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 .
Status of the Claims
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-15
Withdrawn claims: 1-9
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 4 and 12
New claims: None
Claims currently under consideration: 10-15
Currently rejected claims: 10-15
Allowed claims: None
Election/Restrictions
Applicant’s election without traverse of Group II, claims 10-15 in the reply filed on 23 October 2025 is acknowledged.
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 October 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 12 is objected to because of the following informalities:
In claim 12, “a fermentation product” and “a legume-derived powder” should read, “the fermentation product” and “the legume-derived powder”.
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.
Claims 10-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 recites the limitation, “the method using a legume-derived roasted powder material and a fermentation product powder”. The claim is indefinite because it merely recites a use without any active, positive steps delimiting how the use is actually practiced. See MPEP § 2173.05(q). For purposes of examination, it is construed that the legume-derived roasted powder material and the fermentation product powder are used in any way.
Claim 12 recites the limitation, “wherein a fermentation product is added and dried during the roasting of a legume-derived powder material”. The claim is indefinite because it is unclear to what the fermentation product is added and dried while the legume-derived powder material is being roasted. Additionally, claim 10 requires that the fermentation product is already in the form of a powder (i.e., dried) and that the legume-derived powder is already roasted. Therefore, claim 12 is also rejected under 35 U.S.C. § 112(d) as detailed below.
Claims 13-15 recite the limitation, “wherein an unrefined or semi-refined sugar is used”. The claim is indefinite because The claims are indefinite because they merely recite a use without any active, positive steps delimiting how the use is actually practiced. See MPEP § 2173.05(q). For purposes of examination, it is construed that the unrefined or semi-refined sugar is used in any way.
Claims 13-15 recite the limitation, “wherein an unrefined or semi-refined sugar is used”. The claim is indefinite because it is unclear what level of refinement is within the scope of a semi-refined sugar. For purposes of examination, “a semi-refined sugar” is construed to be a sugar comprising an amount of impurities/non-sugar molecules.
Claims 11-15 are also rejected due to their dependency from claim 10.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 15 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites the limitation, “wherein a fermentation product is added and dried during the roasting of a legume-derived powder material”. Claim 10, from which claim 12 depends, requires that the fermentation product is already in the form of a powder (i.e., dried) and that the legume-derived powder is already roasted. Therefore, the recitation, “wherein a fermentation product is added and dried during the roasting of a legume-derived powder material” does not include all the limitations of claim 10, nor does it further limit “using a legume-derived roasted powder material and a fermentation product powder” as recited in claim 10.
Claim 15 is rejected due to its dependency from claim 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tominaga et al. (US 2011/0033564 A1, cited on the IDS filed on 21 December 2023).
Claim Interpretation:
Claims 10-15 recite, “an oil-based food product”. The term “oil-based” is not defined anywhere in the claims or specification. For purposes of examination, this feature is interpreted in its broadest sense, including wherein fat and/or oil is present in a greater proportion than water.
Regarding claim 10, Tominaga teaches a nama-fu confectionery (fresh gluten cake) in Example 4-E-47 ([0517]). The nama-fu comprises chocolate as the main ingredient and no water (i.e., is an oil-based food product). The nama-fu further comprises Kinako (roasted soybean powder, i.e., a legume-derived roasted powder material) and a fermented soybean hypocotyl material (Reference Example 1-3, which is a powder ([0296])) (i.e., a fermentation product powder) ([0517]). Therefore, in disclosing such a nama-fu confectionery, Tominaga implicitly discloses a method for preparing an oil-based food product, the method using a legume-derived roasted powder material and a fermentation product powder as claimed. Therefore, Tominaga anticipates claim 10.
Regarding claim 11, Tominaga teaches that the fermentation product powder is a product resulting from powderizing a lactic acid fermentation product – the soybean hypocotyl powder was fermented with a Lactococcus 20-92 strain ([0296]), a lactic acid bacteria strain ([0098]), and is therefore a lactic acid fermentation product. The dried fermentation product was processed into a powder (i.e., “powderized”) using a homogenizer to obtain a fermented soybean hypocotyl powder ([0296]).
Regarding claim 12, Tominaga teaches all limitations of claim 10. Because claim 12 fails to further limit using a legume-derived roasted powder material and a fermentation product powder as required by claim 10, the cited prior art teaches all elements of the claim.
Regarding claims 13-15, Tominaga teaches that an unrefined or semi-refined sugar is used – The nama-fu comprises honey ([0517]) (i.e., an unrefined or semi-refined sugar according to the instant specification at paragraph [0030]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Shellhammer whose telephone number is (703) 756-5525. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm ET.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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