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
This Office Action is in response to the Amendments and Arguments filed 22 April 2026. As directed by applicant, claim 1 is amended and claim 2 is cancelled. No claims are added. This is a Final Office Action.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19 in the reply filed on 4 November 2025 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a grinding device in claim 1; an immersion device in claim 1; and a crushing device in claim 1; water adding devices of claim 1, an air blowing device in claim 16, and a heating device in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The immersion device is understood to comprise at least a conveyance channel or pipe for immersing and conveying the soybeans (Specification, p. 2, line 21 and 25).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, and 3-19 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. Claiming 1 and 17 recite a “grinding device”. This is only depicted as a black box in fig. 1 (element 5). For purposes of examination, this is understood to be a “grinder”. Applicant does not describe what this device comprises. Claiming 1 and 17 recite a “crushing device”. Applicant does not describe what this device comprises. Claim 1 recites “water adding devices”. Applicant does not describe what these devices comprise. For purposes of examination, these are understood to be “water supplies to add water”. Claim 10 recites a heating device. Applicant does not describe what this device comprises. For purposes of examination, this is understood to be a “heater”. Claim 16 recites an “air blowing device”. Applicant does not describe what this device comprises. For purposes of examination, this is understood to be an air blower.
Claims 1, 3- 19 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement 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, nor which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites “a crushing device”. Applicant does not describe what this “crushing device” comprises. Is this a different type of device than the “grinding device”? This is only depicted as a black box in fig. 1 (element 9). For purposes of examination, this is interpreted as any device capable of at least some crushing.
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.
[Examiner’s note: Strikethrough indicates that the limitation is not disclosed by the reference]
Claim 1, 3, 5- 8, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Harada Sangyo Co Ltd. (Japanese Patent Publication JP2012187058A; in applicant’s IDS; English machine-translation of Description attached; herein “Harada”) in view of Amano (U.S. Patent Application Publication 2011/ 0089274)and Nakano (U.S. Patent Application Publication 2002/0176925).
Regarding claim 1, Harada discloses a tofu product production device comprising:
an immersion device (fig. 2, continuous dipping/immersing device 16) that immerses the ground soybeans in water and that is provided separately from the grinding device (the grinding device must invariably be separate and come before the immersion device, as Harada does not teach the grinding device, just that the beans are ground, ¶0030); and
a crushing device (Harada, Fig. 1, grinder 44, this is the crushing device for grinding the said soaked ground-growing soybean) that crushes the swollen soybeans to obtain raw soybean paste, wherein
the ground soybeans are immersed for a short period of time in the immersion device (¶0042; some is put back in the immersion device), and
However, Hamada does not disclose “a grinding device that grinds raw soybeans to obtain ground soybeans”; nor, wherein in the immersion device, with the soybeans in water, “obtaining swollen soybeans swollen to at least 1.2 to 2.4 times” nor “the grinding device is provided with one or more water adding devices for grinding the raw soybeans while water is added”.
However, Hamada does teach that the immersing device is provided with “chopped” raw soybean (Hamada, ¶0030, 12). However, Amano teaches a grinding device that grinds raw soybeans to obtain ground soybeans (fig. 1, ¶0047, grinding)
and the grinding device is provided with one or more water adding devices for grinding the raw soybeans while water is added (¶0047, water is added for “wet grinding”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Hamada with the teachings of Amano, to wet grind the soybeans by adding water, , to provide a “grinding device” for pre-grinding/chopping the soybeans before putting them into the hopper leading into the immersing device, to provide the chopped/ ground soybeans to the hopper, in order to improve water absorption and shorten immersion time and to improve the grinding by more easily chopping up the wet beans rather than the hard dry beans for more efficiency, with less power and longer use.
It is noted that the order of the soaking and the grinding may have different orders regarding which one is first, the grinding/soaking. However, these orders are not necessarily not obvious as changes in sequence that do not affect the outcome, are recognized as not obvious (See MPEP §§2144.04(IV)(C) and 2144.04(VI)(C) and thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Hamada in view of Amano, to have a grinding step before a soaking step, to achieve the same and expected result of allowing for soaking of particles to absorb water and to turn the soy beans into a soymilk/paste.
