DETAILED ACTION
Amendments made May 13, 2026 have been entered.
Claims 9-12 are pending.
As the claims are only directed to a method, the previously made rejection is moot. It is noted that applicant stated the previous claims had been filed, however, are not found in the file before the restriction was mailed.
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 Objections
Claims 10-12 are objected to because of the following informalities:
Claims 10-12 recite “The method for producing a powdered beverage composition according to claim 9…”. As claim 9, from which the claims depend already introduce the powdered beverage, the claims should recite “The method for producing the powdered beverage composition according to claim 9…”.
Claim 11 recites “pounding sesame”. Although understood, it is suggested that the term be amended to recite “to pound the sesame seeds” for consistency of claim language.
Appropriate correction is required.
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.
Claims 9-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation a 50% cumulative diameter of less than 30um, and the claim also recites a 50% cumulative diameter of from 8 and up to less than 30 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Similarly, the term a 90% cumulative diameter of 50-150um recited in claim 9 is unclear.
Claim 11 recites “the upper and lower disks”. First there is no antecedent basis for the term. Second, it is unclear as to if the term “disks” is referring to an upper disk and a lower disk, or if it is requiring a plurality of upper disks and a plurality of lower disks.
The term “coarsely” in claim 12 is a relative term which renders the claim indefinite. The term 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. It is unclear as to the metes and the bounds of the claimed particle size as what one may consider course, another person may not.
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.
Notes: The term cumulative diameter means a percentage of particles which have a diameter below the recited range. See at least instant specification page 10 last paragraph, page 21 last paragraph, and Figure 2.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 08-038115A machine translation) in view of Carter et al (“Effect of Processing on the Composition of Sesame Seed and Meal” pages 148-150 The Journal of The American Oil Chemists’ Society Volume 38 1960) and Fellows (Food Processing Technology Principles and practice 2nd Edition, Woodhead Publishing 2000, page 108).
Regarding claim 9, Inoue teaches a method of producing sesame powder which is considered a powdered beverage composition as it is a powder capable of use in a beverage (paragraph 10). Inoue teaches that the method comprises:
An oil squeezing step comprising: roasting sesame seeds, pressing the roasted sesame seeds to a residual oil content of less than 30%, and heating with steam to provide heated and pressed roasted sesame seeds; and
Grinding the heated and pressed roasted sesame seeds to obtain a powder, i.e. a non-paste form (overview and paragraphs 1, 4, and 6-9).
Regarding the ground product as comprising 50% cumulative diameter ranging from 8-30um, and a 90% cumulative diameter ranging from 50-150um as recited in claim 9, as discussed above the claimed limitations are unclear. Regardless, a cumulative diameter means the amount of particles less than the recited size. Thus, in the broadest reasonable interpretation, the claim as recited requires at least of the 50% particles with a diameter of less than 30um, and at least 90% of the particles with a diameter of less than 150um. As Inoue teaches that the powder passes through a 200-mesh sieve, which is the equivalent of about 74 microns (paragraph 9), the powder of Inoue encompasses the product as claimed, i.e. with 100%, including at least 50% and 90% of the particles within the claimed range. Additionally, Fellows, which is a handbook for food processing, teaches that size reduction is used in food processing to control the textural properties of food and to improve the efficiency of mixing and heat transfer (page 108, Section 4.1.3). It would have been obvious to adjust the size of the ground product, and thus the cumulative diameter ranges based on the desired texture, i.e. grittiness or smoothness, of the powdered product in view of Fellows, wherein a smaller diameter would provide a smoother taste and a larger diameter would provide a rougher taste.
Inoue is not specific to the heating in the oil squeezing step, i.e. after roasting and before grinding, as from 120-180C as recited in claim 9.
Carter et al (Carter) teaches that moderate heat during processing of oilseeds may improve the nutritive quality of meals, but that too severe a temperature may impair the protein quality (page 148, column 1 paragraph 2). Carter teaches that after conditioning with steam and before pressing, the sesame seed material was conditioned in a cooker at maximum temperatures of 250F (121C) and 270F (132C) (page 148, Experimental Section paragraphs 1 and 2). It would have been obvious to one of ordinary skill in the art for the sesame seeds of Inoue in the oil squeezing step, i.e. before pressing and after steaming, to be heated to about 121-132C to improve the nutritive quality without damaging proteins in view of Carter.
