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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 requires that the container is an operating bag that is made of a soft and kneadable material. However, claim 7 depends from claim 6 which requires that in step (c), the container is an operating bag that is further subjected to a kneading treatment upon heating. The instant specification discloses that the container is made of a soft and kneadable material in order to undergo kneading [0023, 0028]. Thus, claim 6 must already be interpreted such that the container is made of a soft and kneadable material or it would not be capable of undergoing a kneading treatment. In other words, since claim 6 must already have a container that is kneadable and the instant specification states that such a container (operating bag) is soft and kneadable, then claim 7 is not seen to further limit claim 6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 3-5, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (TW 202340129) (cited on IDS filed 11/13/2025).
Regarding claims 1 and 12, Chen discloses processing vanilla beans by crushing the vanilla pod into a crushed vanilla pod with a diameter between 16 and 30 microns (less than 2mm), and place it in an extraction barrel to rest for 15 minutes. Maintaining a temperature between 40 and 50 degrees Celsius in the high-pressure extraction barrel with a pressure between 270 and 470 bar and injecting a carbon dioxide solution into the extraction barrel for 40 minutes. Thus, Chen discloses crushing vanilla pods, placing the crushed material into a container (extraction barrel) and the barrel is considered sealed due to the maintenance of pressure. And Chen discloses heating to a temperature between 40-50C which falls within the claimed range of 40-65C.
Claim(s) 1 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keifl (US 2023/0263202) (cited on IDS filed 11/13/2025).
Kiefl discloses crushing vanilla beans, placing the beans in a pressure vessel and heating up to 60C [0099]. The application of pressure in the pressure vessel indicates that the vessel must be sealed.
Claim(s) 1, 10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunphy (US 2011/0081448) (cited on IDS filed 10/16/2024).
Dunphy discloses blanching and comminuting vanilla beans and placing in an incubation chamber at 45C for 40 hours (Example 3). The incubation chamber is considered sealed to maintain the relative humidity of 60% and Example 4 states that the lid is sealed.
Regarding claim 10, the blanching step is considered sterilization and is at a sufficient temperature and for a sufficient length of time to kill fungal organisms and other pathogens detrimental to the subsequent steps [0024].
Regarding claim 13, the incubation may be performed at 20-60C and Example 4 is performed at 51C [0077].
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.
Claim(s) 1, 3-5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (CN 107974351) (cited on IDS filed 11/13/2025).
Regarding claims 1 and 12, Liang discloses a method of processing vanilla beans including crushing to 60-90 mesh (60 mesh=0.25mm), placing the crushed particles into an extraction kettle which is considered to be sealed sue to the addition of supercritical CO2, and heating to 35-45C. The temperature overlaps the claimed range of 40-65C, thus rendering the range obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) MPEP 2144.05(I).
Regarding claims 3-5, the introduction of supercritical CO2 is considered to displace any gas in the chamber and the chamber is considered inherently sealed in order to prevent supercritical CO2 from escaping.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (CN 107974351) OR Chen (TW 202340129) (cited on IDS filed 11/13/2025) in view of Dou (CN 216106831).
Regarding claims 8-9, Chen discloses the crushed vanilla pods are mixed in an extraction solution in the high-pressure extraction barrel but does not disclose a stirring treatment or stirring member. The extraction barrel is considered to be a rigid container and the phrase “reaction tank” is not considered to impart any structure other than being capable of containing a reaction. The term “tank” in this context is not seen to have special meaning beyond a container. Likewise, the kettle of Liang is considered a rigid container and meets the limitation of a reaction tank inasmuch as the term is defined.
Dou discloses a supercritical extraction device for edible oil, relating to the technical field of extraction device, comprising an air inlet pipe, a sealing cover, an extraction barrel, a supporting frame and an oil discharging pipe, and a stirring frame 13 (stirring member). The motor 16 on the rotating shaft 15 drives the stirring frame 13 to rotate, so as to stir the edible oil in the extraction barrel 3, at the same time of stirring, it can make the filter screen 18 to extract the impurity in the edible oil. It would have been obvious to one of ordinary skill to use an extraction barrel or extraction kettle such as that disclosed by Dou as the extraction device in Liang or Chen and having a stirring member to subject the material to stirring to mix the material therein. Moreover, stirring the material during heating would be expected to provide homogeneous heating throughout the material.
Claim(s) 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (CN 107974351 (cited on IDS filed 11/13/2025) OR Chen (TW 202340129) in view of Saito (WO 2023/033092) (cited on IDS filed 07/14/2025).
