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 .
The amendment filed January 26, 2026 is acknowledged. Claims 1-10 are pending in the application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 26, 2026 has been entered.
Claim Objections
Claim 7 is objected to because of the following informalities:
In claim 7 at line 2, it is suggested to remove italics from “koji” after “the” and before “obtained”.
Appropriate correction is required.
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 1-10 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.
Independent claim 1 recites “soy sauce-like seasoning” at lines 1 and 5. It is unclear what is encompassed by this recitation. More specifically, the phrase “soy sauce-like seasoning” renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “like”), thereby rendering the scope of the claim unascertainable.
For the purpose of the examination, the recitation of “soy sauce-like seasoning” (emphasis added) at lines 1 and 5 of claim 1 is interpreted as “soy sauce alternative seasoning” (emphasis added).
Claims 2-10 are not specifically discussed but are rejected due to their dependence on claim 1.
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.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakahara et al. US 20170119035 (hereinafter “Nakahara”).
With respect to claim 1, Nakahara teaches a method for preparing a soy sauce-like seasoning (paragraphs [0001], and [0045]).
Regarding “for producing a soy sauce alternative seasoning” in the preamble of claim 1, it is noted that this is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding comprising step a) making koji by combining a bean selected from the group consisting of a pea, broad bean, chickpea, and combinations thereof, with a composition consisting of crudely-refined protein and/or an amino acid, and step b) maturing the resulting koji to produce the soy sauce alternative seasoning in claim 1, Nakahara teaches a method of producing koji with peas. Auxiliary raw materials such as crudely refined protein and/or amino acid may be added during preparation of the koji. The koji is matured to obtain the soy sauce-like seasoning (paragraphs [0023]-[0025], [0041], [0047], [0049], [0050], and [0053]; P9, claims 7-8).
With respect to claim 2, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein during said step a), the beans are steamed after mixing with 30 to 200 g of water per 100 g of the total weight of beans in claim 2, Nakahara teaches water in an amount of 30 to 120 wt.% based on the weight of the peas (30 to 120 g of water per 100 g of peas) is mixed with the peas, and the mixture is steamed (paragraphs [0036] and [0042]).
With respect to claim 3, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the crudely-refined protein is selected from the group consisting of a crudely-refined pea protein, a crudely-refined broad bean protein, a crudely-refined chickpea protein, a crudely-refine soybean protein, and combinations thereof in claim 3, Nakahara teaches the crudely refined protein is derived from peas (paragraph [0050]).
With respect to claim 7, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of comprising a further step of mixing the koji obtained in said step a) with a salt solution to produce moromi, and wherein said maturing occurs at a temperature range of 5 to 50⁰C in claim 7, Nakahara teaches combining the koji with a salt solution to obtain a moromi, and performing maturation at 15 to 35⁰C in one embodiment (paragraph [0049]).
With respect to claim 8, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein said step a) further comprising adding a seed koji derived from rice in claim 8, Nakahara teaches using seed koji in the koji-making process, and the seed koji is obtained from rice (paragraphs [0001], [0010], [0043], and [0044]).
With respect to claim 9, Nakahara is relied upon for the teaching of the method of claim 7 as addressed above.
Regarding the recitation of wherein said maturing occurs for 2 weeks to 6 months in claim 9, Nakahara teaches the maturation is performed for 3 to 6 months in one embodiment (paragraph [0049]).
With respect to claim 10, Nakahara is relied upon for the teaching of the method of claim 9 as addressed above.
Regarding the recitation of wherein said temperature range is 10 to 45⁰C in claim 10, Nakahara teaches performing maturation at 15 to 35⁰C for 3 to 6 months in one embodiment (paragraph [0049]).
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.
Claims 4, 7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. US 20170119035 (hereinafter “Nakahara”) as applied to claim 1 above.
With respect to claim 4, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the ratio of beans to the crudely-refined protein is 99.5:0.5 to 0.5:99.5 (w/w) in claim 4, Nakahara teaches the crudely refined protein derived from peas is present in the mixture in the amount of 5 to 100 wt.% (weight ratio of beans and crudely refined protein = 95:5 to 0:100) (paragraph [0050]). The range of Nakahara overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 7, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of comprising a further step of mixing the koji obtained in said step a) with a salt solution to produce moromi, and wherein said maturing occurs at a temperature range of 5 to 50⁰C in claim 7, Nakahara teaches combining the koji with a salt solution to obtain a moromi, and performing maturation at 35 to 55⁰C in one embodiment (paragraph [0049]). The temperature range of Nakahara overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 9, Nakahara is relied upon for the teaching of the method of claim 7 as addressed above.