Regarding claim 10, as Inoue teaches that the seeds are squeezed and then ground (overview and paragraphs 1, 4, and 6-9), the seeds of Inoue would be transferred from a squeezer to a grinder.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 08-038115A machine translation) in view of Carter et al (“Effect of Processing on the Composition of Sesame Seed and Meal”) and Fellows (Food Processing Technology Principles and practice 2nd Edition, page 108), further in view of Namisatu (JP2004-159606A machine translation) and Pleasant Hill Grain (“Grinders, Multi-Purpose” pages 1-3 2016).
As discussed above, Inoue teaches a method of producing a beverage powder comprising ground product of sesame. Inoue is not specific to grinding as using a continuous stone mill (which is an attrition mill) pounding the sesame seeds between upper and lower disks with a clearance of 0-200um as recited in claim 11.
Namisatu teaches easily mixable materials for beverages formed by grinding sesame (page 1, subject of the invention). Namisatu teaches that there is a good sensation on the tongue when 50% cumulative diameter is 4-15um and the 90% cumulative dimeter is 15-120um (page 1 Subject of the Invention). Namisatu teaches in grinding there is heat and it is necessary to control the space interval between mortars/dies so that it does not contact, and that when mechanical precision is considered a space internal is always 20um or more (paragraph 4).
Pleasant Hill Grinders (PHG) teaches stone mills were known multi-purpose grinders for wet or dry materials including sesame seeds (page 1 paragraph 1).
It would have been obvious for the grinder of Inoue to be a stone attrition mill as PHG teaches it was a known multipurpose grinder useful for wet or dry materials including sesame seeds. It would have been further obvious for the upper and lower disks to have a space of at least 20um to allow for heat in grinding in view of Namisatu. Furthermore, the processing would necessarily be continuous or batch, and thus to continuously process would have been an obvious suggestion resulting from the process of the prior art and the limited number of choices for processing. Applicant is further referred to MPEP 2144. In re Dilnot, 319 F.2d 188, 138, USPQ 248 (CCPA 1963); The court held that the claimed continuous operation would have been obvious in light of a prior art batch process.
Additionally, it is noted that apparatus limitations may have little weight in process claims. In re Tarczy-Hornoch 158 USPQ 141, 150; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA). To be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. Ex parte Pfeiffer, 1962 C.C. 408. The mere inclusion of structure in a method claim does not render it unstatutory or fatally defective. The structural limitation is of no patentable moment unless it affects the process in a manipulative sense. Ex parte Kangas, 125 USPQ 419. In the instant case, as the prior art teaches of grinding, the use of any grinder is considered obvious and does not appear to materially affect the method as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (JP 08-038115A machine translation) in view of Carter et al (“Effect of Processing on the Composition of Sesame Seed and Meal”) and Fellows (Food Processing Technology Principles and practice 2nd Edition, page 108), further in view of Higuchi et al (US 2019/0373942).
As discussed above, Inoue teaches a method of producing a beverage powder comprising ground product of sesame. Inoue is not specific to coarsely grinding the heated and pressed roasted sesame seeds before the grinding step as recited in claim 12.
Higuchi et al (Higuchi) teaches a method of producing a food product including 20-98% fine food particles selected from the group including sesame seeds (abstract and paragraphs 68 and 72). Higuchi teaches that it is better to roughly pulverize, i.e. coarsely grind, before fine pulverization for enhancement of product properties (paragraph 143).
It would have been obvious for the pressed and roasted sesame seeds of Inoue to be coarsely ground before fine grinding in order to enhance the product properties in view of Higuchi.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Carcea et al “Stone Milling versus Roller Milling in Soft Wheat: Influence on Products Composition” Foods https://pmc.ncbi.nlm.nih.gov/articles/PMC7023360/ pages 1-26 2019 shows that stone mills are the oldest attrition mills (page 2, Introduction paragraph 4).
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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