines 48-49); and thus a water content of at most 70 wt.%. These ranges of dry matter content and water content values overlap the claimed dry matter concentration and water concentration recited in step (a) of present claim 1. Since Stürtz teaches that onion juice concentrate is produced by removing at least a part of the water from onion juice (page 4, lines 48-49), then onion juice would have a dry matter concentration below the 30 wt.% found in onion juice concentrate; and a water concentration above the 70 wt.% found in onion juice concentrate. Therefore, onion juice would provide values of dry matter concentration and water concentration which at least further overlap the claimed concentrations recited in present claim 1. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
It would have been obvious for a person of ordinary skill in the art to have modified the method of Hilhorst by using an onion substrate having the dry matter concentration and water concentration disclosed by Stürtz. Since Hilhorst discloses that its onion substrate may be onion juice and/or onion juice concentrate (page 9, lines 19-23), but does not disclose features of the onion juice or onion juice concentrate, a skilled practitioner would have been motivated to consult an additional reference such as Stürtz in order to determine a suitable onion juice and/or onion juice concentrate for an edible composition. In consulting Stürtz, the practitioner would find that a suitable onion juice concentrate has a dry matter concentration and a water concentration that overlaps the claimed concentrations. The practitioner would also find that an onion juice would also have a dry matter concentration and a water concentration that at least overlaps the claimed concentrations. Therefore, the claimed dry matter and water concentrations recited in present claim 1 are rendered obvious.
The combination of Hilhorst and Stürtz does not teach that the onion substrate is treated with invertase to provide an invertase-treated substrate; or that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Maeda teaches that an onion substrate may be treated with a carbohydrate-degrading enzyme such as invertase (page 1, line 56- page 2, line 6).
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Hurst to include treating an onion substrate with invertase as taught by Maeda. Since Stürtz teaches that the onion mash from which the onion substrate is produced may be treated with carbohydrate-degrading enzymes (page 4, lines 12-20), wherein the enzymes may comprise enzymes besides arabinase, cellulase, beta-glucanase, hemicellulose, xylanase, and pectinase (page 4, lines 36-39), a skilled practitioner would have been motivated to consult an additional reference such as Maeda in order to determine a suitable carbohydrate-degrading enzyme for an onion substrate, thereby rendering the claimed treatment of the onion substrate with invertase to provide an invertase-treated onion substrate obvious.
The combination of Hilhorst, Stürtz, and Maeda does not teach that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Hundt teaches a fermented onion composition (corresponding to a vegetable-based fermentate composition wherein the vegetable is onion) (page 4, line 30 – page 5, line 4) obtained by incubating onion extract with a lactic acid bacteria and/or Propionibacterium (page 4, lines 21-23; page 5, lines 11-15; page 6, line 29-page 7, line 3). Hundt teaches that the incubation temperature may be between about 10°C and about 60°C (page 8, lines 4-5), which encompasses the claimed temperature range of 25-60°C. The selection of a value within the encompassing range renders the claimed temperature obvious. MPEP 2144.05.I. Hundt also discloses incubation times of 18 hours, 20-24 hours, and 48 hours (page 18, lines 10-11; page 25, lines 22-23; page 26, lines 18-19; page 30, line 13), which all fall within the claimed time frame of 12 hours.
It would have been obvious for a person of ordinary skill in the art to have modified the method of Hilhorst by incubating the inoculated substrate for 18 hours, 20-24 hours, or 48 hours at temperatures from between about 10°C and about 60°C as taught by Hundt. Since Hilhorst teaches incubating the inoculated onion substrate under conditions favorable for the lactic acid bacteria to produce an onion ferment (page 8, lines 1-2; page 9, lines 3-14, 19-27), but does not disclose a specific time and temperature for incubating the onion substrate with lactic acid bacteria, a skilled practitioner would have been motivated to consult an additional reference such as Hundt in order to determine a time and temperature that is favorable for lactic acid fermentation, thereby rendering the time and temperature for incubation recited in present claim 1 obvious.
Since the combination of Hilhorst, Stürtz, Maeda, and Hundt discloses the claimed method of preparing a fermented onion composition as recited by present claim 1, the prior art also teaches a fermented onion composition obtained by the method according to claim 1 as recited by present claim 9.
