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 .
Application Status
Amended claim 1-7, 9-11 and new claim 18 and 19 are under examination.
Claim 12-17 and new claim 20 are withdrawn from examination.
Claim 1-7, 9-11, 18 and 19 are rejected.
Election/Restrictions
Newly submitted claim 20 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 20, drawn to a product that is distinct from the invention originally claimed and elected of Invention I, claim 1-11 (elected on 10/30/2025, Response to Election/Restriction Filed).
Inventions I, claim 1-11 and Invention III, claim 20 are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the product of Invention III (claim 20) requires amounts of one or more ingredients selected from an added amount of 0.50 wt % to 10% wt % yeast-derived substances based on the total weight of the flavored oil and an added amount of 0.50 wt % to 10 wt % of protein hydrolysates based on the total weight of the flavored oil, said one or more ingredients being selected from beer yeast digest, torula yeast extract, corn-derived protein hydrolysate and soy-derived protein hydrolysate; B) an added amount of 0.050 wt% to 3.0 wt % based on the total weight of the flavored oil of nutmeg which is not required in the product of Invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/13/2026 was filed after the mailing date of the Non-Final Rejection on 11/19/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejection
The claim objections set forth in previous office action over claim 6 and 10 have been withdrawn in light of Applicant’s amendments.
The 112, second paragraph rejection over claim 5 and 8 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) 1, 2, 9 and 10 as being anticipated by Mineshima (WO 2017061524 A1, Machine Translation) has been withdrawn in light of Applicant’s amendment to recite new limitation “…a spice derived from one or more plants of Myristicaceae…” in claim 1.
The 35 U.S.C. 102(a)(1) rejection over claim(s) 1, 2, 5, 7, 9, and 11 as being anticipated by Wang et al. (CN 108378143 A, Machine Translation) has been withdrawn in light of Applicant’s amendment to recite new limitation “…a spice derived from one or more plants of Myristicaceae…” in claim 1.
The 35 U.S.C. 103 rejection over claim(s) 3, 4 and 10 as being unpatentable over Wang et al. (CN 108378143 A, Machine Translation) has been withdrawn in light of Applicant’s amendment to claim 1.
The 35 U.S.C. 103 rejection over claim(s) 5 and 6 as being unpatentable over Mineshima (WO 2017061524 A1, Machine Translation) as applied to claim 1 above, and further in view of Hashimoto et al. (JP 2021023239 A, Machine Translation) has been withdrawn in light of Applicant’s amendment to 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.
Claim(s) 1, 2, 7, 9, 10, 11, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suwa Masanori et al. (JP 2002369665-A, Machine Translation English) as evidence by Nutrition and You.com (Ref. V).
Regarding claim 1, 2, 7, 11 and 18, Suwa Masanori et al. (Masanori) discloses a liquid seasoning of edible oil (flavored oil/food) (‘665, pg. 2, last paragraph) comprising yeast extract and protein hydrolysates (‘665, pg. 4, bottom page); spices including nutmeg (derived from Myristicaceae plant) (‘665, pg. 4, middle page); and edible oils (‘665, pg. 3, bottom page). With respect to claim 7, Masanori discloses the liquid seasoning of edible oil (flavored oil) (‘665, pg. 2, last paragraph) comprising sesame (‘665, pg. 3, middle page) which contains thiamin (vitamin B1) as evidence by Nutrition and You.com (Ref. V, header: Health Benefits of Sesame Seeds, bullet point 5).
Regarding claim 9 and 10, Masanori discloses the edible oils including peanut oil (nut derivative) (‘665, pg. 3, bottom page) in an amount of 0.05 to 10% by weight of the liquid seasoning, which is in range with the cited range.
Regarding claim 19, Masanori discloses the edible oils including rapeseed oil (‘665, pg. 3, bottom page).
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.
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Suwa Masanori et al. (JP 2002369665-A, Machine Translation English) as evidence by Nutrition and You.com (Ref. V).
Regarding claim 3 and 4, Suwa Masanori does not explicitly a weight ratio of the yeast extract to the protein hydrolysate. However, it would have been obvious to one of ordinary skill in the art to be motivated to optimize amounts of Masanori’s protein hydrolysate and the yeast extract to include the cited amounts of claim 3 and 4, as a matter of providing a desired flavor profile in the spiced seasoning oil, absent a clear and convincing argument or evidence to the contrary.
Attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 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.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Suwa Masanori et al. (JP 2002369665-A, Machine Translation English) as evidence by Nutrition and You.com (Ref. V) as applied to claim 1 above, and further in view of Hashimoto et al. (JP 2021023239 A, Machine Translation).
Regarding claim 5 and 6, Suwa Masanori discloses the claimed invention as discussed above in claim 1. Masanori not explicitly disclose the yeast extract is torula yeast. However Hashimoto et al. (Hashimoto) discloses flavor oil (‘239, pg. 2, 1st and 2nd full paragraph) comprising yeast extract from torula yeast (‘239, col. 3rd and 7th paragraph).
Hashimoto and Masanori are of the same field of endeavor of flavor oil containing yeast extracts. It would have been obvious to one of ordinary skill in the art to be motivated to use Hashimoto’s torula yeast in Masanori’s flavoring oil because Hashimoto teaches torula yeast are known and successful yeast extract in flavor oil.
Response to Arguments
Applicant’s arguments with respect to claim(s) 02/17/2026 have been considered but are moot because the new ground of rejection does not rely on combined reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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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.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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