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 I, claims 1-8 in the reply filed on March 16th, 2026 is acknowledged. Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
The requirement is deemed proper and is therefore made FINAL.
The applicant has submitted new claims 14-21.
Newly submitted claim 19 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 19 recites a food product that contains no starch, whereas the elected group of original claims (1-8) recites a food product that contains starch (claim 7).
Accordingly, claim 19 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Newly submitted claim 21 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 21 recites a food product that contains no starch, whereas the elected group of original claims (1-8) recites a food product that contains starch (claim 7).
Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1-8, 14-18, and 20 are pending and were examined on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The priority date is August 31, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed April 16th, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because of a typographical error in the Foreign Document Number of Foreign Patent Document 1. The Foreign Document Number should be typed 2018023327. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement (IDS) submitted on November 19th, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms Perten Instruments and Panasonic, each of which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, each term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim objected to because of the following informalities: for correct grammar "The food product according to claim 1, wherein when the 10 mesh-pass fraction is measured by the "Method α", the maximum viscosity at the time point when the fraction reaches 80°C is less than 200 cP" should be amended to "The food product according to claim 1, wherein when the 10 mesh-pass fraction is measured by the "Method α", and the maximum viscosity at the time point when the fraction reaches 80°C is less than 200 cP". Appropriate correction is suggested.
Claim Interpretation
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. Descriptions of the mushroom ingredient in terms of shortest side length (claims 1, 15, 17, and 20) and volume (claims 2 and 14) are understood to apply to individual pieces of mushroom. Mass percentages and weight percentages of ingredients comprising the claimed composition are understood as equivalent, because all of these ingredients are reasonably in the same gravitational environment (claims 1, 2, 5, 7, 14, 17, and 20). The claims are not understood to limit the type of container holding the claimed food product. The term “enokitake” is understood to refer to the same species of mushroom as the term “enoki”, Flammulina velutipes.
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.
The term “ingredient” in claims 1, 2, 14, 15, 17, and 20 is a relative term which renders the claim indefinite. The term “ingredient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The composition of the food product is rendered indefinite by the term "ingredient". It is not understandable whether a mushroom ingredient is comprises raw or cooked mushroom material, how the mushroom was cooked (if cooked), whether the ingredient also comprises other materials that are not mushroom-derived, and whether the term "ingredient" refers to individual pieces or slices of an ingredient material in a composition when the "ingredient" is further described in terms of shortest side length (claims 1, 15, 17, and 20), and volume (claims 2 and 14). It is also not understandable which "ingredient", recited in independent claim 1, is further limited by the limitations of dependent claims 2 and 14.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “plant” in claim 4 is used by the claim to mean “plant or mushroom,” while the accepted meaning is “plant.” The term “plant” is indefinite because the specification does not clearly redefine the term. Although the applicant attempts to define the term “edible plant” (instant claims 3 and 4; instant specification, paragraph [0015]), the definition provided in the instant specification does not redefine the term “plant”, but merely recites examples corresponding to the term “edible plant” (page 11, lines 16-21 from the top). From the use of the term “plant” in claim 4, and lack of clear redefinition of the term “plant” in the specification, the scope of what is considered a plant in the present invention is not understandable to one of skill in the art. Note also, that unless the applicant defines the term “plant” otherwise, the algae encompassed by this term (instant claim 4) only encompasses algae within the plant kingdom, and would exclude cyanobacteria, brown algae (class: Phaeophyceae), and possibly red algae (phylum: Rhodophyta).
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.
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 1-8, 14-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi Takeshi (JP 2018023327 A), abbreviated "Taguchi".
Claim 1 recites
A food product containing mushroom ingredients, the food product satisfying all of the following (1) to (3):
(1) the food product contains a mushroom ingredient having a shortest side length of greater than 5 mm at a content of 1.0 mass% or more in terms of wet mass in the food product;
(2) a content ratio of a mushroom ingredient having a shortest side length of 5 mm or less to the mushroom ingredient having the shortest side length of greater than 5 mm is 20 times or less in terms of wet mass in a 10 mesh-on fraction;
(3) when a 10 mesh-pass fraction is measured by "Method α", a maximum viscosity at a time point when the fraction reaches 80°C is less than 1200 cP, wherein in the "Method α", the viscosity of 25 g of a measurement sample is measured while a temperature is increased from 50°C to 80°C at a temperature increase rate of 6°C/minute using a rapid visco analyzer (RVA).