Regarding claim 3, modified Hilhorst teaches the invention as described above in claim 1, including the onion substrate may comprise 1-60 wt.% fructans, 1-22 wt.% fructose, 2-20 wt.% glucose, and 3-25 wt.% sucrose based on the total weight of the onion substrate (Stürtz, page 2, lines 7-12). Therefore, the onion substrate may comprise 9-99 wt.% of a combination of fructose, glucose, and sucrose based on the weight of dry matter, which overlaps the claimed concentration. The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.I.
Regarding claims 5 and 19, modified Hilhorst teaches the invention as described above in claim 1, including the invertase-treated onion substrate is inoculated with Propionibacterium acidipropionici, Lactobacillus plantarum, and/or Propionibacterium freudenreichii (Hundt, page 4, lines 21-29) as recited in present claims 5 or 19. Hundt also teaches that the incubation temperature is may be between about 10°C and about 60°C (page 8, lines 4-5), which encompasses the claimed temperature range of 30-38°C recited in present claim 19. The selection of a value within the encompassing range renders the claimed temperature obvious. MPEP 2144.05.I.
Regarding claim 7, Hilhorst teaches the invention as described above in claim 1, including base (corresponding to alkali metal hydroxide) is adding after incubation to increase pH of the onion ferment to a pH of 6.0 or more (page 13, lines 5-10, 20-22), which falls within the claimed pH range.
Regarding claim 8, Hilhorst teaches the invention as described above in claim 1, including the fermented onion composition comprising the onion ferment is dried to produce a dry powder (page 13, lines 27-28). The prior art does not specifically state that the dry powder has a water content of not more than 18 wt.%. However, Hilhorst describes a concentrate as having a water content of 7-100 wt.% (page 12, lines 8-12). From this disclosure, it would have been obvious for a skilled practitioner to determine that the water content for a powder would at least include values of less than 7 wt.%, which fall within the claimed water concentration.
Regarding claims 10, 12, and 13, Hilhorst teaches the invention as described above in claim 9, including the fermented onion composition (corresponding to meat treatment composition) has a dry matter content of 7-100 wt.%, such as 10-45 wt.% (page 12, lines 8-12). This disclosed concentration of 10-45 wt.% falls within the claimed dry matter content range. Hilhorst teaches that the composition comprises propionic acid, lactic acid, and/or acetic acid in amounts of not more than 99.9 wt.%, such as 10-99 wt.%, based on the total dry matter (page 7, lines 8-12). Therefore, the concentration of each of propionic acid, lactic acid, and acetic acid may be from an amount of 0 wt.% to an amount of 99 wt.%, which provides amounts of propionic acid, lactic acid, acetic acid, and combinations thereof which at least overlap the claimed amount(s) (e.g., 1000 mg of a fermented onion composition having a dry matter content of 45 wt.%, a lactic acid content of 45 wt.%, a propionic acid content of 18 wt.%, and an acetic acid content of 12 wt.% would contain 203 mg lactic acid equivalent per gram dry matter, 81 mg propionic acid equivalent per gram dry matter, and 54 mg acetic acid equivalent per gram dry matter for a total organic acid content of 338 mg organic acid equivalent per gram dry matter. These values fall within the claimed ranges of organic acids, lactic acid, and propionic acid recited in present claims 10, 12, and 13). The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.I.
Hilhorst also teaches that the composition may comprise at least 0.5 wt.% of fructose, glucose, and/or sucrose based on the dry matter content (page 11, lines 19-22). This disclosure and the disclosure regarding the composition having a dry matter content of 7-100 wt.% (page 12, lines 8-12) provides amounts of fructose, glucose, and/or sucrose which at least overlap the claimed amount (e.g., 1000 mg of a fermented onion composition having a dry matter content of 45 wt.% and containing 0 wt.% fructose, 2 wt.% glucose, and 2 wt.% sucrose would contain 0 mg fructose per gram dry matter, 9 mg glucose per gram dry matter, and 9 mg sucrose per gram dry matter for a total saccharide content of 18 mg per gram dry matter. This value of 18 mg per gram dry matter falls within the claimed saccharides content range recited in present claim 10). The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.I.
