DETAILED ACTION
Background
The amendment dated March 04, 2026 (amendment) amending claims 1-2, 7, 9-10, 14 and 18-19, adding new claims 21-25 and canceling claims 3, 6 and 11-13 has been entered. Claims 1-2, 4-5, 7-10 and 14-25 as filed with the amendment have been examined. In view of the cancelation of claims 3, 6 and 11-13 all rejections of those claims have been canceled.
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 .
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-2, 4-5, 7-10, 14-20 and 24-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claims 1 and 18, the newly recited “stopping the growth of the organism that generates the plurality of enzymes” lacks a proper written description. The instant specification does not disclose or suggest a generic stopping of the growth of the claimed organism; and, it is not clear if or how any fermenting or aging temperature or period disclosed at, for example, [0034]-[0037] of the instant specification describes the recited stopping the growth, much less while continuing the recited aging.
Claims 2, 4-5, 7-10, 14-17, 19-20 and 24-25 rejected as depending from a rejected base claim.
Claim Rejections - 35 USC § 102
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.
Claim 1-2, 4-5, 7-10, 14-15, 18-19 and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN111345444 A to Li (Li).
All references to Li refer to the Clarivate machine translation, a copy of which is included with this Office action.
The Office considers the claimed plurality of enzymes comprising at least glycosidase and protease enzymes as including the enzymes produced by any Aspergillus fungus as disclosed in the instant specification at [0024]. Further, the Office considers a generic disclosure of amylase without more to include α-amylase.
Regarding instant claims 1, 2, 7-8, 18-19 and 25, Li at Abstract on pages 1-2 discloses a preparation method of malt extract (“method of manufacturing a substrate prepared for use in making a beverage” - claim 1) and a malt extract (“prepared substrate for use in making a beverage” - claim 18), the method comprising soaking wheat kernels (“providing a starch-containing and protein-containing substrate”); preparing a culture medium by adding at least one kind of Aspergillus oryzae (“inoculating the substrate with an organism that generates a plurality of enzymes, the enzymes comprising at least glycosidase and protease enzymes” as in claims 7-8, as Aspergillus fungi in claim 19, and consisting of Aspergillus fungi as in claim 25); culturing in the culture medium as a middle fermentation method (“fermenting the substrate with the organism that generates the plurality of enzymes” as in claims 1 and 18); wet dipping and germinating the substrate at a germination temperature is 13-18 °C for 72 hours (“stopping growth of the organism that generates the plurality of enzymes” as in claims 1 and 18); drying; crushing and roasting (“subjecting the substrate or cereal to a temperature sufficient to initiate a Maillard reaction” as in claims 1 and 18) the product, and then extracting (“further comprising subjecting the substrate to liquid-solid extraction, using water” as in claim 15) and drying it (“physically processing the substrate following the Maillard reaction” - claim 2).
Further, and regarding instant claims 4-5, 9-10, 14 and 24, Li at step “e) fermenting” in the paragraph bridging pages 4 and 5 discloses its fermenting in detail as comprising fermenting a middle culture of a barley substrate (claims 4-5 as a cereal grain in claim 18 and a “starch-containing and protein-containing substrate” in claims 1 and 18), wherein the enzymes comprise protease and amylase (claims 1 and 18, and claim 14 including “α-amylase”) and fermenting is done at 30-38 °C for 24-48 hours. At the 1st paragraph on page 5 “f) germinating”, Li discloses after the fermentation, mixing the barley with the wheat and germinating at 13-18 °C for 72 hours (“aging the substrate while exposed to the plurality of enzymes” as in claims 1 and 18, including aging “for a time period sufficient to convert at least a portion of the starch and protein into simple sugars and amino acids” as in claims 1 and 18). Accordingly, Li discloses a process “wherein the fermentation process is carried out at a first temperature and aging is carried out at a second, different temperature” (as in claim 10). Further, the Office considers the claimed fermentation process carried out in an aerobic environment and optionally wherein the aging process is carried out in an anaerobic environment as in claim 9 to include the fermenting (aerobic) and germinating (anaerobic) of Li. Likewise, the Office considers the recited stopping growth comprising subjecting the organism to an anaerobic environment in claim 24 to include in the germination disclosed in Li.
