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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 6–17, in the reply filed on 22 December 2025 is acknowledged.
Claims 1–5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Should claims 1–5 remain withdrawn upon allowance of this application, such that they will be canceled, the title should be amended to reflect that no method is claimed.
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 claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
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) 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:
The crushing device in claim 6 (“a general crushing device such as a stainless steel screen mill type (hammer mill type) or a stainless steel or sintered abrasive grain stone mill type can be used”; “In addition, the crushing device may be of a submerged crushing type in which less air is mixed during crushing, but the present invention may be the above-described general crushing method in which a large amount of air is mixed during crushing”).
The heating devices in claims 6 and 10 (“the heating device used in the heating process is not particularly limited, and for example, a continuous heating device that gradually heats the deaerated secondary soybean slurry 19 can be used in a closed atmosphere”).
The solid-liquid separation device in claim 6 (“squeezing machine”).
The conveyance device in claim 14 (“it is preferable that the conveyance device is a positive displacement metering pump”; elsewhere described simply as a “pump”).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Comment: Although the “immersion device” of claim 6 is formulated as a limitation to be interpreted under § 112(f), it is not, since one of ordinary skill in the art would readily understand it to be something like a tank with a selectively openable fluid outlet. See MPEP § 2181.I.C.: “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term ‘means’ or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function.”
Similarly, the deaeration device of claim 6 would be understood to be something like a tank with a vacuum attachment at its top; the enzyme deactivation device of each of claims 7–9 would be some sort of conventional heater or heat-supplying function; and the heat retaining device of claim 10 would be some sort of insulation.
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.
Claim 7 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 7 provides for “an enzyme deactivation device that heats the soybeans or the primary slurry.” The limitation renders the claim indefinite because it only mentions “the soybeans.” It’s unclear if the claim is meant to truly limit the materials that are heated to the soybeans, or if “the soybeans” is meant to be shorthand for the “soybeans, cereals, or nuts and seeds” from independent claim 6, and the preamble.
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.
Claims 6, 12, and 14–16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takai et al. (JP 2003-245503 A, cited by Applicant, translation provided by the Office).
Claim 6: Takai discloses a squeezing device for squeezing soybeans, cereals, or nuts and seeds, comprising:
an immersion device (S1) that immerses soybeans, cereals, or nuts and seeds in warm water of 40°C or higher for a predetermined period of time to obtain primary slurry (MPEP § 2115 explains that the material worked upon does not limit apparatus claims; here, that would be the soybeans or alternatives and water; S1 is described as a “pickled soybean hopper,” which one of ordinary skill in the art would understand to mean soybeans soaked in pickling liquid, meaning that S1 is capable of holding water, with no reason to suspect an inability to hold water at 40 °C; furthermore, as a “hopper,” it clearly suggests that it has a retaining ability rather than being a funnel with a valveless opening, such that it would be capable of immersing said materials);
a crushing device (S2) that crushes the primary slurry with warm water to obtain secondary slurry in a heated state (“In the crusher S2, water SW is added”; plainly, the water that is deliverable to the crusher is capable of being warm such that a heated state results);
a deaeration device (11) that deaerates the secondary slurry having a temperature of 40° C or higher, which is conveyed from the crushing device (via P1; although a storage tank 3 is between the crushing device S2 and the deaeration device 11, Applicant’s own disclosure features intervening elements 4 or 16 between its own crushing device and deaeration device, suggesting that the claim is broad enough to read on Takai’s arrangement);
a heating device (heating device 10 downstream of 11 in fig. 1) that heats the deaerated secondary slurry to obtain heated slurry; and
a solid-liquid separation device (19) that solid-liquid separates the heated slurry.
Comment: This claim seems to define “warm water” itself as 40 °C.
Claim 12: Takai discloses that the soybeans are at least one selected from whole soybeans, pulverized soybeans obtained by coarsely pulverizing raw soybeans, ground soybeans obtained by grinding raw soybeans by a dry method, dehulled hypocotyl-removed ground soybean obtained by removing hypocotyls and seed coats of the ground soybeans, and flaked soybeans (one of ordinary skill in the art would understand “pickled soybean” to mean whole soybeans; furthermore, MPEP § 2115 applies to this claim just as indicated for claim 6 above).
Claim 14: Takai discloses a conveyance device that supplies the secondary slurry to the deaeration device at a temperature of 40° C or higher between the crushing device and the deaeration device (supply pump P1 supplies the secondary slurry to the deaeration device; a temperature of 40 °C or higher would be effectuated at least by heating means 10 between P1 and the deaeration device 11).
Claim 15: Takai discloses that the conveyance device is a positive displacement metering pump (“a supply pump (quantitative pump) P1,” which is a positive displacement metering pump).
Claim 16: Takai discloses that the heating device is a continuous heating device that gradually heats the secondary slurry in a closed atmosphere (10 heats contents in a closed atmosphere formed by pipe 8).
Comment: “Gradually,” as a term of degree, is understood as broad rather than indefinite. See MPEP §§ 2173.04 and 2173.05(b).
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 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Takai.
Claim 10: Takai discloses a heating device that heats the secondary slurry (10 between P1 and 11 in fig. 1).
Takai does not explicitly disclose that its heating device here heats the secondary slurry within a range of 20° C. or lower.
However, Takai discloses that “the heating means 10 is, in addition to direct steam blowing, indirect steam heating, that is, one that is arranged on the outer periphery of the pipe 8 and is heated from the outside, an electric heater, an IH heating, a microwave heating, an electric heating, an open flame heating, etc.,” and before the effective filing date of the claimed invention, one of ordinary skill in the art would have understood that the steam and/or other heating systems here were controllable such that an appropriate degree of heating, including one 20 °C or less (particularly because the lower bound is zero °C), was achievable.