Liang and Chen disclose processing vanilla pods as discusses above but do not disclose sterilization before crushing. Saito discloses sterilizing vanilla pods to prevent the growth and spoilage of microorganisms during long-term curing. Sterilization methods include hot water immersion, flame sterilization, sterilization by heat such as low-temperature heating, sterilization by chemicals such as ethanol, sodium hypochlorite, peracetic acid preparations, ozone water, and acidic electrolyzed water, ultraviolet rays, microwaves, and gamma rays. In addition to sterilization by electromagnetic waves such as sterilization, supercritical carbon dioxide sterilization and the like can be mentioned, and there is no particular limitation as long as it is a means that can obtain a sterilization effect [0020]. It would have been obvious to one of ordinary skill in the art to sterilize the vanilla pods of Liang OR Chen to prevent growth and spoilage of microorganisms during long-term curing (processing) as disclosed by Saito.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Keifl (US 2023/0263202) (cited on IDS filed 11/13/2025).
Kiefl meets the limitations of claim above and further discloses crushing the vanilla bean particles to a size between 1-10mm which overlaps the claimed range of less than 2mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) MPEP 2144.05(I).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (TW 202340129) (cited on IDS filed 11/13/2025).
Regarding claim 13, Chen discloses maintaining a temperature between 40 and 50 degrees Celsius in the high-pressure extraction barrel. The range 40-50C overlaps with the range of 50-60C and Chen further discloses the broader range of maintaining the temperature in the extraction barrel between 50-100C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) MPEP 2144.05(I).
Claim(s) 1, 2, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2023/0380465) (cited on IDS filed 07/14/2025) in view of Hilmer (US 2021/0022382).
Liu discloses a method of processing a vanilla pod including subjecting the vanilla pod to a killing treatment, so as to destroy the cellular tissues of the vanilla pod and release enzymes from the cellular tissues; [0037] (b) subjecting the killed vanilla pod to a disinfection treatment to eliminate bacteria and mold on the surface of the killed vanilla pod [0038] (c) placing the disinfected vanilla pod obtained in step (b) in a container, followed by sealing to keep away from air; and [0039] (d) subjecting the disinfected vanilla pod in the sealed container to a heating treatment at a temperature ranging from 40° C. to 60° C., so that the enzymes react with the components in the disinfected vanilla pod to synthesize aroma molecules [0036-0039]. Liu does not disclose crushing the pods to destroy the tissue structures, however, the killing step is disclosed by Liu as being performed so as to destroy cellular tissues of the vanilla pod and release enzymes from the cellular tissues [0019].
Hilmer discloses provision of freshly harvested spice plant parts; [0019] (b) Breaking up/crushing of the freshly harvested spice plant parts; [0020] (c) Freezing of the broken-up spice plant parts; [0021] (d) Defrosting of the frozen broken up spice plant parts; [0022] (e) and drying the defrosted broken up spice plant parts in a closed system to obtain dried fermented spice plant part particles [0017]. Hilmer discloses using vanilla to produce the spice plant part particles [0053-0054].
After crushing or breaking up the spice plant parts, the broken-up spice plant parts are packed in plastic bags, plastic sacks or other suitable containers, etc. All types of containers suitable for freezing the broken-up spice plant parts are conceivable. The filled plastic bags, plastic sacks or containers are sealed and frozen [0056].
During the subsequent freezing process, ice crystals are formed from the water in the vanilla beans, which break open the cell membrane. By breaking up the cell membrane, glucovanillin on the one hand and the β-glucosidases endogenously present in the vanilla pods, which are located in different compartments of the plant cells, on the other hand, are released from the plant cells [0063].
The drying process of the thawed broken up spice plant parts, in particular the thawed broken up vanilla pods, in the process according to the invention takes place at a temperature in a range of 20° C. to 70° C., preferably at a temperature in the range of 40° C. to 60° C. and most preferably at a temperature in the range of 45° C. to 55° C [0071].
Thus, Hilmer discloses an alternate manner of destroying the tissue and releasing the enzyme where crushing and freezing are used to achieve a similar outcome as “killing” in Liu. Both Liu and Hilmer disclose a heat treatment in a range of 40-60C after the tissues are destroyed and the enzymes released [Hilmer 0071 and Liu 0039]. It would have been obvious to one of ordinary skill in the art to substitute the method of destroying tissue and releasing enzyme (i.e. crushing and freezing) as taught by Hilmer in the process of Liu to provide the same outcome of destroying the tissues and releasing the enzymes, thus one of ordinary skill would reasonably expect a similar outcome. Moreover, Hilmer discloses that particularly high yields of flavoring substances are obtained and that frozen broken up vanilla can be thawed in sealed bags, sacks or containers similar to that used by Liu. Hilmer discloses that this means under exclusion of air, so that no losses of the aroma substances through evaporation or oxidation occur, which would lead to a lower yield on the one hand and to a negative impairment of the sensor profile on the other hand [0065, 0067].