Regarding “obtaining swollen soybeans swollen to at least 1.2 to 2.4 times”, Hamada already teaches the immersion device and soaking the soybeans and, and it would only be a matter of time in the immersion device, and the properties of the soybean that would account for the soybeans swelling/ absorption of water. The device is fully capable of achieving the claimed swollenness, and the manner of operating a device does not differentiate an apparatus claim from the prior art (see MPEP 2114(II). As well, for instance, in making their tofu product, Nakano teaches having the 100 kg of soybeans swell to 220kg, which is a swell factor of 2.2, which is within the claimed range. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to keep the soybeans soaking, enabling them to swell to within the claimed range, in order to process the beans to create a conventional tofu product and the swelling of the soybeans with water is a conventional method of making this product.
Regarding claim 3, Harada in view of Amano and Nakano teaches all the limitations of claim 1, as above, and further teaches a tofu product production device wherein the immersion device is provided with at least one water adding device (Harada, 18, ¶0032) that adds water according to a swelling speed of the ground soybeans.
Regarding claim 5, Harada in view of Amano and Nakano teaches all the limitations of claim 1, as above, and further teaches a tofu product production device wherein the immersion device has a conveyance channel (Harada, Fig. 2, long tank 20 is the channel) for conveying the ground soybeans while the ground soybeans are immersed in water, and
the conveyance channel conveys the ground soybeans from a lower part to an upper part in a direction of gravity (fig. 1, lower part of 16 to upper part of the next process).
Regarding claim 6, Hamada in view of Amano and Nakano teaches all the limitations of claim 1, as above, and further teaches a tofu product production device wherein
the immersion device includes
a pipe (Hamada, 20) configuring a conveyance channel for conveying the ground soybeans while the ground soybeans are immersed in water, and
a pump (Hamada, Fig. 1, 32 and 34 that move/pump the water) that supplies the ground soybeans and the water toward the pipe.
Regarding claim 7, Hamada n view of Amano and Nakano teaches all the limitations of claim 6, as above, and further teaches a tofu product production device wherein the pipe is formed such that the ground soybean is directed from the lower part to the upper part in the direction of gravity (Hamada, fig. 1, dropping from 36 to get to P and eventually get to 42, initially going in the direction of gravity).
Regarding claim 8, Hamada in view of Amano and Nakano teaches all the limitations of claim 6, as above, and further teaches wherein the pipe (Hamada, 20) has a folded portion with an angle of 180 degrees or less (Hamada, fig. 1, where the pipe lets the soybean in, connecting 20 to 12, that is a “folded portion” with a turn of 180 degrees; or where 20 turns into 36.).
Regarding claim 12, Hamada in view of Amano and Nakano teaches all the limitations of claim 1, as above, and further teaches a tofu product production device wherein the immersion device includes a trough (20) configuring a conveyance channel for conveying the ground soybeans while the ground soybeans are immersed in water (Hamada, ¶0038), and a screw provided inside the trough (rotating shaft 22), and the ground soybeans and water supplied into the trough travel through the inside of the trough as the screw rotates.
Regarding claim 13, Hamada in view of Amano and Nakano teaches all the limitations of claim 12, as above, and further teaches a tofu product production device wherein the trough is formed such that the ground soybean is directed from the lower part to the upper part in the direction of gravity (Hamada, fig. 1, dropping from 36 to get to P and eventually get to 42, initially going in the direction of gravity).
Regarding claim 14, Hamada in view of Amano and Nakano teaches all the limitations of claim 12, as above, and further teaches a tofu product production device wherein one or a plurality of the screws (Hamada, 24) are provided inside the trough.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Harada Sangyo Co Ltd. (Japanese Patent Publication JP2012187058A; in applicant’s IDS; English machine-translation of Description attached; herein “Harada”) in view of Amano (U.S. Patent Application Publication 2011/ 0089274) and Nakano (U.S. Patent Application Publication 2002/01769258) and further in view of Ismagilov (U.S. Patent Application Publication 2016/ 0256870) and Struble (U.S. Patent 2,232,282).
