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 Application
Receipt of the Response and Amendment after Non-Final Office Action filed 27 February 2026 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the objections to the claims have been withdrawn; (2) the 35 U.S.C. § 112(b) rejections have been withdrawn; (3) the 35 U.S.C. § 112(d) rejections have been withdrawn; (4) the 35 U.S.C. § 102 rejections have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-16
Withdrawn claims: 1-9
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 10-15
New claims: 16
Claims currently under consideration: 10-16
Currently rejected claims: 10-16
Allowed claims: None
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 16 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 16 recites the limitation, “wherein the low-fat soy milk lactic acid fermentation product powder has a fat content of 2.5 wt.% or less”.
MPEP § 2163 (I)(B) states, “To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.” Express, implicit, or inherent support for the above limitation cannot be found in the original disclosure.
Applicant cited paragraph [0022] as supporting this limitation (see Remarks § I). However, paragraph [0022] states, “The low-fat soy milk used in an embodiment of the present invention is a low-fat soy milk in which the fat content is reduced to 2.5 wt.% or less, preferably 2 wt.% or less, more preferably 1.5 wt.% or less based on packaging claims.” Therefore, paragraph [0022] supports that the low-fat soy milk, not the low-fat soy milk lactic acid fermentation product powder, has a fat content of 2.5 wt.% or less. Upon removal of water by drying to a powder, the relative weight percentage of fat would increase, and it cannot be determined from the specification that the low-fat soy milk lactic acid fermentation product powder has a fat content of 2.5 wt.% or less.
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.
Claims 10-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo et al. (JP 2015027280 A, cited on the IDS filed on 21 December 2023, see translation provided) in view of Zainal et al. (Zainal, Z., Burhanuddin, A., & Bilang, M. (2015). The Effect of Soy Milk Powder Substitution on Physical and Organoleptic Characteristics of Chocolate Bar for Lactose-Intolerant People. International Journal of Sciences: Basic and Applied Research (IJSBAR), 24(3), 173-179. https://gssrr.org/JournalOfBasicAndApplied/article/ view/4681), Mital et al. (Mital, B. K., & Steinkraus, K. H. (1979). Fermentation of soy milk by lactic acid bacteria. A review. Journal of food protection, 42(11), 895-899. https://doi.org/10.4315/0362-028X-42.11.895), and Li et al. (Li, C., Liu, H., Yang, J., Mu, J., Wang, R., & Zhao, X. (2020). Effect of soybean milk fermented with Lactobacillus plantarum HFY01 isolated from yak yogurt on weight loss and lipid reduction in mice with obesity induced by a high-fat diet. RSC advances, 10(56), 34276-34289. https://doi.org/10.1039/d0ra06977a).
Regarding claim 10, Kubo teaches a method for producing chocolate-like food (i.e., an oil-based food product), comprising mixing cocoa and cocoa substitute, sugar, whole milk powder, cacao mass and half of vegetable oil and fat and kneading in a kneader, grinding to a particle size of 20-30 µm, adding the remaining vegetable oil and fat, an emulsifier, and a flavor in a conche, and mixing to obtain a chocolate-like food ([0025]). Kubo teaches that the cocoa substitute is produced by alkali treatment of a protein extraction residue and then roast heating ([0007]). The soy protein extraction residue is okara, preferably defatted okara, which is the residue after extraction of soymilk from whole soybeans or after extraction of soy proteins from defatted soybeans ([0008]). In the preparation of the cocoa substitute, the raw material was subjected to a roast process to a final moisture content of less than 7% ([0022]). Roast heating is performed by placing the raw material on a steel plate heated to 120 to 300 °C and appropriately stirring as not to burn ([0012]). It is considered that such stirring while roasting and drying to a moisture content of less than 7% would result in a form of powder. Indeed, the instant specification evidences that stirring while roasting/heating/drying results in a powder (specification, [0042]).
Therefore, Kubo teaches a method for producing an oil-based food product, comprising mixing a legume-derived roasted powder material and a milk product powder (i.e., whole milk powder).
Kubo does not discuss that the milk product powder is a low-fat soy milk lactic acid fermentation product powder.