Claim 2 recites “The food product according to claim 1, wherein the mushroom ingredient has a volume of greater than 125 mm3 at a content of 1.0 mass% or more in terms of wet mass in the food product”. Claim 3 recites “The food product according to claim 1, wherein the 10 mesh-pass fraction contains an edible plant. Claim 4 recites “The food product according to claim 3, wherein the edible plant includes one or more edible plants selected from vegetables, grains, mushrooms, fruits, potatoes, algae, nuts, and legumes”. Claim 5 recites “The food product according to claim 1, wherein a content percentage of insoluble dietary fiber is 0.001 mass% or more in terms of wet mass in the 10 mesh-pass fraction”. Claim 6 recites “The food product according to claim 1, wherein when the 10 mesh-pass fraction is measured by said "Method α", a ratio of [value β]/[value α] is 5.0 or less, wherein[Value α] refers to a viscosity (cP) at 50°C, and [Value β] refers to a viscosity (cP) at 80°C”. Claim 7 recites “The food product according to claim 1, wherein the food product contains starch at a content of 1.0 mass% or less in terms of wet mass in the 10 mesh-pass fraction”. Claim 8 recites “The food product according to claim 1, wherein the food product is used in an application for cooking with microwave heating”. Claim 14 recites “The food product according to claim 1, wherein the mushroom ingredient has a volume of greater than 510 mm3 at a content of 1.0 mass% or more in terms of wet mass in the food product”. Claim 15 recites “The food product according to claim 1, wherein the mushroom ingredient having the shortest side length of greater than 5 mm contains at least eryngii mushrooms, and the mushroom ingredient having the shortest side length of 5 mm or less contains at least one type of mushroom selected from the group consisting of button mushrooms, enokitake mushrooms, buna-shimeji mushrooms, and shiitake mushrooms”. Claim 16 recites “The food product according to claim 1, wherein when the 10 mesh-pass fraction is measured by the "Method α", a ratio of [value β]/[value α] is 1.0 or less, wherein [Value α] refers to a viscosity (cP) at 50°C, and [Value β] refers to a viscosity (cP) at 80°C”. Claim 17 recites “The food product according to claim 1, wherein a content of the mushroom ingredient having the shortest side length of 5 mm or less is 60.0 mass% or less in terms of wet mass”. Claim 18 recites “The food product according to claim 1, wherein when the 10 mesh-pass fraction is measured by the "Method a", the maximum viscosity at the time point when the fraction reaches 80°C is less than 200 cP”. Claim 20 recites
“A food product containing mushroom ingredients, the food product satisfying all of the following (1) to (3):
(1) the food product contains a mushroom ingredient having a shortest side length of greater than 5 mm at a content of 1.0 mass% or more in terms of wet mass in the food product;
(2) a content ratio of a mushroom ingredient having a shortest side length of 5 mm or less to the mushroom ingredient having the shortest side length of greater than 5 mm is 20 times or less in terms of wet mass in a 10 mesh-on fraction;
(3) when a 10 mesh-pass fraction is measured by "Method a", a maximum viscosity at a time point when the fraction reaches 80°C is less than 200 cP, wherein in the "Method a", the viscosity of 25 g of a measurement sample is measured while a temperature is increased from 50°C to 80°C at a temperature increase rate of 6°C/minute using a rapid visco analyzer (RVA),
wherein the mushroom ingredient having the shortest side length of greater than 5 mm contains at least eryngii mushrooms, and the mushroom ingredient having the shortest side length of 5 mm or less contains at least one type of mushroom selected from the group consisting of button mushrooms, enokitake mushrooms, buna-shimeji mushrooms, and shiitake mushrooms”.
Taguchi recites “The present invention relates to a liquid food containing a mushroom-containing retort container”(Description, Technical Field; instant claim 1). Taguchi further recites “Mushroom pieces to be included in the liquid food are limited in size for each type of mushroom, mushroom pieces having a size of 10 mm x 10 mm x 5 mm or less, and eringi pieces having a size of 5 mm x 5 mm x 5 mm or less and one or more selected from enoki pieces having a cap diameter of 10 mm or less” (Description of Embodiments, paragraph 5; instant claims 1, 2, 15, and 20). Taguchi further recites “The content of the mushroom pieces in the liquid food may be a content known as a mushroom-containing liquid food, and is contained by 30% by weight or less in the liquid food” (Description of Embodiments, paragraph 7; instant claim 2). Although Taguchi does not recite the mushroom pieces having a size of 10 mm x 10 mm x 5 mm or less as button mushrooms, enokitake mushrooms, buna-shimeji mushrooms, and shiitake mushrooms; these mushrooms are all broadly known in the art as edible mushrooms, and thus suitable for use in a food composition, like that recited by Taguchi (instant claims 15 and 20).
Taguchi recites additional ingredients in the food composition: “In addition, solid materials other than mushrooms contained in liquid foods are not particularly limited, and are prepared by processing various solid materials such as meat, fish, vegetables and shellfish used in soups and stews into arbitrary sizes and shapes can be used” (Description of Embodiments, paragraph 2; instant claims 3 and 4).
Taguchi recites the composition containing starch, and adjusting starch and roux to change viscosity: “According to the description in Tables 1 and 2 below, a liquid food with a viscosity of 1200 cP in Example 4 and a liquid food with a viscosity of 1 cP in Comparative Example 2 were obtained. In addition, liquid foods having other viscosities were obtained by adjusting the amounts of roux and starch in Table 1 below” (paragraph 20 below the subheading Retort Container; instant claims 1, 7, 18, and 20).