Regarding claim 4, Harada in view of Amano and Nakano teach all the limitations of claim 1, as above, but do not further teach a tofu product production device wherein the immersion device has a conveyance channel for conveying the ground soybeans while the ground soybeans are immersed in water, and a cross-sectional area of the conveyance channel increases in accordance with volumetric expansion due to swelling of the ground soybeans. However, Struble teaches bean expansion in water, as is well known, and the need to accommodate for such expansion (Struble, p. 3, column 2, lines 50-60), and Ismagilov teaches having a channel with a tapered/expanding diameter/cross section in order to accommodate expanding beans or product (Ismagilov, ¶60, “duct can be …tapered”), in order to make sure there is enough room for the product to expand and at the same time, move it through the further food processing. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Harada in view of Amano and Nakano with the teachings of Struble and Ismagilov, to have the channel diameter increase in size as it moves along, in order to make sure there is enough room for the product to expand and at the same time, move it along to further food processing.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Harada Sangyo Co Ltd. (Japanese Patent Publication JP2012187058A; in applicant’s IDS; English machine-translation of Description attached; herein “Harada”) in view of Amano (U.S. Patent Application Publication 2011/ 0089274) and Nakano (U.S. Patent Application Publication 2002/01769258) and further in view of Iwamoto (U.S. Patent Application Publication 2007/ 0128335).
Regarding claim 17, Harada in view of Amano and Nakano teaches all the limitations of claim 1, as above, but does not further teach a tofu product production device comprising: a rotary positive displacement single shaft eccentric screw pump to which the ground soybeans obtained by the grinding device and water are supplied, wherein the rotary positive displacement single shaft eccentric screw pump supplies the ground soybeans and the water to the immersion device while mixing the ground soybeans and the water. However, such a pump, such as a mohno pump (Applicant’s specification, ¶79) , is conventional in the art to move a soybean slurry product, such as in Iwamoto (Iwamoto, ¶0071). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Harada in view of Amano and Nakano with the teaching of Iwamoto, to have the claimed conventional pump moving the ground beans to the immersion device, in order to move a slurried mixture in a conventional way with the expected result of moving the product consistently.
No art is currently being applied against claims 9-11, 15, 16, and 18-19.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are not persuasive.
Regarding the §112(a) rejections, because the elements are being interpreted according to §112(f), it is required to look to the specification to determine the structure of the generic elements. Thus, the argument that such devices are well known or that it is well-known how these elements interact is not sufficient. As well, there is no indication how the “crushing device” is enabled, or how it is different than the “grinding device” for that matter. The Wand factors are the standard of inquiry for whether a limitation is sufficiently enabled, and while some of the factors may slightly lean toward an enabled “crushing device”, such as the state of the art (factor 3), the level of one of ordinary kill in the art (factor 4) and the nature of the invention (factor 2), the name of the limitation, “crushing device”, which is a very generic name and that the specification does not specify a means for crushing, leans heavily toward “not enabled” as this indicates the limitation is exceedingly broad (factor 1). How or if this is different than a “grinding device” is not clear, and a working example is not apparent (factor 7), so these factors lean heavily towards and justify the conclusion that the device is not enabled.. Particularly in light of the §112(f) interpretation, this grinding device is not enabled (see MPEP §2161.01).
Regarding the §103 rejections, applicant’s arguments 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. A new reference was added in that specifically the grinding machine and the immersion device must be distinct elements, and water is provided to the grinding device (of course, it is also provided separately to the immersion device as well).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached form PTO-892.
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 LAWRENCE H SAMUELS whose telephone number is (571)272-2683. The examiner can normally be reached 9AM-5PM M-F.
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/LAWRENCE H SAMUELS/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
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