Regarding the recitation of wherein said maturing occurs for 2 weeks to 6 months in claim 9, Nakahara teaches the maturation is performed for 1 day to 2 months in one embodiment (paragraph [0049]). The duration of Nakahara overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 10, Nakahara is relied upon for the teaching of the method of claim 9 as addressed above.
Regarding the recitation of wherein said temperature range is 10 to 45⁰C in claim 10, Nakahara teaches performing maturation at 35 to 55⁰C for 1 day to 2 months in one embodiment (paragraph [0049]). The temperature range of Nakahara overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. US 20170119035 (hereinafter “Nakahara”) as applied to claim 1 above, and in further view of Komura et al. JP 2014054245 (hereinafter “Komura”) (refer to the corresponding machine translation published in English).
With respect to claim 5, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the amino acid is selected from the group consisting of glutamine, arginine, glycine, alanine, and combinations thereof in claim 5, Nakahara does not expressly disclosed the amino acids are glutamine, arginine, glycine, and/or alanine.
Komura teaches producing a koji by adding amino acids to vegetable proteins. The amino acid may be at least one amino acid selected from the group consisting of glycine, alanine, arginine, and glutamine (paragraphs [0001], [0010], [0011], [0015], [0020], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Komura, to select glycine, alanine, arginine, and/or glutamine as the amino acid used in the method of Nakahara based in its suitability for its intended purpose with the expectation of successfully preparing an organoleptically desirable soy sauce-like product. One of ordinary skill in the art would have been motivated to do so because Komura and Nakahara similarly teach utilizing amino acid(s) and koji in the preparation of seasoning liquid, Komura teaches a seasoning liquid with strong salty taste and excellent overall palatability is prepared with the inclusion of amino acids (paragraphs [0010] and [0015]), Nakahara teaches adding amino acid in order to adjust the flavor of the soy sauce-like seasoning (paragraph [0053]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claim 6, Nakahara is relied upon for the teaching of the method of claim 1 as addressed above.
Regarding the recitation of wherein the ratio of the amino acid to the beans is 3% to 15% based on the weight ratio of animo acid with respect to beans in claim 6, Nakahara does not expressly disclosed the quantity of amino acid used.
Komura teaches producing a koji by adding amino acids to vegetable proteins. At least 3% of amino acid is added (paragraphs [0001], [0010], [0011], [0015], [0020], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range of amino acid, from the range disclosed in the prior art with the expectation of successfully preparing an organoleptically desirable soy sauce-like product. One of ordinary skill in the art would have been motivated to do so because Komura and Nakahara similarly teach utilizing amino acid(s) and koji in the preparation of seasoning liquid, Komura teaches a seasoning liquid with strong salty taste and excellent overall palatability is prepared with the inclusion of amino acids (paragraphs [0010] and [0015]), and Nakahara teaches adding amino acid in order to adjust the flavor of the soy sauce-like seasoning (paragraph [0053]). There would have been a reasonable expectation of success with said modification. "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.
Response to Arguments
Applicant’s remarks filed January 26, 2026 are acknowledged.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues Nakahara does not disclose the claimed sequence. Nakahara consistently teaches adding protein, if at all, during moromi fermentation-not during koji-making. Nothing in Nakahara suggests that early addition would be desirable, workable, or beneficial. Komura does not cure the deficiencies of Nakahara. The Examiner’s reliance on general statements that proteins or animo acids were known flavor-adjusting agents amounts to hindsight reasoning prohibited under MPEP 2145(X)(A). Even if properly combined, a hypothetical method would not include adding the crudely-refined protein during the koji-making step, which is a significant difference as compared to the method of Nakahara, and the benefits of such an early addition could not have been realized from the disclosure of the prior art.
Examiner disagrees. Nakahara teaches the presently claimed method. Applicant is reminded that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Nakahara clearly teaches the claimed method of combining amino acid and/or crudely-refined protein with beans in the step of making koji and maturing the koji. As previously addressed above, Nakahara teaches a method of producing koji with peas. Auxiliary raw materials such as crudely refined protein and/or amino acid may be added during preparation of the koji. The koji is matured to obtain the soy sauce-like seasoning (paragraphs [0023]-[0025], [0041], [0047], [0049], [0050], and [0053]; P9, claims 7-8). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Additionally, the claimed method is anticipated by Nakahara, and Nakahara also teaches an excellent liquid seasoning comparable to high-quality soy sauce is obtained and has almost the same or better flavor as regular soy sauce (paragraphs [0025] and [0050]). Applicant is reminded that evidence of unexpected results is required for overcoming obviousness rejection and cannot be used to overcome anticipation rejections. Applicant is further reminded that "[t]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) and MPEP 2112(I).
Further while Komura does not disclose all the features of the presently claimed invention, Komura is used as teaching reference for dependent claims 5 and 6, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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, 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.
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.
/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
Prosecution Insights