Although Taguchi does not recite using a rapid visco analyzer (RVA) for viscosity measurements, this limitation is merely a recitation of instrumentation used to make the claimed composition. The choice of an RVA, instead of a different instrument, for viscosity measurement is not recited in the instant claims as materially effecting the claimed composition. Therefore, this choice of instrument is not treated as a limitation of the claimed composition (instant claims 1 and 20).
The food composition recited by Taguchi is intended to be cooked by a microwave oven (Taguchi, Abstract; instant claim 8).
Taguchi does not recite the temperature-related viscosity ratio limitations of instant claims 6 and 16. However, these limitations are obvious in view of the knowledge of one of skill in the art. One of skill in the art could reasonably prepare the instantly claimed composition (claim 1) as a soup (instant specification paragraph [0099], lines 31-34), in which case the composition would comprise a liquid fraction that would reasonably pass through a 10 mesh sieve, i.e. sieve with 2 mm openings (instant claims 6 and 16). It is broadly known in the art that as temperature increases the viscosity of a liquid generally decreases. An increasing temperature would correspond to increasing thermal energy that would disrupt intermolecular interactions such as hydrogen bonds and dispersion interactions. Therefore, it would be obvious to one of skill in the art to prepare a composition having a greater viscosity at 50 °C than at 80 °C, i.e. the ratio of [value β]/[value α] would be less than 1.0, and thus less than 5.0 (instant claims 6 and 16).
The instant claims are distinguished from Taguchi through the following quantitative limitations:
A 1.0 or more wet mass% of the mushroom ingredient with a shortest side length of greater than 5 mm (instant claims 1 and 20)
A 10 mesh-on fraction content ratio of a mushroom ingredient having a shortest side length of 5 mm or less to the mushroom ingredient having the shortest side length of greater than 5 mm is 20 times or less in terms of wet mass (instant claims 1 and 20).
When a 10 mesh-pass fraction is measured by "Method α", a maximum viscosity at a time point when the fraction reaches 80°C is less than 1200 cP, wherein in the "Method α", the viscosity of 25 g of a measurement sample is measured while a temperature is increased from 50°C to 80°C at a temperature increase rate of 6°C/minute using a rapid visco analyzer (RVA) (instant claim 1)
The 10 mesh-pass fraction contains an edible plant (instant claim 3).
A 10 mesh-pass fraction insoluble dietary fiber content is 0.001 mass% int terms of wet mass (instant claim 5).
A 10 mesh-pass starch content is 1.0 mass% or less in terms of wet mass (instant claim 7)
The mushroom ingredient has a volume of greater than 510 mm3 (instant claim 14)
The shortest side length of eringi/eryngii mushrooms is greater than 5 mm (instant claims 15 and 20)
A content of the mushroom ingredient having the shortest side length of 5 mm or less is 60.0 mass% or less in terms of wet mass (instant claim 17)
The 10 mesh-pass fraction maximum viscosity at the time point when the fraction reaches 80°C is less than 200 cP (instant claim 18).
When a 10 mesh-pass fraction is measured by "Method α", a maximum viscosity at a time point when the fraction reaches 80°C is less than 200 cP, wherein in the "Method a", the viscosity of 25 g of a measurement sample is measured while a temperature is increased from 50°C to 80°C at a temperature increase rate of 6°C/minute using a rapid visco analyzer (RVA) (instant claim 20).
Although Taguchi does not recite the above quantitative limitations, they are obvious over routine optimization to one of skill in the art. One of skill in the art could perform temperature measurements using a cooking thermometer, time measurements using a timer, and use an electric hot plate or electric burner to adjust the heat applied to the food composition when cooking. Using these instruments one of skill in the art could adjust a rate of temperature change in the method of cooking the food composition. One of skill in the art could adjust viscosities by varying the starch and/or roux content of the composition and using a viscometer to measure viscosity (Taguchi, paragraphs 20 and 21 below the subheading Retort Container). One of skill in the art could adjust the mass contents of specific food components using a balance instrument for mass measurements of the food composition and individual ingredients; in the cases of mushroom-derived starch and insoluble fiber in a 10 mesh-pass fraction, these components could reasonably be isolated through centrifugation and subsequent desiccation before mass measurements. One of skill in the art could adjust the dimensions, and by extension the volume, of mushroom and plant ingredient pieces using a knife for cutting the material and a ruler for measuring side lengths. The volumes of irregularly shaped ingredient pieces could be measured using water displacement in a graduated cylinder. One of skill in the art could adjust these parameters for palatability based on user feedback, in terms of the taste, thickness (consistency), and texture of the food composition. Therefore, it would have been obvious to one of skill in the art to optimize the food composition to have the limitations as recited above (instant claims 1, 3, 5, 7, 14, 15, 17, 18, and 20).
Taguchi is relied upon for the reasons discussed above. If not expressly taught thereby, based upon the overall beneficial teachings provided by the references with respect to providing the ingredients of the food composition and its method of cooking, the adjustments of particular conventional working conditions (e.g., the selection from among known components and determining one or more suitable ranges (amounts, proportions, ratios thereof) in which to provide the food composition, is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
From the teachings of Taguchi, the invention as a whole, drawn to a food composition as described in Claims 1-8, 14-18, and 20, would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, and one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing
Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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