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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/22/2026 has been entered.
Application Status
Amended claim 1-7, 9-11, 18-19 and new claim 21-22 are under examination.
Claim 8 is cancelled.
Claim 12-17 and 20 are withdrawn from examination.
Claim 1-7, 9-11, 18-19 and 21-22 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/22/2026 was filed after the mailing date of the Final Rejection on 04/28/2026. 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Withdrawn Rejection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 35 U.S.C. 102(a)(1) rejection over claim 1, 2, 7, 9, 10, 11, 18 and 19 as being anticipated by Suwa Masanori et al. (JP 2002369665-A, Machine Translation English) as evidence by Nutrition and You.com (Ref. V), has been withdrawn in light of Applicant’s amendment to recite new limitation of “…wherein a content of an oil-soluble ingredient in the flavored oil is 50 wt% or more…” in claim 1.
The 35 U.S.C. 103 rejection over claim(s) 3 and as being unpatentable over Suwa Masanori et al. (JP 2002369665-A, Machine Translation English) as evidence by Nutrition and You.com (Ref. V) have been withdrawn.
The 35 U.S.C. 103 rejection over claim(s) 5 and 6 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 (JP 2021023239 A, Machine Translation) have been withdrawn.
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.
Claim 21 is 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.
Claim 21 recites the limitation "the component (A)" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purpose, consideration for the limitation refers to “the one or more ingredients”.
Claim 21 recites the limitation "the component (B)" in line 6. There is insufficient antecedent basis for this limitation in the claim. For examination purpose, consideration for the limitation refers to “the spice”.
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) 1-4, 7, 9, 10, 11, 18, 19, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura et al. (US 2009/0092732 A1, Applicant’s IDS submitted on 7/22/2026, cite no. 1) as evidence by Nutrition and You.com.
Regarding claim 1, 2, 18 and 22, Sugiura et al. (Sugiura) discloses an oil-based processed flavor, (flavored oil) (‘732, [0036], [0059]) comprising yeast extract, vegetable protein hydrolysate (‘732, [0052]), spices including nutmeg and mace (from plant Myristicaceae) (‘732, [0049]); and oil (‘732, [0056]). Sugiura’s oil is considered an oil-soluble ingredient. Sugiura discloses a content of the oil (oil-soluble ingredient) in an amount of 5 to 95% by weight (‘732, [0057]), which overlaps the cited range of claim 1 and 22. In the case where the claimed ranges “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).
Regarding claim 3 and 4, Sugiura 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 the protein hydrolysate and the yeast extract in Sugiura’s oil-based processed flavor, (flavored oil) to include the cited amounts of claim 3 and 4, as a matter of providing a desired flavor profile in Sugiura’s oil-based processed flavor, flavored 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.
Regarding claim 7, Sugiura disclose the oil-based processed flavor (flavored oil) comprising sesame (‘732, [0043]) 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, Sugiura discloses the oil-based processed flavor (flavored oil) comprising the oil including nut-based oil (‘732, [0056]) (nut derivative), wherein the content of the oil is in the range of 5% to 95% by weight,(‘732, [0057]) which overlaps the cited range in claim 10.
Regarding claim 11, Sugiura discloses food product comprising the the oil-based processed flavor (flavored oil) (‘732, Abstract, [0021]).
Regarding claim 19, Sugiura discloses the oil includes rapeseed oil (‘732, [0056]).
Regarding claim 21, Sugiura discloses materials which includes the yeast extract, vegetable protein hydrolysate (‘732, [0052]) and the spices including nutmeg and mace (’732, [0049]) in a range of 5% to 95% by weight of the oil, which overlaps the cited ranges. In the case where the claimed ranges “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).
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 Sugiura et al. (US 2009/0092732 A1, Applicant’s IDS submitted on 7/22/2026, cite no. 1) as applied to claim 1 above, and further in view of Hashimoto et al. (JP 2021023239 A, Machine Translation).
Regarding claim 5 and 6, Sugiura discloses the claimed invention as discussed above in claim 1. Sugiura 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 Sugari 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 Sugiura’s oil-based processed flavor, (flavored 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) 1-7, 9-11, 18-19 and 21-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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