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 .
Claim status
The examiner acknowledged the amendment made to the claims on 07/08/2026.
Claims 1-14 are pending in the application. Claims 1, 11 and 14 are currently amended. Rest of claims are previously presented. Claims 1-14 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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.
Claims 1-7 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko US Patent Application Publication No. 2016/0044931 A1 (hereinafter referred to as Kaneko).
Regarding claims 1-7 and 10-14, Kaneko teaches a method of making a soy milk fermented substance with a taste and flavor or smooth physicality similar to that of yogurt obtained from fermenting milk (0013), the method comprising inoculating a vegetal base (e.g., soy milk) with an inoculum (e.g., a lactic acid bacteria mixture starter) that comprises a Lactobacillus bulgaricus that is capable of generating 0.4 g/L or more of D-lactic acid in the fermented substance and a Streptococcus thermophilus that is capable of accumulating 0.4 g/L or more of fructose in the fermented substance, and fermenting (0015-0016; 0045); wherein the amount of Lactobacillus bulgaricus in the soy milk fermented substance is 1 x102 to 1 x107 CFU/ml (0045), and wherein the Lactobacillus bulgaricus strain suitable for use is Lactobacillus bulgaricus Lb. 505, Lb. 511 and Lb. 863 strains (0093).
The amount of Lactobacillus bulgaricus as disclosed by Kaneko overlaps with the amount as recited in claim 2 (assuming a density of ~1 g/ml for the soy milk fermented substance). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding the limitation about Lactobacillus bulgaricus being Lactobacillus bulgaricus I-5288, both Kaneko and the claimed invention disclose Lactobacillus Bulgaricus used for making a fermented food and a method of preparing a soy milk fermented substance with a taste and flavor or smooth physicality similar to that of cow milk yogurt comprising inoculating a vegetal base with Lactobacillus Bulgaricus and fermenting (see page 3 line 14-20 of the instant specification, which recites that the plant based dairy alternative is one that is formulated to simulate the organoleptic and/or nutritional qualities of a diary based product), demonstrating a reasonable probability that the each of Kaneko’s Lactobacillus Bulgaricus Lb. 505, Lb. 511 and Lb. 863 strain is either identical to or is a sufficiently similar mutant or variant of the claimed Lactobacillus bulgaricus I-5288- that whatever differences exist are not patentably significant (note that instant specification recites on page 4, line 15-34 that Lactobacillus bulgaricus I-5288 shall be taken to includes functional equivalent bacteria derived therefrom such as mutants, variants, or genetically transformed bacteria). As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Claims 2 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko US Patent Application Publication No. 2016/0044931 A1 (hereinafter referred to as Kaneko) in view of Holtmeyer WO 2014/104887 A1 (hereinafter referred to as Holtmeyer).
Regarding claims 2 and 8-9, Kaneko teaches an inoculum (e.g., a lactic acid bacteria mixture starter) for fermenting a substrate (e.g., soy milk) to produce a fermented substance with a taste and flavor or smooth physicality similar to that of yogurt obtained from fermenting milk (0013), wherein the inoculum comprises a Lactobacillus Bulgaricus that is capable of generating 0.4 g/L or more of D-lactic acid in the fermented substance and a Streptococcus thermophilus that is capable of accumulating 0.4 g/L or more of fructose in the fermented substance (0016); wherein the Lactobacillus bulgaricus strain suitable for use is Lactobacillus Bulgaricus Lb. 505, Lb. 511 and Lb. 863 strains (0093).
Regarding the limitation about Lactobacillus bulgaricus being Lactobacillus bulgaricus I-5288, both Kaneko and the claimed invention disclose Lactobacillus bulgaricus used for making a fermented vegetal food, demonstrating a reasonable probability that the each of Kaneko’s Lactobacillus bulgaricus Lb. 505, Lb. 511 and Lb. 863 strain is either identical to or is a sufficiently similar mutant or variant of the claimed Lactobacillus bulgaricus I-5288- that whatever differences exist are not patentably significant (note that instant specification recites on page 4, line 15-34 that Lactobacillus bulgaricus I-5288 shall be taken to includes functional equivalent bacteria derived therefrom such as mutants, variants, or genetically transformed bacteria). As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, Kaneko teaches that a starter for making a fermented product (e.g., yogurt) such as a commercial starter is provided in a freeze-dried form (0051). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have provided the lactic acid bacteria mixture starter in freeze-dried form with reasonable expectation of success, for the reason that such a form is known to be suitable for a starter for fermentation.