However, Zainal teaches that soy milk powder can be effectively substituted for cow milk powder in preparing chocolate bars, resulting in a formula of chocolate bar that could help lactose-intolerant people (p. 173, “Abstract” and p. 179, “Conclusion”).
Mital teaches that development of a beany flavor during manufacture of soy milk had limited its use in populations other than those accustomed to soybean foods, and that much effort has been directed toward elimination of beany flavor in processing soy milk (p. 895, col. 1, ¶ 3). Mital teaches three approaches to eliminating the beany flavor: 1) heating the soybeans before or during initial processing to inactivate lipoxygenase to minimize development of undesirable flavors due to degradation or oxidation of lipids, 2) complete extraction of lipids to remove the substrate which leads to development of off-flavors, and 3) fermentation to modify and improve flavor (Id.). Mital concludes that more information is needed regarding activity of lactic cultures in improving the acceptability of soy products (p. 897, col. 2, final ¶).
Li teaches that soybean milk fermented with LP-HFY01 can remove the original beany smell and add soft acid taste and aroma, enhance the characteristics that render it edible, and produce organic acids that can effectively inhibit the reproduction of spoilage bacteria (p. 34287, col. 2, ¶ 2). LP-HFY01 is a Lactobacillus plantarum strain (Title).
Given these teachings, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Kubo with the teachings of Zainal, Mital, and Li to substitute the whole milk powder of Zainal with a low-fat soy milk lactic acid fermentation product powder as claimed. One of ordinary skill in the art would have been motivated replace whole milk powder with soy milk powder in order to provide a chocolate that is suitable for lactose-intolerant individuals as disclosed by Zainal. One of ordinary skill in the art would have been motivated to perform lactic acid fermentation on a low-fat soy milk as suggested by Mital and Li in order to remove the beany flavor of the soy milk and provide a product with desirable organoleptic properties. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because Kubo teaches a method for producing an oil-based food product (chocolate) comprising mixing a legume-derived roasted powder material and milk powder, and Zainal, Mital, and Li suggest that a low-fat soy milk lactic acid fermentation product powder is advantageous over whole milk powder in producing chocolate.
Claim 10 is therefore rendered obvious.
Regarding claim 11, Kubo does not discuss that the low-fat soy milk lactic acid fermentation product powder is a product obtained from powderizing a low-fat soy milk lactic acid fermentation product.
However, Zainal teaches that the soy milk was dried using a nano spray drier, resulting in a soy milk powder (p. 175, ¶ 1). Spray drying is considered to be a form of powderization. Therefore, Zainal teaches this limitation.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have spray dried the low-fat, lactic acid-fermented soy milk described regarding claim 10 above with the same motivation and with the same expectation of success as described regarding claim 10.
Claim 11 is therefore rendered obvious.
Regarding claim 12, Kubo teaches that the cocoa substitute may be produced by mixing and roasting a soybean protein extraction residue and a fermented solution of at least one microorganism selected from lactic acid bacteria and yeast ([0007]). The soy protein extraction residue is okara, preferably defatted okara, which is the residue after extraction of soymilk from whole soybeans or after extraction of soy proteins from defatted soybeans ([0008]). The “culture medium” for preparing the fermented liquid is not particularly limited ([0013]). In the preparation of the cocoa substitute, 10% by weight of the fermentation broth was added to the solid content of the soybean extraction residue ([0021]), and the mixture was subjected to a roast process to a final moisture content of less than 7% ([0022]). Roast heating is performed by placing the raw material on a steel plate heated to 120 to 300 °C and appropriately stirring as not to burn ([0012]). It is considered that such stirring while roasting and drying to a moisture content of less than 7% would result in a form of powder. Indeed, the instant specification evidences that stirring while roasting/heating/drying results in a powder (specification, [0042]).
The cited prior art does not explicitly teach the method further comprising roasting a legume-derived powder material, and adding a low-fat soy milk lactic acid fermentation product to the legume-derived powder material during roasting to dry the low-fat soy milk lactic acid fermentation product.
