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
Receipt of Remarks/Amendments filed on 12/18/2025 is acknowledged. Claim 2 is cancelled. Claims 1 and 7 have been amended. Claims 1 and 3-7 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/27/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Modified Rejection As Necessitated by the Amendment Filed 12/18/2025
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and 3-7 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention.
Claims 1 and 7 recite “…soy milk that is obtained by removing soybean pulp from a liquid obtained by crushing and dispersing soybean in water or an aqueous solution or dispersion of dried powder of said soy milk.” The sentence construction for the claims is confusing. Specifically, it is unclear if the second “obtained” word refers to the pulp, the liquid, or something else. Furthermore, it is unclear what the phrase “…or dispersion of dried powder of said soy milk” is modifying or referring to. It is unclear if Applicant is stating two alternatives: i) soy milk that is obtained by crushing and dispersing soybean in water or an aqueous solution, OR ii) dispersion of dried powder of said soy milk; or if the dried powder in ii) comes from the first option i), or if it is something else. Therefore, Claims 1 and 7 are indefinite and rejected.
Claims 3-6 are rejected based on their dependence to a rejected claim.
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.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Budolfsen et al. (US 2007/0031577 A1, cited in the IDS; Of record), hereinafter Budolfsen, as evidenced by Grain Mill Wagon (Of record. Homemade Soy Milk Mocha Latte. Posted on December 18, 2012 by Cindy's Recipes and Writings. Obtained from URL <:https://www.grainmillwagon.com/homemade-soy-milk-mocha-latte/> by the Examiner on 09/09/2025), hereinafter GMW.
Budolfsen discloses a method for producing a soy protein product by treatment of soy protein with at least one oxidoreductase (Abstract; Claims 1-4). Budolfsen relates that the soy protein is obtained from soybeans, and that the protein content in defatted soybean edible flakes is 50% [0019]-[0026].
Regarding Claims 1 and 3, Budolfsen discloses treatment of soy protein food product including meat and dairy product [0050]-[0055]. Budolfsen expressly teaches adding water to soy product, including soy flour (Examples 1-3). Combining soy flour and water gives soy milk as evidenced by GMW. Budolfsen expressly teaches an example wherein different soy protein concentrates and isolate are treated with laccase, which is a multi-copper oxidase as evidenced by the instant Claim 3 (Example 1).
Regarding the soy milk being “obtained by removing soybean pulp from a liquid obtained by crushing and dispersing soybean in water or an aqueous solution or dispersion of dried powder of said soy milk” in Claims 1 and 7, Buldofsen teaches preparation of an aqueous suspension of soy protein by mixing a soy protein preparation with water, which reads on the dispersion of powder in water [0042]. While Buldofsen does not expressly recite “dispersing” powder in liquid, dispersion is a broad term for a mixture where particles of one substance are scattered throughout another; and suspension is a type of dispersion. Buldofsen teaches different soy protein preparation including soy protein flour, soy protein concentrate, and soy protein isolate [0019]-[0039]. For example, soy flower are prepared using raw soybeans, which are cracked, dehulled, defatted, and flaked; the flakes are milled/ground, which reads on crushing the soybean [0022]-[0029].
Regarding Claim 4, Budolfsen teaches suitable laccases include those derived from genuses inter alia Trametes.
Regarding Claim 5, Budolfsen expressly teaches different amounts of soy product dissolved in water (Examples 1-3). In one embodiment, 6% soy protein suspended in water, which reads on the protein content being greater than 1g/100 mL (Example 1).
Regarding Claim 7, Budolfsen teaches adding laccase to a soybean product (Examples 1-3). The soy protein preparation of the invention has improved properties compared to a similar soy protein product that has not been treated with an oxidoreductase and useful in preparing food products [0049]-[0055]. Because Buldofsen teaches the same soybean preparation which the instant claim and specification notes for its nut-like flavor, Buldofsen therefore renders obvious the feature of the claim. Because the prior art composition is the identical composition claimed, the composition must necessarily have the characteristics claimed in Claim 7. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Budolfsen, in view of Chen et al. (Molecules 2018, 23, 2591; Of record), hereinafter Chen.
Regarding Claim 6, Budolfsen teaches samples with different viscosities (Table 2), but does not teach a beverage product having the claimed viscosity range. However, the art also teaches that the oxidoreductase is added in an amount sufficient to increase the viscosity of a solution or suspension of the soy protein, and that the amount of a soy protein preparation may be adjusted as to achieve the desired final amount of a soy protein preparation (Claim 7; [0054]).
Chen relates the stability of three model emulsions - coconut proteins, sugar beet pectin (SBP) and coconut protein, and laccase-treated emulsions to simulate concentrated coconut milk (CCM) system (Abstract). Chen teaches the apparent viscosity of the emulsions increased with increasing protein content (Section 2.3, Fig. 5). Chen teaches that the higher the protein content, the higher the viscosity, and that laccase-treated secondary emulsions became more viscous (Section 2.3; Fig. 5). At 0.8 g/100g protein content, untreated with laccase, the viscosity is at the lowest, just above 0 mPas (Fig. 5A).
Budolfsen expressly teaches different amounts of soy product dissolved in water including 6% soy protein suspended in water, which translates to 6 g/100 mL (Example 1). Buldofsen also teaches addition of at least one oxidoreductase in an amount sufficient to increase the viscosity of a solution or suspension of the soy protein (Claim 7). Chen teaches obtaining different viscosities of emulsion depending on the protein content, showing a wide range of concentrations from 0.8 g/100g to 4.8 g/100g, and treatment with SBP and laccase. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Chen with Buldofsen, and adjust the viscosity according to desired thickness or thinness of the beverage product by adjusting the soy protein content and/or treating with laccase starting at the low protein concentration 0.8 g/100g taught by Chen and adjusting as desired.. Where there are a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. See MPEP 2143.
Response to Remarks:
Applicant argued the anticipation rejection over Buldofsen remarking that Buldofsen does not teach the soy milk is "obtained by removing soybean pulp from a liquid obtained by crushing and dispersing soybean in water or an aqueous solution/dispersion of dried powder of said soy milk."
The Examiner traverses this argument. Buldofsen teaches the amended feature, as discussed in the modified rejection supra, necessitated by the amendment.
Applicant claims observing unexpected and unpredictable result in Table 1 wherein the color of the composition change to pink only in processed soy milk obtained by subjecting soy milk to a laccase treatment.
The Examiner considered the argument but was not persuaded. The data fails to demonstrate that the results seen were unexpected to one of ordinary skill in the art at the time of the invention. Please see MPEP §716.02(b)[R-2], which states, “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’ Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)”. Buldofsen has taught the treatment with a laccase, and therefore the skilled artisan would expect the same result as observed in the instant Application. Therefore, the color change and the nut-like flavor are not unexpected, but rather is comparable to what would be already expected from the prior art. The establishment of a property that is also found in the prior art fails to provide a patentable distinction between the products and, therefore, is insufficient to rebut the evidence of obviousness. Please see MPEP §716.02(c)[R-2] (“Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. [n re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977).”)
Conclusion
No claims are allowed.
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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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792