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 Claims
Claims 1, 5-14 and 16 are pending and under examination in this application.
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 1 and 16 is rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal, 2010.
Regarding claim 1, Leong teaches a method of producing tempeh chips (tempeh food product, such as tempeh chip; [0024], [0056]), the method comprising: frying beans (soybeans and other material may be used, such as; chickpeas, black beans, among others not explicitly listed herein; [0056]).
Leong teaches frying the tempeh chips in edible oils [0082]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use any edible oil, including coconut oil with the method of producing tempeh chips as taught by Leong. See MPEP 2144.08.
Leong discloses the frying is performed at a temperature range of about 160-180°C [0082]. This is within the claimed range of about 150-180°C.
Leong teaches the frying is performed for about 2 to about 6 minutes [0082]. This overlaps the claimed range of about 5 to about 7 minutes. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Leong doesn’t limit the type of beans that can be used to make the tempeh. Leong states soybeans and other material may be used, such as; chickpeas, black beans, among others not explicitly listed herein [0056]. However, Leong does not specifically name the use of black-eyed beans as the beans.
Lakshmy teaches a method of producing tempeh chips (Abstract). Lakshmy discloses the beans used to produce the tempeh include black-eyed beans (where tempeh was prepared using cowpea (100%); pg. 151, Materials and Methods paragraph 1 treatment T3 and paragraph 4).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong by incorporating the teachings of Lakshmy by having the beans include black-eyed beans (cowpea) because Leong does not limit the type of bean but states that other material (beans) may be used including those not explicitly listed herein [0056].
Additionally, since Leong states that other material (beans) may be used including those not explicitly listed herein [0056], it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use any bean, including black-eyed beans with the method of producing tempeh chips as taught by Leong. See MPEP 2144.08.
Leong in view of Lakshmy teaches a substantially identical method to the claimed method, as shown by the above rejection. Since modified Leong teaches a method of producing tempeh chips that is substantially identical to the claimed method, the method of modified Leong is considered to possess the property of an acid value of the tempeh chips being about 2.0 mg KOH/g FFA or less, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)). Thus, the tempeh chips of modified Leong are considered to have the acid value as claimed.
Regarding claim 16, Leong in view of Lakshmy teaches tempeh chips, produced by the method of claim 1 [0024-0025], [0056].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal as applied to claim 1 above, and further in view of Fatimat, How to peel beans quickly, Je Gbese, https://jegbese.com/how-to-peel-beans-quickly/#:~:text=Materials,of%20the%20skin%20falls%20off.
Regarding claim 5, modified Leong teaches the method of claim 1, as discussed above. Leong teaches soaking the beans in water when preparing the tempeh [0054] which occurs before performing the frying, but does not state the temperature or the time for soaking.
Fatimat teaches a method of removing husks from beans (peeling beans; pg. 1 title). Fatimat teaches pouring hot water over black-eyed beans and letting them sit for 5 minutes, to help quickly peel or remove the husks from the beans (pg. 1 sub-title above 1st full paragraph, pg. 5 Materials, pg. 6 Step 2). This is within the claimed range of soaking the beans in water for about 3 to about 10 minutes. Fatimat teaches in the materials section (pg. 5) that the water is boiling and then states in step 2 on pg. 6 that the water is hot when poured over the beans. While Fatimat doesn’t specifically state the temperature of the water for soaking the beans, it is clear that the temperature of the boiling water was 100°C when it was prepared as a material for use in the method but then the water cooled so the water was not boiling but still considered hot. A person of ordinary skill in the art would infer that the temperature of the water would be above room temperature of 25°C but below boiling temperature 100°C. See MPEP 2144.01. This encompasses the claimed range for temperature of about 60 to about 70°C.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy to incorporate the teachings of Fatimat by soaking the beans in water for the claimed time and within the claimed temperature because doing so helps encourage quick peeling or removal of the husks from the beans, as recognized by Fatimat (pg. 1 sub-title above 1st full paragraph).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view of Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal, 2010 and in view of Fatimat, How to peel beans quickly, as applied to claim 5 above, and further in view of Schuyler, Easy Organic Sprouted Tempeh, Autodesk Instructables, https://www.instructables.com/Easy-Organic-Sprouted-Tempeh/#ible-footer-portal.
Regarding claim 6, modified Leong discloses the method of claim 5, as discussed above. Leong does not teach germinating the beans. Schuyler teaches a method of making tempeh from sprouted beans (pg. 1 Title and paragraphs 1-3). Schuyler germinates the beans for 18-36 hours (fills beans into a sprouted, which is used for soaking and sprouting beans, lets beans sit to sprout; pg. 2 Step 1, sub-steps 1, 2 and 4). This encompasses the claimed range of about 24 to about 30 hours for germinating the beans. See MPEP 2144.05(I). Schuyler discloses that germinating (sprouting) the beans before making the tempeh adds to the nutrient content, increasing the protein and digestibility (pg. 1 paragraph 3).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy and Fatimat by incorporating the teachings of Schuyler by germinating the beans within the claimed time because germinating (sprouting) the beans before making the tempeh adds to the nutrient content, increasing the protein and digestibility, as recognized by Schuyler (pg. 1 paragraph 3).