However, where Kubo teaches adding a lactic acid fermentation product in preparation of the cocoa substitute ([0007]), and favors the use of okara (the residue after extraction of soy milk) as the soy protein extraction residue ([0008]), and where Zainal, Mital, and Li teach replacing cow milk with low-fat, lactic acid-fermented soy milk in chocolate as described regarding claim 10, it would have been obvious to combine the low-fat, lactic acid-fermented soy milk, before spray drying (as described in Zainal, pp. 174-175, “Soy milk powder preparation”), with the roasted okara powder of Kubo in order to dry the low-fat soy milk lactic acid fermentation product as claimed. One of ordinary skill in the art would have been motivated to do so in order to save time and energy involved with spray drying the low-fat, lactic acid-fermented soy milk before adding it to the chocolate composition, and also to use the soy milk resulting in the okara used as the soy protein extraction residue of Kubo in the same process of making the chocolate-like product. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because Kubo teaches mixing the soy protein extraction product and a lactic acid fermentation broth and roasting to a powder, Zainal, Mital, and Li render obvious fermenting a low-fat soy milk with lactic acid bacteria, and “[S]election of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” and “Selection of any order of mixing ingredients is prima facie obvious”, MPEP § 2144.04(IV)(C). Although Kubo teaches mixing the soy protein extraction residue and the fermentation broth prior to roasting, absent any new or unexpected results of first roasting the soy protein extraction residue and then adding the fermentation broth to dry to a powder, the limitations of claim 12 are rendered obvious.
Regarding claim 16, the cited prior art does not explicitly discuss that the low-fat soy milk lactic acid fermentation product powder has a fat content of 2.5 wt.% or less.
However, Mital teaches reducing the beany flavor of soy milk by “complete extraction of lipids to remove the substrate which leads to development of off-flavors” (p. 895, col. 1, ¶ 3).
Therefore, in preparing the low-fat, lactic acid-fermented soy milk powder as described regarding claim 10, it would have been obvious to have completely extracted the lipids from the soy milk, resulting in a fat content of 2.5 wt.% or less as claimed, with the motivation of removing the beany flavor from the soy milk.
Claim 16 is therefore rendered obvious.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo et al., Zainal et al., Mital et al., and Li et al. as applied to claims 10-12 above, and further in view of Aguara Chocolate (Sugars and Sweeteners in Chocolate Production. (2020, April 20). Aguara Chocolate. Retrieved May 6, 2026, from https://aguarachocolate.com/en/sugars-and-sweeteners-in-chocolate-production/).
Regarding claims 13-15, Kubo, Zainal, Mital, and Li teach the methods of claims 10-12, respectively.
Kubo also teaches mixing sugar with the roasted powder material and the milk powder ([0025]).
The cited prior art is silent regarding the type of sugar.
However, Aguara Chocolate teaches several types of sugars used in chocolate production, including brown cane sugar, maple syrup, and honey (pp. 2-3). It is noted that per paragraph [0030] of the instant specification, cane sugar and brown sugar are types of non-centrifugal sugar.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Kubo as modified by Zainal, Mital, and Li with the teachings of Aguara Chocolate use any of the sugars disclosed by Aguara Chocolate, including brown cane (non-centrifugal) sugar, honey, and maple syrup as the sugar in preparing the chocolate-like product. One of ordinary skill in the art would have been motivated to consult Aguara Chocolate to identify a specific type of sugar to use in making the chocolate-like product. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention because Kubo, Zainal, Mital, and Li teach mixing a sugar with the legume-derived roasted powder material and low-fat soy milk lactic acid fermentation product powder, and Aguara Chocolate teaches that sugars from the claimed sugars are commonly used in preparing chocolate.
Claims 13-15 are therefore rendered obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. § 102: Applicant' s arguments with respect to claims 10-15 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. Applicant' s amendments filed on 27 February 2026 are sufficient to overcome the rejections under 35 U.S.C. § 102. Accordingly, the 35 U.S.C. § 102 rejections have been withdrawn. However, upon consideration of the amendments, the new grounds of rejection of claims 10-16 under 35 U.S.C. § 103 presented in this Office action are made.
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 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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