Regarding claim 11, Hilhorst teaches the invention as described above in claim 9, including the fermented onion composition has a dry matter content of 7-100 wt.% (page 12, lines 8-12). Therefore, the composition has a water content of 0-93 wt.%, which encompasses the claimed water concentration. The selection of a value within the encompassing range renders the claimed concentration obvious. MPEP 2144.05.I.
Regarding claim 15, Hilhorst teaches the invention as described above in claim 9, including the onion ferment is not purified after inoculating and incubating the onion substrate with lactic acid bacteria (page 9, lines 3-28); therefore, the fermented onion composition comprising the onion ferment would still contain the cellular material from the lactic acid bacteria.
Regarding claim 16, Hilhorst teaches a process of preparing a food product wherein the process comprises combining the fermented onion composition of claim 9 with other ingredients (corresponding to buffered food acid component and meat) (page 13, lines 9-10; page 14, lines 8-14).
Regarding claim 17, Hilhorst teaches a method of preserving food wherein the method comprises adding the fermented onion composition (corresponding to meat treatment composition) to meat, thereby increasing the resistance of the meat to microbial spoilage (page 14, lines 3-14). Therefore, the prior art teaches a method of preserving food wherein the method comprises adding the fermented onion composition of claim 9 to food.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst (WO 2018/106109; IDS citation) in view of Stürtz (WO 2017/157417; English translation relied on for citations; previously cited), Maeda (JP2003102417A; English translation relied on for citations), and Cheng (Cheng et al., “Microbial diversity and flavor formation in onion fermentation”, 2014, Food & Function, 5, pages 2338-2347; previously cited).
Regarding claim 1, Hilhorst teaches a method of preparing a meat treatment composition containing a cultured vegetable extract wherein the vegetable may be onion (page 7, lines 22-26; page 8, lines 14-17; page 13, lines 14-16). Since the meat treatment composition may contain cultured, also known as fermented, onion extract, the meat treatment composition corresponds to the fermented onion composition recited in present claim 1 so that Hilhorst teaches a method of preparing a fermented onion composition as recited by present claim 1. Hilhorst teaches that the method comprises: obtaining an onion substrate (corresponding to onion juice and/or onion juice concentrate); inoculating the substrate with lactic acid bacteria; and incubating the inoculated substrate under conditions favorable for the bacteria to produce an onion ferment (page 8, lines 1-2; page 8, lines 14-17; page 9, lines 3-14, 19-27) as recited by present claim 1. Since Hilhorst discloses that the onion substrate may be onion juice and/or onion juice concentrate, then 100 wt.% of the dry matter of the onion substrate may be provided by onion juice as recited in present claim 1.
Hilhorst does not teach that the onion substrate comprises 10-50 wt.% dry matter and 50-90 wt.% water as recited by present claim 1. Hilhorst also does not teach that the onion substrate is treated with invertase to provide an invertase-treated substrate; or that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Stürtz teaches an onion juice concentrate for an edible composition (page 1, lines 11-12), wherein the onion juice concentrate has a dry matter content of at least 30 wt.% (corresponding to at least 30° Brix) (page 4, lines 48-49); and thus a water content of at most 70 wt.%. These ranges of dry matter content and water content values overlap the claimed dry matter concentration and water concentration recited in step (a) of present claim 1. Since Stürtz teaches that onion juice concentrate is produced by removing at least a part of the water from onion juice (page 4, lines 48-49), then onion juice would have a dry matter concentration below the 30 wt.% found in onion juice concentrate; and a water concentration above the 70 wt.% found in onion juice concentrate. Therefore, onion juice would provide values of dry matter concentration and water concentration which at least further overlap the claimed concentrations recited in present claim 1. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
It would have been obvious for a person of ordinary skill in the art to have modified the method of Hilhorst by using an onion substrate having the dry matter concentration and water concentration disclosed by Stürtz. Since Hilhorst discloses that its onion substrate may be onion juice and/or onion juice concentrate (page 9, lines 19-23), but does not disclose features of the onion juice or onion juice concentrate, a skilled practitioner would have been motivated to consult an additional reference such as Stürtz in order to determine a suitable onion juice and/or onion juice concentrate for an edible composition. In consulting Stürtz, the practitioner would find that a suitable onion juice concentrate has a dry matter concentration and a water concentration that overlaps the claimed concentrations. The practitioner would also find that an onion juice would also have a dry matter concentration and a water concentration that at least overlaps the claimed concentrations. Therefore, the claimed dry matter and water concentrations recited in present claim 1 are rendered obvious.