Kaneko teaches a starter comprising Lactobacillus bulgaricus for fermenting a substrate to make a fermented substance, but is silent regarding the amount of Lactobacillus bulgaricus in the inoculum.
Holtmeyer in the same field of endeavor teaches a starter in freeze-dried form comprising Lactobacillus bulgaricus for fermenting a substrate (e.g., dairy base) to make a fermented substance, the starter comprising at least 107 cfu/g viable Lactobacillus bulgaricus (page 2, line 24-page 4, line 3).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kaneko by providing a freeze-dried lactic acid bacteria mixture starter comprising at least 107 cfu/g viable Lactobacillus bulgaricus with reasonable expectation of success, for the reason that prior art has established that such an amount of at least 107 cfu/g viable Lactobacillus bulgaricus is suitable in an inoculum or stater culture for fermentation.
Response to Arguments
Applicant's arguments filed 07/08/2026 have been fully considered and the examiner’s response is shown below:
Applicant argues on pages 4-7 of the Remarks that the office’s rejection rests on an erroneous premise that all L. bulgaricus strains are identical or are sufficiently similar mutant or variant of one another. Applicant further argues that while L. bulgaricus CNCM I-5288 has unique volatile (e.g., acetaldehyde, diacetyl and acetone) production profiles as shown in Fig. 1-3 of the instant specification, nothing in Kaneko suggests that L. bulgaricus Lb. 505, Lb. 511 and Lb. 863 have the above properties thus the strains as disclosed by Kaneko are different from L. bulgaricus CNCM I-5288.
The arguments are considered but found unpersuasive because:
First, there is no evidence showing the office’s position is that all L. bulgaricus strains are identical or are sufficiently similar mutant or variant of one another, rather, the office’s stance is that CNCM I-5288 as claimed is not patentably significant from the strain as disclosed by Kaneko. In particular, given that both Kaneko and the claimed invention disclose Lactobacillus Bulgaricus used for making a fermented food and a method of preparing a soy milk fermented substance with a taste and flavor or smooth physicality similar to that of cow milk yogurt comprising inoculating a vegetal base with Lactobacillus Bulgaricus and fermenting (see page 3 line 14-20 of the instant specification, which recites that the plant based dairy alternative is one that is formulated to simulate the organoleptic and/or nutritional qualities of a diary based product), demonstrating a reasonable probability that the each of Kaneko’s Lactobacillus Bulgaricus Lb. 505, Lb. 511 and Lb. 863 strain is either identical to or is a sufficiently similar mutant or variant of the claimed Lactobacillus bulgaricus I-5288- that whatever differences exist are not patentably significant (note that instant specification recites on page 4, line 15-34 that Lactobacillus bulgaricus I-5288 shall be taken to includes functional equivalent bacteria derived therefrom such as mutants, variants, or genetically transformed bacteria). See In re Best.
Second, it is noted that the volatile profile as applicant has pointed out are not part of the limitation of the instant claims. Further, where the office shifts the burden and submits that Lactobacillus Bulgaricus Lb. 505, Lb. 511 and Lb. 863 strain is either identical to or is a sufficiently similar mutant or variant of the claimed Lactobacillus bulgaricus I-5288, applicant has not been able to compare the strains of the prior art with I-5288 and show that the strains of the prior art do not have the volatile profile of I-5288 thus confidently concluding that they are different strains.
It is noted that Larrere or Larrere2 is no longer relied upon in the instant office action, rendering applicant’s argument that Larrere or Larrere2 does not anticipate or render obvious the instant claims moot.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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