Comment: The language of “a range of 20° C. or lower” is unusual, but is understood to mean that the secondary slurry is heated no more than 20 °C more than its current temperature.
Claim 11: Takai does not disclose that the secondary slurry is conveyed from the crushing device to the deaeration device without being heated, as it discloses that there is a heating means 10 between S2 and 11 in fig. 1.
However, before the effective filing date of the claimed invention, one of ordinary skill in the art would have understood that this heating means was controllable such that it could be deactivated, which results in it reading on the claim.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Takai as applied to claim 6 above, and further in view of Kusaka et al. (JP H02-057157 A, cited by Applicant, translation provided by the Office).
Claim 7: Takai does not disclose an enzyme deactivation device that heats the soybeans or the primary slurry to a temperature of 70° C. or higher to deactivate enzymes with heat.
However, Kusaka provides teachings relevant to making soy milk, including that heat-treating soybeans in water (prior to crushing) reduces processing time and sterilizes against soil bacillus (which produces enzymes) to improve the smell.
Furthermore, Takai already teaches that a wide variety of heating means are generally usable (“in addition to direct steam blowing, indirect steam heating, that is, one that is arranged on the outer periphery of the pipe 8 and is heated from the outside, an electric heater, an IH heating, a microwave heating, an electric heating, an open flame heating, etc. Can be used”).
Before the effective filing date, it would have been obvious to one of ordinary skill in the art to recognize the teaching of Kusaka, that heat-treating immersed soybeans improves processing time and smell, and to implement this simple feature into Takai by adding heating means at least at its earliest part with soybeans (i.e. S1) using any ordinary heating means described as suitable for the type of system as mentioned in the reference.
Claim 8: Takai does not disclose that the immersion device is an enzyme deactivation and immersion device that performs an enzyme deactivation process of heating the soybeans to a temperature of 70°C or higher for deactivating enzymes with heat.
However, Kusaka provides teachings relevant to making soy milk, including that heat-treating soybeans in water (prior to crushing) reduces processing time and sterilizes against soil bacillus (which produces enzymes) to improve the smell.
Furthermore, Takai already teaches that a wide variety of heating means are generally usable (“in addition to direct steam blowing, indirect steam heating, that is, one that is arranged on the outer periphery of the pipe 8 and is heated from the outside, an electric heater, an IH heating, a microwave heating, an electric heating, an open flame heating, etc. Can be used”).
Before the effective filing date, it would have been obvious to one of ordinary skill in the art to recognize the teaching of Kusaka, that heat-treating immersed soybeans improves processing time and smell, and to implement this simple feature into Takai by adding heating means at least at its earliest part with soybeans (i.e. S1, the immersion device) using any ordinary heating means described as suitable for the type of system as mentioned in the reference.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Takai as applied to claim 6 above, and further in view of Gupta (US Pub. 2003/0138534).
Takai does not disclose that the crushing device is an enzyme deactivation and crushing device that performs an enzyme deactivation process of heating the primary slurry to a temperature of 70° C or higher for deactivating enzymes with heat.
However, Gupta discloses a highly similar system where a crushing device (14; 54) is an enzyme deactivation and crushing device that performs an enzyme deactivation process of heating the primary slurry to a temperature of 70° C or higher for deactivating enzymes with heat (¶ 18, “The grinder is further supplied with steam”; ¶ 20, “soybeans are ground in a liquid, usually water or water mixed with organic and/or inorganic chemicals, under pressure and the resulting slurry is instantly heated to the cooking temperature of about 100.degree. C. or above by injecting steam under pressure in the grinder”; ¶ 22, “unit operations of grinding and steam injection are optionally combined into one operation without the problem of steam and water hammer effects”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the crushing device of Takai to adopt the steam function taught by Gupta, to become an enzyme deactivation and crushing device, to inhibit off-flavors (as taught by Gupta, ¶¶ 3 and 7).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Takai as applied to claim 6 above, and further in view of Takai et al. (US Pub. 2010/0086660, “Takai-2010”).
Takai discloses a slurry tank that temporarily stores the secondary slurry between the crushing device and the deaeration device (see storage tank 3 between S2 and 11 in fig. 1).
Takai does not disclose its slurry tank stirring the secondary slurry.
However, However, Takai-2010 discloses a similar system including a slurry tank that stirs its own secondary slurry (¶ 47, “retaining unit,” “between the submerged friction-grinding unit and the heating unit”; ¶ 65, “retaining step Ba,” see fig. 10(a) or (b)).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to implement the stirring feature taught by Takai-2010 into the slurry tank of Takai to bring about a nearly airtight state (as suggested by ¶ 47 of Takai-2010).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Takai as applied to claim 6 above, and further in view of Takai et al. (US Pub. 2017/0128949, “Takai-2017”).
Takai does not disclose that the crushing device is a stainless steel crushing device.
However, Takai-2017 discloses a crushing device for soybeans that is stainless steel (¶ 41, “The rotatable grindstone 100 includes a main body part 110 and an outer circumferential ring part 120 that are each made of a stainless steel”; ¶ 90, “the rotatable grindstone 100 and the stationary grindstone 200 of the present embodiment are made of stainless steel”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to construct the crushing device of Takai of stainless steel, as suggested by Takai-2017, as a material suitable for a soybean crusher (MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761
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