The combination of Hilhorst and Stürtz does not teach that the onion substrate is treated with invertase to provide an invertase-treated substrate; or that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Maeda teaches that an onion substrate may be treated with a carbohydrate-degrading enzyme such as invertase (page 1, line 56- page 2, line 6).
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Hurst to include treating an onion substrate with invertase as taught by Maeda. Since Stürtz teaches that the onion mash from which the onion substrate is produced may be treated with carbohydrate-degrading enzymes (page 4, lines 12-20), wherein the enzymes may comprise enzymes besides arabinase, cellulase, beta-glucanase, hemicellulose, xylanase, and pectinase (page 4, lines 36-39), a skilled practitioner would have been motivated to consult an additional reference such as Maeda in order to determine a suitable carbohydrate-degrading enzyme besides arabinase, cellulase, beta-glucanase, hemicellulose, xylanase, and pectinase for an onion substrate, thereby rendering the claimed treatment of the onion substrate with invertase to provide an invertase-treated onion substrate obvious.
The combination of Hilhorst, Stürtz, and Maeda does not teach that the inoculated substrate is incubated at a temperature of 25-60°C for at least 12 hours as recited by present claim 1.
However, Cheng teaches a fermented onion product produced by the fermentation of onions by lactic acid bacteria (abstract), wherein fermentation was carried out for about 1-3 days at temperatures from 25°C-28.5°C (page 2340, Fig. 1A; page 2341, 2nd column, section 3.1), which falls within the time and temperature ranges recited by present claim 1.
It would have been obvious for a person of ordinary skill in the art to have modified the method of Hilhorst by incubating the inoculated substrate for about 1-3 days at temperatures from 25°C-28.5°C as taught by Cheng. Since Hilhorst teaches incubating the inoculated onion substrate under conditions favorable for the lactic acid bacteria to produce an onion ferment (page 8, lines 1-2; page 9, lines 3-14, 19-27), but does not disclose a specific time and temperature for incubating the onion substrate with lactic acid bacteria, a skilled practitioner would have been motivated to consult an additional reference such as Cheng in order to determine a time and temperature that is favorable for lactic acid fermentation, thereby rendering the time and temperature for incubation recited in present claim 1 obvious.
Regarding claim 6, modified Hilhorst teaches the invention as described above in claim 1, including the inoculated invertase-treated onion substrate is incubated until the incubated substrate comprises detectable amounts of lactic acid (Hilhorst, page 11, lines 3-7), such as about 12.40 grams lactic acid per liter of total substrate (Cheng, page 2343, Table 3). This value is considered to fall within the claimed concentration.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst (WO 2018/106109; IDS citation) in view of Stürtz (WO 2017/157417; English translation relied on for citations; previously cited), Maeda (JP2003102417A; English translation relied on for citations), and Hundt (WO 2019/143566; IDS citation) and as applied to claim 9 above, and further in view of Iqbal (Iqbal et al., “Effect of Onion Juice (Allium cepa) on Egg Quality Traits during Different Storage Time in Laying Hens”, 2019, ETHABD, vol. 2, issue 3, pages 11-18; previously cited) and Hur (Hur et al., “Effect of fermentation on the antioxidant activity in plant-based foods”, 2014, 160, pages 346-356; previously cited).
Regarding claim 14, Hilhorst discloses a fermented onion composition as described above in claim 9, including that the composition may comprise at least 0.5 wt.% of citric acid and malic acid based on the dry matter content (page 11, lines 19-22). Hilhorst also teaches that the composition may have a dry matter content of 7-100 wt.% (page 12, lines 8-12). These disclosures provide amounts of citric acid and malic acid in the composition which at least overlap the claimed amount (e.g., 1000 mg of a fermented onion composition having a dry matter content of 45 wt.% and containing 2 wt.% citric acid and 2 wt.% malic acid would contain 9 mg citric acid per gram dry matter and 9 mg malic acid per gram dry matter which fall within the claimed content ranges). The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.I.