Further regarding instant claim 2, while the Office considers optional limitations including optionally wherein the physical processing comprising grinding the substrate to increase the surface area to volume ratio of the substrate, the claim itself does not require them.
Still further, the Office considers the claim 18 cereal grain that is not germinated when exposed to the plurality of enzymes as including the barley in the fermenting e) of Li as well as the wheat at the beginning of germinating f) in Li.
Regarding instant claim 15, Li at Abstract at the top of page 2 discloses extracting the substrate (“further comprising subjecting the substrate to liquid-solid extraction, using water”) and drying to make a powder wherein further (at BACKGROUND, 1st full paragraph) Li discloses making a beverage therefrom.
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 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over CN111345444 A to Li (Li) as applied to claims 1 and 18 above, and further in view of JP5823771 B2 to Kobayashi (Kobayashi), of record.
All references to Kobayashi refer to the Clarivate machine translation, a copy of which was included with a prior Office action.
As applied to claims 1 and 18, Li at Abstract on pages 1-2 and fermenting e) on pages 4-5 and germinating f) on page 5 discloses a method of manufacturing a substrate prepared for use in making a beverage and the prepared substrate, the method comprising providing a starch-containing and protein-containing substrate as a cereal grain substrate that is not germinated as in claim 18, comprising inoculating the substrate/cereal grain with an organism that generates a plurality of enzymes comprising at least glycosidase and protease enzymes, fermenting the substrate with the organism that generates the plurality of enzymes, stopping growth of the organism, aging the substrate/cereal grain while exposed to the plurality of enzymes for a time period sufficient to convert at least a portion of the starch and protein into simple sugars and amino acids, and subjecting the substrate to a temperature sufficient to initiate a Maillard reaction.
The Office considers the claimed plurality of enzymes comprising at least glycosidase and protease enzymes as including the enzymes produced by any Aspergillus fungus as in the instant specification at [0024]. Further, the Office considers the claimed cereal grain that is not germinated in claim 18 as including the barley of Li and the wheat substrate of Li at the beginning of its germinating.
The Office considers the claimed plurality of enzymes comprising at least glycosidase and protease enzymes as including the enzymes produced by any Aspergillus fungus as in the instant specification at [0024].
Regarding instant claims 16 and 20, Li does not disclose a method further comprising adding yeast to the substrate or cereal grain prior to or during the aging step.
Kobayashi at TECHNICAL FIELD on page 1 discloses an alcoholic or non-alcoholic beverage made from a powder. At DESCRIPTION-OF-EMBODIMENTS on page 2, Kobayashi discloses the beverage powder that contains koji, active yeast and active lactic acid bacteria. In the paragraph bridging pages 2-3, Kobayashi discloses various yeasts including beer yeast. The Kobayashi powder as disclosed at the 2nd to last paragraph of page 3 further comprises amino acids and sugars. At Example 1, (2) on page 6 Kobayashi discloses exposing the powder in water or liquid to the Aspergillus oryzae and yeast and aging for 30 hours at 30 °C. Further, at page 4 (Preparation of non-alcoholic beverages) 2nd paragraph and at page 5 (Preparation of alcoholic beverages) 2nd paragraph discloses using any liquid or juice as suitable for making its beverage.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Kobayashi for Li to add a yeast prior to or during the aging of its grain ferment or koji as in Example 1 of Kobayashi. Both references are drawn to methods of making non-alcoholic beverage powders by fermenting grain products and forming the fermented substrate into a powder. The ordinary skilled artisan in Li would have desired to add a yeast to its crushed substrate culture prior to or during its aging as in Kobayashi to improve the flavor of the product and/or to increase the amount of glycosidase and protease enzymes in the mixture.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over CN111345444 A to Li (Li) in view of JP5823771 B2 to Kobayashi (Kobayashi), as applied to claim 16 above, and further in view of WO2018/001882 A1 to Skadhauge et al. (Skadhauge).
