DETAILED ACTION
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 02/04/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or persuasive remarks: (1) the objection to claim 1 has been withdrawn; (2) the 35 U.S.C. §103 rejections of claim 3 over Kim, Hawer, and Pinelo has been withdrawn; and (3) the 35 U.S.C. §103 rejections of claim 4 over Kim, Hawer, Pinelo, and Smith has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-6
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: 1, 3
New claims: 6
Claims currently under consideration: 1-6
Currently rejected claims: 1-6
Allowed claims: None
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR20200099743A; IDS citation; English translation relied on for citations) in view of Kim (KR 20160081413A; IDS citation; English translation relied on for citations), hereinafter referred to as “Hawer”.
Regarding claim 1, Kim teaches a method of producing a food additive comprising lactic acid bacteria, mushroom extract, soybean powder extract, magnesium sulfate, MSG, and natural flavors [0021], [0050]-[0051]. Since these ingredients are natural ingredients and the composition is a food additive, this composition of Kim is considered to be a natural seasoning so that Kim is considered to teach a method of producing a natural seasoning as recited in the preamble of present claim 1. Kim discloses that the mushroom extract may be obtained through hot water extraction of oyster mushroom and winter mushroom (corresponding to shiitake and enoki mushroom) [0046], thereby rendering steps (2) and (3) of present claim 1 obvious.
Kim discloses that the method further comprises mixing the oyster mushroom extract and the winter mushroom extract; and inoculating and fermenting this mixture of the mushroom extracts with a Lactobacillus acidophilus strain and a Pediococcus pentosaceus strain to prepare lactic acid bacteria fermented product of the oyster mushroom and lactic acid bacteria fermented product of the winter mushroom [0021]-[0022] as recited in steps (4) and (5) of present claim 1. These disclosures of Kim renders step (4) of present claim 1 obvious. However, Kim does not teach that step (4) comprises inoculating the oyster mushroom extract of step (2) separately from step (5) of inoculating the winter mushroom extract of step (3) as recited by present claim 1. However, the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. MPEP §2144.04.IV(C). Present claim 1 does not require the product produced by the method of present claim 1 to have any particular features (e.g., taste). Therefore, inoculating the oyster mushroom extract separately from the winter mushroom extract prior to combining the extracts together as recited by the present claims instead of inoculating the extracts after the extracts have been combined as recited by Kim is rendered obvious.
Kim does not teach that the Lactobacillus acidophilus strain is the strain with the Accession number KCTC 14825BP as recited in step (5) of present claim 1. However, “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [. . .] "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).” MPEP 2144.07. Therefore, the claimed strain is rendered obvious, especially wherein the seasoning being produced is not required to have any particular features (e.g., taste). Consequently, step (5) of present claim 1 is rendered obvious.
Kim teaches that the seasoning further comprises a natural flavor [0051]; and that the seasoning has health functionalities [0018]. Kim does not teach: step (1) of present claim 1 regarding preparation of kelp extract; or step (6) of present claim 1 regarding combining the lactic acid bacteria fermented product of the oyster mushroom and lactic acid bacteria fermented product of the winter mushroom with the kelp extract of step (1).
However, Hawer teaches that an interest in pursuing natural food seasonings for the health benefits has increased and that kelp is widely used in the art as a natural seasoning for its content of high quality amino acids [0003]-[0004], [0079]. Hawer teaches carrying out hot water extraction of kelp followed by drying the extract (corresponding to concentration) to prepare kelp extract [0046] as recited in step (1) of present claim 1. Hawer also discloses that the kelp extract may be combined with shiitake mushroom extract to create the seasoning [0062].
It would have obvious for a person of ordinary skill in the art to have modified the seasoning of Kim by including kelp extract as the natural flavoring agent as recited by Hawer. Since Kim discloses that the seasoning comprises mushroom extracts such as shiitake mushroom extract [0046] and that the seasoning has health benefits [0018], but does not disclose a natural flavoring having such a feature, a skilled practitioner would have been motivated to consult an additional reference to determine a suitable natural flavoring for a seasoning containing mushroom extract and wherein the seasoning provides health benefits. Furthermore, Kim discloses that the additional ingredients such as the flavoring agents are added to the fermented food [0050], thereby at least suggesting combining the lactic acid bacteria fermented product of the oyster mushroom and the lactic acid bacteria fermented product of the winter mushroom of Kim with the kelp extract of Hawer. Therefore, the features of steps (1) and (6) of present claim 1 are rendered obvious.