Regarding claim 7, modified Leong discloses the method of claim 6, as discussed above. Leong teaches removing the husks from the beans (dehulling the beans; [0054]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view of Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal, 2010 and in view of Fatimat, How to peel beans quickly and Schuyler, Easy Organic Sprouted Tempeh as applied to claim 7 above, and further in view of Kato et al, US 20070082088.
Regarding claim 8, modified Leong discloses the method of claim 7, as discussed above. Leong does not teach soaking the husk-removed beans in vinegar-added water. Kato teaches a method of making tempeh from beans (Abstract). Kato teaches soaking (dipping; [0034]) the husk-removed beans (peeled soybeans; [0041]) in vinegar-added water (an aqueous solution containing an acid such as vinegar; [0034]) to inhibit the growth of bacteria adhering to the beans [0034].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy, Fatimat and Schuyler by incorporating the teachings of Kato by soaking the husk-removed beans in vinegar added water in order to inhibit the growth of bacteria adhering to the beans, as recognized by Kato [0034].
Kato teaches the soaking time of the husk-removed beans in the vinegar-added water is 2 to 14 hours, but it is noted that Kato does not particularly limit the soaking time (dipping time) of the beans [0034]. This is near the claimed range of soaking for about 15 to about 17 hours. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779. See MPEP 2144.05(I).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy, Fatimat, Schuyler, and Kato to have the soaking time of the beans be within the claimed range because Kato teaches the soaking time (dipping time) in the vinegar-added water (acidic solution) is not particularly limited [0034].
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view of Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal, 2010, in view of Fatimat, How to peel beans quickly, in view of Schuyler, Easy Organic Sprouted Tempeh and Kato et al., US 20070082088 as applied to claim 8 above, and further in view of Berg et al., US 20040146606.
Regarding claim 9, modified Leong discloses the method of claim 8, as discussed above. Modified Leong teaches boiling the beans [0054], which have been vinegar-soaked according to claim 8, but does not state the amount of time the beans should be boiled.
Berg teaches an improved method for the production of tempeh [0023]. Berg discloses a boiling time of about 7-15 minutes, noting that a short boiling time was sufficient and that prolonged boiling times resulted in negative consequences for the product quality [0032]. This is within the claimed range for about 5-15 minutes of boiling.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy, Fatimat, Schuyler and Kato by incorporating the teachings of Berg by boiling the husk-removed beans for the claimed amount of time because a short boiling time is considered sufficient and prolonged boiling times resulted in negative consequences for the product quality, as recognized by Berg [0032].
Regarding claim 10, modified Leong discloses the method of claim 9, as discussed above. Leong teaches cooling the boiled beans (the beans are then spread out in thin layers and permitted to air dry; [0054]). Leong discloses mixing the beans with Rhizopus oligosporous (inoculating the soybeans with molded bean material or tempeh from a previous tempeh fermentation, where the starter culture is Rhizopus oligosporous; [0052], [0054]). Leong teaches storing the beans to prepare fermented tempeh (inoculated beans are permitted to ferment until the beans are substantially molded, the resulting product is known as tempeh; [0054]).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Leong et al. US 20220369663 in view of Lakshmy et al. Standarisation, acceptability and digestibility of tempeh with cowpea and greengram, Food Science Research Journal; Fatimat, How to peel beans quickly; Schuyler, Easy Organic Sprouted Tempeh; Kato et al., US 20070082088 and Berg et al. US 20040146606 as applied to claim 10 above, and further in view of The Kitchn, How to Make Tempeh, https://www.thekitchn.com/how-to-make-tempeh-cooking-lessons-from-the-kitchn-202369.
Regarding claim 11, modified Leong discloses the method of claim 10, as discussed above. Leong teaches a storage step performed at 30-40°C [0052] for 1 to 2 days, or 24 to 48 hours [0081]. Leong doesn’t teach splitting the storage step into two steps where the second step has a reduced temperature.
The Kitchn teaches a method of making tempeh (pg. 1 Title). The Kitchn discloses a two step storage method where the first storage step is performed at about 85°F to 90°F, or 29°C to 32°C for 12 to 24 hours (pg. 1 Instructions 11 and 12). This is the same temperature as the claimed and overlaps the claimed storage time. See MPEP 2144.05(I).