As applied to claim 16, Li at Abstract on pages 1-2 and fermenting e) on pages 4-5 and germinating f) on page 5 as modified by Kobayashi at Example 1, (2) on page 6 discloses a method of manufacturing a substrate for use in making a beverage providing a starch-containing and protein-containing substrate, the method comprising inoculating the substrate with an organism that generates a plurality of enzymes comprising at least glycosidase and protease enzymes and, further, including a yeast, fermenting the substrate with the organism that generates the plurality of enzymes, stopping growth of the organism, aging the substrate while exposed to the plurality of enzymes for a time period sufficient to convert at least a portion of the starch and protein into simple sugars and amino acids, and subjecting the substrate to a temperature sufficient to initiate a Maillard reaction.
Li as modified by Kobayashi does not disclose a yeast comprising Kveik yeast, Saison yeast, or a combination thereof. However, Kobayashi at the top of page 3 discloses yeasts including at line 5 on page 5 a beer yeast and, at page 3, 1st full paragraph a dry yeast.
The Office considers the claimed Kveik yeast to include any quick or rapid dry yeast as in page 3 of Kobayashi.
Skadhauge at Abstract discloses methods of making cereal-based beverages and reducing water and energy consumption, wherein at page 30, lines 3-17 Skadhauge discloses alcoholic and non-alcoholic beverages and Saison yeast for beer.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Skadhauge for Li as modified by Kobayashi to use a Saison and/or a Kveik or quick yeast. All references disclose making cereal-based beverages by a method comprising fermentation with a plurality of enzymes. The ordinary skilled artisan in Li as modified by Kobayashi would have desired to use any beer yeast as in Kobayashi in its fermentation, including the Saison yeast of Skadhauge and a dry quick yeast in Kobayashi.
Claims 21-23 are rejected under 35 U.S.C. 103) as being unpatentable over JP2007143473 A to Yamazaki et al. (Yamazaki), of record, in view of JP2003274879 A to Shinohara et al. (Shinohara).
All references to Yamazaki refer to the Clarivate machine translation, a copy of which was provided in an earlier Office action. All references to Shinohara refer to the Clarivate machine translation, a copy of which is provided with this Office action.
The Office considers the claimed plurality of enzymes comprising at least glycosidase and protease enzymes as including the enzymes produced by any Aspergillus fungus as in the instant specification at [0024]. Further, the Office considers the claimed fermenting to grow an organism that generates a plurality of enzymes and aging to treat a substrate with the plurality of enzymes to include the extended culturing disclosed in Yamazaki.
Regarding instant claim 21, Yamazaki at Abstract on page 1 discloses steaming and crushing buckwheat seeds (“providing a starch-containing and protein-containing substrate”), inoculating Aspergillus oryzae to the crushed product and culturing or fermenting the product (“exposing the substrate to a plurality of enzymes, the enzymes comprising at least glycosidase and protease enzymes”; and “aging the substrate while exposed to the plurality of enzymes for a time period sufficient to convert at least a portion of the starch and protein into simple sugars and amino acids”), and then roasting the product (“subjecting the substrate to a temperature sufficient to initiate a Maillard reaction”).
Further and regarding instant claims 22-23, at MODE-FOR-INVENTION on page 6, Yamazaki discloses fermenting the substrate at a first temperature of 30 °C (about 84°F as in claim 22) for 48 hours under the condition of 95% humidity (“aerobic environment” in claim 23), followed by roasting at 120 °C to make a soba tea. In addition, Yamazaki at the 2nd full paragraph of BEST-MODE on page 4 discloses draining the steamed buckwheat seeds before crushing, thereby creating an aerobic environment for fermenting (claim 23).
Yamazaki does not disclose a method wherein aging is carried out at a second, different temperature, and wherein the first temperature is lower than the second temperature; and, further, Yamazaki does not disclose a herein the second temperature of 130° F to 160° F (about 54 to about 71 °C) as in claim 22.
