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 .
This office action is in response to applicant’s submission dated January 30, 2026. Any objections and/or rejections made in the previous action, and not repeated below, are hereby withdrawn.
Claim 1-11 are pending, and claims 2-11 remain withdrawn from consideration as being drawn to a non-elected invention.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites the limitation “HEMF” but does not define what the acronym is. Appropriate correction is required. For the purposes of examination, HEMF will be interpreted to mean homofuranol.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Hide et al. (JP2014083028A).
Citations in the rejection are to Espacenet the translation of JP2014083028A, which is provided with the previous action.
With respect to Claim 1, Hide et al. teaches a flavor improver composition for soy sauce or for a soy sauce flavor enhancer, wherein the composition contains a gamma lactone [0010] represented by the formula:
PNG
media_image1.png
134
243
media_image1.png
Greyscale
Hide et al. teaches that the R group comprises 4-heptanolide, 4-octanolide, 4-nonanolide, 4-decanolide, and 4-undecanolide, [0010] which reads on the gamma lactone recited in claim 1 wherein the compound is:
PNG
media_image2.png
144
249
media_image2.png
Greyscale
Wherein n is represented by an integer between 2 and 6.
Additionally, Hide et al. teaches a flavor composition comprising a food or drink and the flavor improver in a concentration range between 0.01 ppb to 100,000 ppb, then adding the flavor composition to soy sauce between 0.1 to 1%. [0013] The resulting soy sauce would have between 0.00001 to 1000 ppb of the flavor improver. Hide et al. also teaches that homofuranol, or HEMF, is a characteristic aroma component of brewed soy sauce, and is known to exist in soy sauce between 50 and 100 ppm. [0020]
According to the MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside the ranges disclosed by the prior art’ a prima facie case of obviousness exists”. The range of flavor improver added to a soy sauce or soy sauce seasoning taught by Hide et al. overlaps with the range recited in claim 1, and the amount of HEMF known to exist in soy sauce is within the range recited in claim 1.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to have produced a soy sauce or soy sauce-like seasoning comprising a gamma lactone at a concentration between 100-60,000 ppb, wherein the gamma lactone is represented by the formula:
PNG
media_image2.png
144
249
media_image2.png
Greyscale
Wherein n is between 2 and 6, and HEMF between 20-400 ppm, thereby rendering claim 1 obvious.
Response to Arguments
Applicant's arguments filed January 30, 2026 have been fully considered but they are not persuasive.
Applicant asserts on Page 7, lines 3-7, that, “the concentration at which effects are demonstrated in Hide's Examples does not overlap the numerical range recited in claim 1” and “by defining the content of γ-lactone as from 100 ppb to 60,000 ppb, the seasoning provides a perceivable fruity aroma, and thus the present invention should be considered to be non-obvious on this basis”. Applicant continues on lines 13-16, “Paragraph [0023] of Hide describes: ‘It is preferable to add gamma-lactone in a concentration range such that the concentration ratio (gamma-lactone:homofuronol) between gamma-lactone and homofuranol derived from soy sauce or a soy sauce flavoring agent is from 1:500,000,000 to 1:5,000, in particular from 1:50,000,000 to 1:50,000.’”
Applicant is directed to MPEP 2141.02 VI, which states, “A prior art reference must be considered in its entirety” and MPEP 2144.05 I, “In the case where the claimed ranges ‘overlap or lie inside the ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Hide et al. teaches a greater range of gamma-lactones and HEMF than is provided in the section referenced by the applicant. Alternatively, Hide et al. teaches gamma-lactones between 0.00001 to 1000 ppb, [0013] which overlaps with the range recited in claim 1, and HEMF in soy sauce between 50 and 100 ppm, [0020] which lies within the range recited in claim 1.
For these reasons, applicant’s assertions are found to be unpersuasive, and the rejection of claim 1 is maintained.
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 JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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, Nikki Dees can be reached at 571-270-3435. 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.
/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791