Regarding claim 2, Kim teaches the invention as described above in claim 1, including the mushroom extracts are inoculated and fermented with a Lactobacillus acidophilus strain and a Pediococcus pentosaceus strain to prepare lactic acid bacteria fermented product of the oyster mushroom and lactic acid bacteria fermented product of the winter mushroom [0021]-[0022]. Modified Kim does not teach that the Lactobacillus acidophilus strain is the strain with the Accession number KCTC 14825BP; or that the Pediococcus pentosaceus strain is the strain with the Accession number KCTC 14826BP. However, “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [. . .] "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).” MPEP 2144.07. Therefore, the claimed strains are rendered obvious, especially wherein the seasoning being produced is not required to have any particular features (e.g., taste).
Regarding claim 5, modified Kim teaches the method as described above in claim 1. Therefore, modified Kim discloses a natural seasoning produced by the method of claim 1.
Allowable Subject Matter
Claims 3, 4, and 6 are allowable over the prior art.
However, claims 3, 4, and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Claim Objections: Applicant amended claim 1 to fully address the objection. Therefore, the objection is withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1-2 and 5 over Kim and Hawer: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant amended claim 1 to recite that the inoculation of the oyster mushroom extract and the inoculation of the winter mushroom extract occurred separately from one another. Applicant argued that Kim does not teach separate inoculation of these mushroom extracts. Applicant argued that the claimed separate inoculation steps is not a mere order-of-steps variation as the claimed separate inoculation steps as the present specification shows that fermentation behavior, pH drop, total acidity, and sensory outcomes depend on the particular combination of mushroom type and lactic acid bacteria strain used in the mushroom-specific fermentation. Applicant pointed to Table 6 in the present specification to demonstrate that Pediococcus pentosaceus JMIL002 provides the highest umami score in the oyster mushroom among the tested strains; and that Lactobacillus acidophilus JMIL001 provides the highest umami score in the winter mushroom among the tested strains. Applicant argued that the mixed fermentation of both bacteria strains and mushroom types together as disclosed by Kim cannot be reasonably expected to yield the same outcomes as separate fermentation of the mushroom types and bacteria strains as recited in present claim 1 (Applicant’s Remarks, page 5, 2nd paragraph under section II.A. – page 7, 1st paragraph; page 7, 4th paragraph – page 8, 1st paragraph).
However, the Examiner points out that neither present claim 1 nor claim 5 recite any particular strain of Pediococcus pentosaceus; and that Table 6 of the present specification demonstrates that a strain of Pediococcus pentosaceus provide one of the lowest umami scores in oyster mushroom. The Examiner also points out that the product produced by the method of claim 1 is not required to have any particular features, let alone have a particular level of umami taste, acidity, or sensory outcomes. Furthermore, the method of present claims 1 and 2 does not recite: (1) any time or temperature for fermentation or (2) amount of kelp extract and fermented mushroom extracts in the resulting product. Therefore, claims 1, 2, and 5 exclude any parameters which might impose a particular umami taste, acidity, or sensory outcome on the resulting product. Therefore, the product produced by the method of claim 1 may not have the features asserted to be present.
Applicant then argued that the Examiner’s “selection of known material” rationale does not apply to the claimed JMIL001 and JMIL002 bacterial strains as this premise contradicts the aim of enhancing flavor and umami taste (Applicant’s Remarks, page 7, 3rd paragraph; page 12, 3rd-4th paragraphs).
However, it is noted that the features upon which Applicant relies (i.e., enhancing flavor and umami taste) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As such, the product produced by the method of claims 1 and 2 is not required to have any particular features, let alone have a particular level of flavor and umami taste.
Applicant then argued that Hawer does not remedy the aforementioned defects of Kim as the result of the combination of Kim and Hawer does not disclose separate fermentation of the mushroom extracts followed by blending the fermented mushroom extracts and kelp extracts in specific ratios (Applicant’s Remarks, page 8, 2nd-5th paragraphs).
However, the Examiner points out that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. MPEP §2144.04.IV(C). Present claim 1 does not require the product produced by the method of present claim 1 to have any particular features (e.g., taste). Present claim 1 also does not require the mushroom and kelp extracts to be combined in any particular ratios. Therefore, inoculating the oyster mushroom extract separately from the winter mushroom extract prior to combining the extracts together as recited by the present claims instead of inoculating the extracts after the extracts have been combined as recited by Kim is rendered obvious.
Since the prior art has been shown to render the claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of claims 1-2 and 5 are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 3 over Kim, Hawer, and Pinelo: Applicant’s arguments, see page 8, 6th paragraph – page 10, 5th paragraph, filed 02/04/2026, with respect to claim 3 have been fully considered and are persuasive. The 35 U.S.C. §103 rejection of claim 3 has been withdrawn.
Claim Rejections – 35 U.S.C. §103 of claim 4 over Kim, Hawer, Pinelo, and Smith: Applicant’s arguments, see page 11, 1st paragraph – page 12, 2nd paragraph, filed 02/04/2026, with respect to claim 4 have been fully considered and are persuasive. The 35 U.S.C. §103 rejection of claim 4 has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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