Regarding claim 2, as noted above, Liu discloses a vacuum bag.
Regarding claim 12, Hilmer discloses preferably the size of the broken-up spice plant part particles is between 1 and 50 mm [0055].
Claim(s) 1, 2, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hilmer (US 2021/0022382) in view of Liu (US 2023/0380465) (cited on IDS filed 07/14/2025).
Alternative to Liu in view of Hilmer, it also would have been obvious to modify Hilmer with Liu.
As stated above, Hilmer discloses provision of freshly harvested spice plant parts; [0019] (b) Breaking up/crushing of the freshly harvested spice plant parts; [0020] (c) Freezing of the broken-up spice plant parts; [0021] (d) Defrosting of the frozen broken up spice plant parts; [0022] (e) and drying the defrosted broken up spice plant parts in a closed system to obtain dried fermented spice plant part particles [0017]. Hilmer discloses using vanilla to produce the spice plant part particles [0053-0054].
After crushing or breaking up the spice plant parts, the broken-up spice plant parts are packed in plastic bags, plastic sacks or other suitable containers, etc. All types of containers suitable for freezing the broken-up spice plant parts are conceivable. The filled plastic bags, plastic sacks or containers are sealed and frozen [0056].
During the subsequent freezing process, ice crystals are formed from the water in the vanilla beans, which break open the cell membrane. By breaking up the cell membrane, glucovanillin on the one hand and the β-glucosidases endogenously present in the vanilla pods, which are located in different compartments of the plant cells, on the other hand, are released from the plant cells [0063].
The drying process of the thawed broken up spice plant parts, in particular the thawed broken up vanilla pods, in the process according to the invention takes place at a temperature in a range of 20° C. to 70° C., preferably at a temperature in the range of 40° C. to 60° C. and most preferably at a temperature in the range of 45° C. to 55° C [0071].
Both Liu and Hilmer disclose a heat treatment in a range of 40-60C after the tissues are destroyed and the enzymes released [Hilmer 0071 and Liu 0039].
Hilmer does not disclose keeping the thawed vanilla in a bag during the heating step. Liu discloses placing the disinfected vanilla pod obtained in step (b) in a container, followed by sealing to keep away from air; and [0039] (d) subjecting the disinfected vanilla pod in the sealed container to a heating treatment at a temperature ranging from 40° C. to 60° C., so that the enzymes react with the components in the disinfected vanilla pod to synthesize aroma molecules [0039]. Specifically, in step (d) of this embodiment (which is referred to as “the synthesis step 13” hereinafter), the heating treatment is conducted by placing the sealed vacuum bag 20 containing the killed vanilla pod in an oven 30 for several months. Since the killed vanilla pod sealed in the vacuum bag 20, temperature of the oven will not cause moisture to be evaporated, thereby avoiding excessive drying of the killed vanilla pod and affecting the synthesis of aroma molecules [0030]. It would have been obvious to one of ordinary skill to perform the drying step of Hilmer by providing the vanilla in a bag (container) and heating to the temperature of 40-65C as a similar step is disclosed by Liu where the vanilla is kept in a bag and heated to 40-60C. One of ordinary skill would recognize that keeping the vanilla in a bag during the heating step that is performed in both references would keep the system closed, thereby avoiding any contamination of the vanilla.
Regarding claim 2, as noted above, Liu discloses a vacuum bag.
Regarding claim 12, Hilmer discloses preferably the size of the broken-up spice plant part particles is between 1 and 50 mm [0055].
Claim(s) 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hilmer (US 2021/0022382) in view of Liu (US 2023/0380465) (cited on IDS filed 07/14/2025) OR Liu in view of Hilmer as applied to claim 1 above and further in view of Shizuma (JP 2005289911).
Hilmer in view of Liu (and Liu in view of Hilmer) disclose the use of bags to hold the vanilla material but do not disclose kneading the bag upon heating. The heating step is disclosed by both references. Kneading of a material is known as a manner of mechanical working. Here, mechanically working the vanilla is seen as a manner of mixing as well. It is known to mix or knead a plant material to provide an extract as demonstrated by Shizuma. Shizuma also discloses that kneading can eliminate an increase in viscosity and mechanical resistance. It would have been obvious to one of ordinary skill to mix or knead the vanilla material of Hilmer and Liu to prevent an increase in viscosity and to generally mix the material to ensure even heat treatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793