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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/06/2026 has been entered.
Application Status
Amended claim 40-46 and 48-50 are under examination.
Claim 51-59 are withdrawn from examination.
Claim 1-39 and 47 are cancelled.
Withdrawn Rejection
The objection over claim 46 and 50 as set forth in previous office action have been withdrawn in light of Applicant’s amendments.
The 35 U.S.C. 102(a)(1) rejection over claim(s) 40-50 are rejected under as being anticipated by 조상균 (KR 20070019265 A, Machine Translation English) have been withdrawn in light of Applicant’s amendment to recite new limitation in claim 40.
Claim Objections
Claim 40 is objected to because of the following informalities: the term “alpha-amylase” should be “the alpha-amylase” since antecedent has been established in line 4. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 40, 43, 45, 46 and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho Jung Il et al. (KR 20010025273, Machine Translation English).
Regarding claim 40, 43 and 46, Cho Jung Il et al. (Cho) discloses a method of making an improved functional beverage (whole soy food product) (‘273, Abstract) comprising fermenting soybeans (whole soybeans) (‘273, pg. 4, first paragraph) to provide a fermented soybean, homogenizing the fermented soybean with water (liquefaction product) to liquify with alpha -amylase. Cho’s homogenizing the fermented soybean and the water encompasses liquid and soy pulp fractions. With respect to the limitation of “wherein treatment with alpha-amylase results in an increase in the formulation of glucose chains four and longer when compared to an untreated liquification product”, is considered a functional limitations of alpha-amylase when it’s treated with liquefaction product; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Cho’s fermented soybean with the water (liquefaction product) to liquify with the alpha -amylase, wherein the Cho’s alpha-amylase is expected to result in an increase in the formulation of glucose chains four and longer when compared to an untreated liquification product.
With respect to the limitation of “…wherein the liquefaction product has an average fiber content from about 0.5 wt% to about 5 wt% and a solid content from about 5 wt% to about 50 wt% in claim 40, and the limitation of claim 46, is considered a recitation of an intermediate product, in this case the liquefaction product in the claimed process; as Cho uses like material, whole soybeans, water and alpha-amylase in a like matter of homogenizing (liquefying) and treating with enzymes as claimed; hence it would be therefore be expected that liquid (liquefication product) with solids components (soy pulp fraction) will have the same characteristics claimed, particularly the average fiber content as claimed in claim 40 and 46, absence a showing of unexpected results.
With respect to claim 45 and 48, as Cho uses like material, whole soybeans, water and alpha-amylase in a like matter of homogenizing (liquefying) and treating with enzymes as claimed in claim 40; hence it would be therefore be expected that the high-fiber soybean milk (whole soy food product) will have the same characteristics claimed, particularly the viscosity as claimed, absence a showing of unexpected results.
Claim(s) 41, 42, 44, 49 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Cho Jung Il et al. (KR 20010025273, Machine Translation English) as applied to claim 40 above, and further in view of 조상균 (KR 20070019265 A, Machine Translation English).
Regarding claim 41, Cho discloses the claimed invention as discussed in claim 40. Cho does not explicitly disclose a viscosity of the improved functional beverage (whole soy food product). However, 조상균 (KR’265) discloses a process of making high-fiber soybean milk (whole soy food product) containing whole nutrients of soybean (KR’265, Abstract, pg. 3, 6th full paragraph) comprising grinding soaked soybeans (whole soybeans) with water to provide liquid (liquefication product). , 조상균 (KR’265) discloses the high-fiber soybean milk (whole soy food product) with a viscosity of 20 to 100 cps (KR’265, pg. 5, 4th paragraph) which is in range with cited range. Cho and 조상균 are of the same field of endeavor of making beverage with soybean. It would have been obvious to one of ordinary skill in the art to use 조상균 viscosity in Cho’s method of making the beverage since it is a known and successful viscosity for a beverage. With respect to claim 42, 조상균 (KR’265) discloses a weight ratio of the water (liquid) to soybeans which includes soy pulp, is 4.5 to 4.9 : 1 (KR’265, pg. 4, 3rd paragraph), which is in range with cited range. With respect to claim 44, 조상균 (KR’265) discloses the high-fiber soybean milk (whole soy food product) with particle size of 60 to 90 um (KR’265, pg. 5, ln. 1st paragraph), which is in range with cited range. With respect to claim 49 and 50, 조상균 (KR’265) discloses the high-fiber soybean milk (whole soy food product) with the solid content of 12 to 13 brix % (KR’265, pg. 5, ln. 2nd paragraph), which is in range with cited range.
Response to Arguments
Applicant’s arguments with respect to claim(s) 40-46 and 48-50 have been considered but are moot because the new ground of rejection does not rely on the reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The 35 U.S.C. 102(a)(1) rejection over claim(s) 40-50 are rejected under as being anticipated by 조상균 (KR 20070019265 A, Machine Translation English) have been withdrawn in light of Applicant’s amendment to recite new limitation in claim 40
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Aichinger et al. (US 2013/0280378) discloses a method of preparing cereal milk drink [0021], comprising whole grains [0059]-[0060], milling the whole grains [0061], and treating milled whole grains with enzymatic processing [0064]-[0065] with alpha-amylase [0023]. Aichinger et al. is silent on whole soybean.
Duthie (US 4,259,358) discloses a method of making a milk-replacer, food comprising an aqueous slurry of milled legume seeds (whole beans) (‘358, col. 4, ln 22-39; col. 5, ln. 23-56, col. 6, ln. 5-17) and treated with alpha-amylase (‘358, col. 7, ln. 32-55). Duthie fails to teach the legume is soybean.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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, ERIK KASHNIKOW can be reached at (571)270-3475. 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.
/HONG T YOO/Primary Examiner, Art Unit 1792
Prosecution Insights