The Kitchn teaches a second storage step is performed (check between 12 and 24 hours, you may want to lower the temperature; pg. 1 Instruction 12), where the temperature may be lowered but is still in the range of 85°F to 90°F, or 29°C to 32°C and the incubation time for the second storage stage is between 0 to 36 hours (pg. 1 Instructions 11 and 12). This temperature overlaps the claimed temperature and the time encompasses the claimed storage time. See MPEP 2144.05(I). It is noted that the incubation time for the second storage stage of The Kitchn was calculated based on the total incubation time of 24 to 48 hours accounting for the temperature being adjusted between the 12 and 24 hour mark, which indicates the start of the second storage phase being started. The Kitchn discloses the temperature may be lowered, starting the second stage of storage, because the beans will start generating their own heat as the mold grows (pg. 1 Instruction 12).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong in view of Lakshmy, Fatimat, Schuyler, Kato and Berg by incorporating the teachings of The Kitchn by splitting the storage into two storage steps where the second storage step is at a lower temperature because the beans will start generating their own heat as the mold grows, as recognized by The Kitchn (pg. 1 Instruction 12).
Regarding claim 12, modified Leong discloses the method of claim 11, as discussed above. The Kitchn teaches during the second storage step that the beans start generating their own heat as the mold grows (pg. 1 Instruction 12) but is silent as to the maintained internal temperature of the tempeh. However, since modified Leong teaches a substantially identical method to the claimed method, as shown by the above rejection, the fermenting tempeh is considered to possess the property of a maintained internal tempeh temperature of about 46 to about 48°C, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)). Thus, the internal temperature of the fermenting tempeh of modified Leong is considered to have the temperature as claimed.
Regarding claim 13, modified Leong discloses the method of claim 11, as discussed above. Leong teaches slicing the tempeh to a thickness of about 0.7 mm to about 1.4 mm [0082]. This overlaps the claimed range of 1.0 mm to 1.5 mm. See MPEP 2144.05(I).
Regarding claim 14, modified Leong discloses the method of claim 13, as discussed above. Modified Leong teaches a substantially identical method to the claimed method. Therefore, the sliced tempeh of modified Leong is considered to possess the property of moisture content of about 44% or more and a pH between about 4.5 and about 6.0, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)). Thus, the sliced tempeh of modified Leong is considered to have the moisture content and pH as claimed.
Response to Arguments
Applicant's arguments filed April 16, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pg. 6 with respect to Lakshmy as the primary reference and amended claim 1 have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument.
Applicant argues, on pgs. 6-7 of their remarks, that a person of ordinary skill would not have been motivated to modify Leong’s method to use black-eyed beans. Applicant contends that it would not have been obvious to modify Leong in view of Lakshmy to have the beans be black-eyed beans because neither reference provides any teaching, suggestion or motivation for modification, particularly to achieve a specific acid value range. Applicant states that combining Leong in view of Lakshmy without any motivation to do so is impermissible hindsight. Applicant argues that even assuming that Leong and Lakshmy were combined, it would not have been obvious to further modify the resulting method to the claimed frying conditions so as to achieve the recited acid value, since neither reference recognizes acid value as a parameter to be optimized for. However, the Office disagrees for the following reasons.
As shown by the above rejection, there is motivation to modify Leong in view of Lakshmy. Leong doesn’t limit the type of beans that can be used to make the tempeh. Leong states soybeans and other material may be used, such as; chickpeas, black beans, among others not explicitly listed herein [0056]. Lakshmy teaches a method of producing tempeh chips (Abstract). Lakshmy discloses the beans used to produce the tempeh include black-eyed beans (where tempeh was prepared using cowpea (100%); pg. 151, Materials and Methods paragraph 1 treatment T3 and paragraph 4). Thus, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Leong by incorporating the teachings of Lakshmy by having the beans include black-eyed beans (cowpea) because Leong does not limit the type of bean but states that other material (beans) may be used including those not explicitly listed herein [0056].
Additionally, since Leong states that other material (beans) may be used including those not explicitly listed herein [0056], it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use any bean, including black-eyed beans with the method of producing tempeh chips as taught by Leong. See MPEP 2144.08. Thus, the rejection does provide motivation to modify Leong and have the beans include black-eyed beans as claimed.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding applicant’s argument that it would not have been obvious to further modify the resulting method to the claimed frying conditions so as to achieve the recited acid value; the claimed acid value is viewed as a property of the tempeh chips that results from the claimed method steps. Therefore, since modified Leong teaches a method of producing tempeh chips that is substantially identical to the claimed method, the method of modified Leong is considered to possess the property of an acid value of the tempeh chips being about 2.0 mg KOH/g FFA or less, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)). Thus, the tempeh chips of modified Leong are considered to have the acid value as claimed.
Moreover, the burden of proof lies with the applicant to demonstrate that their claimed invention is not obvious over the prior art. The applicant hasn’t compared the closest prior art, specifically the tempeh chips produced by the method of modified Leong, to the claimed product. The Office is unable to do an analysis of the acid value of the tempeh chips produced by the methods and until the applicant has a reasonable case for obviousness the burden is on the applicant to show otherwise. Thus, absent any evidence to the contrary, the tempeh chips produced by the method of modified Leong are considered substantially identical to the claimed tempeh chips as taught above and are considered to possess the property of the specific acid value claimed.
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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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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