Hilhorst teaches that the composition may contain varying amounts of ferment such as 22.90 wt.%, 39.97 wt.%, and 18.18 wt.% (page 18, Table 1, wt.% celery ferment in compositions C, D, and E). Hilhorst also teaches that the substrate to produce the ferment through lactic acid fermentation may be onion juice (page 8, lines 1-2; page 8, lines 14-17; page 9, lines 3-14).
The prior art does not disclose that the fermented onion composition contains the claimed amount of gallic acid.
However, Iqbal discloses that onion juice may contain the polyphenol gallic acid in an amount of 2.659 mg/L (page 13, Table 2.0). Hur discloses that the total content of polyphenols increase during lactic acid fermentation (page 348, 1st column , 1st and 3rd-4th paragraphs).
Since the compositions of Hilhorst may be produced through lactic acid fermentation of onion juice (page 8, lines 1-2; page 8, lines 14-17; page 9, lines 3-14) and the total content of polyphenols increases during lactic acid fermentation (Hur, page 348, 1st column , 1st and 3rd-4th paragraphs), a skilled practitioner would readily recognize that the gallic acid content of the composition may increase from the 2.659 mg/L disclosed in Iqbal (page 13, Table 2.0) during fermentation. Furthermore, since the compositions of Hilhorst may contain various amounts of onion ferment as can be seen in Table 1 on page 18 of Hilhorst and the compositions may also contain various amounts of dry matter content (i.e., 7-100 wt.% as disclosed on page 12, lines 10-12 of Hilhorst), the actual amount of gallic acid in the overall fermented onion composition would also vary. Therefore, the amount of gallic acid in the fermented onion compositions of the prior art is considered to at least overlap the claimed gallic acid content. The selection of a value within the overlapping range renders the claimed gallic acid content obvious. MPEP 2144.05.I.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst (WO 2018/106109; IDS citation) in view of Stürtz (WO 2017/157417; English translation relied on for citations; previously cited), Maeda (JP2003102417A; English translation relied on for citations), and Hundt (WO 2019/143566; IDS citation) as applied to claim 1 above, and further in view of Konuray (Konuray et al., “Potential Use of Bacillus coagulans in the Food Industry”, 2018, Foods, 7, 92).
Regarding claim 18, modified Hilhorst teaches the invention as described above in claim 1, including the microorganism in (c) may be any lactic acid bacteria (Hilhorst, page 9, lines 4-14); and that the incubating temperature in (d) is between about 10°C and about 60°C (Hundt, page 8, lines 4-5). This disclosed temperature range encompasses the claimed temperature range of 50-60°C. The selection of a value within the encompassing range renders the claimed temperature obvious. MPEP 2144.05.I.
Modified Hilhorst does not teach that the microorganism in (c) is Bacillus coagulans.
However, Konuray teaches that Bacillus coagulans is a lactic acid bacteria that has been gaining the attention of food manufacturers due to the low cost of products of Bacillus coagulans and the use of these products as alternatives to other chemical sources (abstract; page 2, 4th paragraph- page 6, 1st paragraph).
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Hilhorst to use Bacillus coagulans as the lactic acid bacteria in fermentation as taught by Konuray. Since Hilhorst teaches that the microorganism in (c) may be any lactic acid bacteria (page 9, lines 4-14); and Konuray teaches that Bacillus coagulans is a lactic acid bacteria that has been gaining the attention of food manufacturers due to the low cost of products of Bacillus coagulans and the use of these products as alternatives to other chemical sources (abstract; page 2, 4th paragraph- page 6, 1st paragraph), a skilled practitioner would readily recognize that Bacillus coagulans may be used as the lactic acid bacteria used to inoculate the substrate, thereby rendering present claim 18 obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 9-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, and 12-13 of co-pending Application No. 17/962,208 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claims 1, 9, and 10 require a fermented onion composition comprising the same dry matter content, same saccharide content, and same organic acid content as recited in co-pending claim 1. Instant claim 11 requires the same water content as recited in co-pending claim 2. Instant claim 12 requires the same mg lactic acid equivalent as recited in co-pending claim 4. Instant claim 13 requires the same mg propionate equivalent as recited in co-pending claim 5. Instant claim 14 requires the same mg acid equivalents of citric acid, malic acid, and gallic acid as recited in co-pending claims 3 and 7. Instant claim 15 requires cellular material from lactic acid bacteria and/or Propionibacterium to be present in the composition as recited in co-pending claim 8. Instant claim 16 requires the same process of preparing a food product or beverage as recited in co-pending claim 12. Instant claim 17 requires the same process of preserving food as recited in co-pending claim 13.