Shinohara at Abstract on page 1 discloses a method for producing a wheat fermented extract of (at [0001] on page 2) buckwheat substrate comprising adding water to the substrate, inoculating the substrate using Aspergillus fungi and culturing or fermenting followed by aging. At [0019], Shinohara discloses in detail fermenting 200 g buckwheat in water at a water content of 40% at a first temperature of from 28 to 30 °C. (about 80 to 84°F) for at least 35 hours while supplying fresh air, followed by adding roughly 600g water to 200 g of the buckwheat and heating at 40 to 60 °C. (about 105 to 140°F) as a second temperature, which the claimed 130 to 160 °F second temperature overlaps, for 48 hours to age the substrate anaerobically to decompose allergen proteins in the substrate. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Shinohara would have found it obvious to age the substrate at the claimed second temperature because Shinohara discloses that aging at the claimed second temperature is desirable for reducing the allergenic protein content of a fermented buckwheat.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Shinohara for Yamazaki to follow its method of fermenting its substrate in the presence of an inoculant at a first temperature and then aging the fermentation mixture at a second, different temperature wherein the first temperature is lower than the second temperature and wherein the second temperature ranges from 130 to 160 °F. Both references disclose methods of making buckwheat containing foods by fermenting and aging the buckwheat substrate with Aspergillus fungi. The ordinary skilled artisan in Yamazaki would have desired to age its fermented cereal or starch and protein containing substrate for a second, higher temperature of from 130 to 160 °F hours as in Shinohara after fermenting at a first, lower temperature as in Yamazaki to reduce the allergenic protein content of the Yamazaki product.
Response to Arguments
In view of the remarks accompanying the amendment dated March 04, 2026 (Reply), the following rejections have been withdrawn as moot:
The rejections of claims 7-8 and 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in regard to the claim 7 limitation "the one or more fungi” and antecedent basis; and the claim 14 recitation of the plurality of enzymes that comprise a protease or any form of glycosidase;
The rejections of claims 1, 4, 6-9, 13-15 and 18 under 35 U.S.C. 102(a)(1) as being anticipated by JP2007143473 A to Yamazaki et al.;
The rejections of claims 1-4, 6-8 and 10-16 under 35 U.S.C. 103 as being unpatentable over US2001/0041199 A1 to Davids in view of JP5823771 B2 to Kobayashi;
The rejections of claims 2, 16 and 20 under 35 U.S.C. 103 as being unpatentable over JP2007143473 A to Yamazaki et al. in view of JP5823771 B2 to Kobayashi;
The rejections of claims 2-3 and 5 under 35 U.S.C. 103 as being unpatentable over JP2007143473 A to Yamazaki et al. in view of WO2023/028616 A1 to Ganesh et al.;
The rejections of claims 10-12, 19 under 35 U.S.C. 103 as being unpatentable over JP2007143473 A to Yamazaki et al. in view of US2004/005348 A1 to Vincent et al.; and,
The rejection of claim 17 under 35 U.S.C. 103 as being unpatentable over JP2007143473 A to Yamazaki et al. in view of JP5823771 B2 to Kobayashi and WO2018/001882 A1 to Skadhauge et al.
The positions taken with respect to claims 1-20 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.
Responsive to the Reply, Office has fully considered the positions taken in the Reply and does not find the positions persuasive for the following reasons:
Regarding indefiniteness, claim 14 is now reasonably clear and definite because it no longer appears to broaden claim 1 by reciting only one enzyme. However, the Office suggests that a claim segregating the recited enzyme list into grouping of glycosidases (“a glycosidase chosen from …”) and a grouping of proteases (“a protease chosen from ….”) would better serve applicants’ interests;
Regarding the new claims 21-25, the Office had not examined the claims at the time of the Reply. The Davids and Kobayashi references are not relevant as they were not applied to any of the new claims.
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.
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/A.E.M./Examiner, Art Unit 1791 /Nikki H. Dees/
Supervisory Patent Examiner, Art Unit 1791
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