Although the co-pending claims do not require the fermented onion composition to be produced using the method of instant claim 1, the composition of the co-pending claims may be produced by the method of instant claim 1 since the co-pending claims do not recite a method of producing the fermented onion composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Objection to Specification: Applicant submitted a replacement abstract which fully addresses the objection. Therefore, the objection is withdrawn.
35 U.S.C. §112(b) of claim 13: Applicant amended claim 13 to fully address the rejection. Therefore, the rejection is withdrawn.
35 U.S.C. §103 of claims 1-13 and 15-17 over Hilhorst, Stürtz, and Cheng: Applicant’s amendments and arguments have been fully considered and are considered to overcome the rejections written in the Non-Final Office Action filed 10/14/2025. Therefore, those rejections are withdrawn. However, upon further consideration, the claims are now rejected as being rendered obvious by the combination of Hilhorst, Stürtz, Maeda, and Hundt or by the combination of Hilhorst, Stürtz, Maeda, and Cheng.
Applicant amended claim 1 to recite that the method now comprises a step of treating the onion substrate with invertase to produce an invertase treated onion substrate. Applicant argued that none of Hilhorst, Stürtz, and Cheng disclose such a step (Applicant’s Remarks, pages 6-7, section A).
However, in the new grounds of rejection necessitated by the amendment of the claims, claim 1 is now rejected as being rendered obvious by the combination of Hilhorst, Stürtz, Maeda, and Hundt or by the combination of Hilhorst, Stürtz, Maeda, and Cheng. As described above in the rejections of present claim 1, since Stürtz teaches that the onion mash from which the onion substrate is produced may be treated with carbohydrate-degrading enzymes (page 4, lines 12-20), wherein the enzymes may comprise enzymes besides arabinase, cellulase, beta-glucanase, hemicellulose, xylanase, and pectinase (page 4, lines 36-39), a skilled practitioner would have been motivated to consult an additional reference such as Maeda in order to determine a suitable carbohydrate-degrading enzyme besides arabinase, cellulase, beta-glucanase, hemicellulose, xylanase, and pectinase for an onion substrate. Maeda teaches that an onion substrate may be treated with a carbohydrate-degrading enzyme such as invertase (page 1, line 56- page 2, line 6). Therefore, the claimed treatment of the onion substrate with invertase to provide an invertase-treated onion substrate is rendered obvious.
Since the new combinations of prior art are shown to render the present claims obvious, the rejections of the claims stand as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 14 over Hilhorst, Stürtz, Cheng, Iqbal, and Hur: Applicant’s amendments and arguments have been fully considered and are considered to overcome the rejection written in the Non-Final Office Action filed 10/14/2025. Therefore, that rejection is withdrawn. However, upon further consideration, the claim is now rejected as being rendered obvious by the combination of Hilhorst, Stürtz, Maeda, Cheng, Iqbal, and Hur.
Applicant argued that neither Iqbal nor Hur teach a step of treating the onion substrate with invertase as now recited by present claim 1 (Applicant’s Remarks, page 7, section B).
However, in the new grounds of rejection necessitated by the amendment of claim 1, the features of claim 14 are now rendered obvious by the combination of Hilhorst, Stürtz, Maeda, Cheng, Iqbal, and Hur, wherein Maeda discloses a step of treating an onion substrate with invertase as described in the claim rejections and response to arguments above. Since the new combination of prior art is shown to render the present claim obvious, the rejection of claim 14 stands as written herein.
Double Patenting Rejection: Applicant will address the rejection when the present claims are deemed otherwise allowable (Applicant’s Remarks, page 7, paragraph under “Double Patenting”).
The double patenting rejection is maintained as written herein.
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.
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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