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 .
This action is in response to applicant’s submission dated July 7, 2026. Any objections and/or rejections made in previous actions and not repeated below are hereby withdrawn.
Claims 1-3 and 5-6 are pending, claim 4 is canceled and claims 5 and 6 remain withdrawn.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka et al. (JP 2008-061583 A).
With respect to Claim 1, Hatanaka et al. teaches a method of producing a fermented seasoning, such as soy sauce, from seawater, [0044] wherein the fermentation comprises lactic acid from a natural source, i.e. it need not be added externally. [0046] Hatanaka et al. teaches a number of possible embodiments of the invention, wherein the lactic acid can range from 2.2-3.7% [Table 6] and the p can reanH can H can range from 3.9-4.82. [Table 5] The range of lactic acid and pH overlaps with the range recited in the instant claim 1, and MPEP 2144.05 I states, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists”.
Hatanaka et al. is silent to the turbidity of the soy sauce. The instant specification teaches that the turbidity of the soy sauce is related to the lactic acid bacterium used to control pH and flavor of the composition. [0024] Hatanaka et al. does teach a lactic acid fermentation using natural bacterium from seawater and the amount of lactic acid and pH overlaps with the range recited, as described above. MPEP 2112 II states, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. Though Hatanaka et al. does not explicitly teach the turbidity of the composition, the composition would possess the same properties as that of the claimed invention due to the identical nature of the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hatanaka et al. in order to devise a soy sauce with a lactic acid content of 2.5 w/v% or more, wherein the lactic acid is not externally added, the pH is 4.5 or greater, and the turbidity is 500ppm or more, thereby rendering claim 1 obvious.
With respect to Claim 2, Hatanaka et al. teaches a method of producing a fermented seasoning, such as soy sauce, from seawater, [0044] wherein the fermentation comprises lactic acid from a natural source, i.e. it need not be added externally. [0046] Hatanaka et al. teaches that the seasoning is extracted from the moromi mash, [0042] and teaches a number of possible embodiments of the invention, wherein the lactic acid can range from 2.2-3.7% [Table 6] and the p can reanH can H can range from 3.9-4.82. [Table 5]
Hatanaka et al. is silent to the turbidity of the soy sauce. The instant specification teaches that the turbidity of the soy sauce is related to the lactic acid bacterium used to control pH and flavor of the composition. [0024] Hatanaka et al. does teach a lactic acid fermentation using natural bacterium from seawater and the amount of lactic acid and pH overlaps with the range recited, as described above. MPEP 2112 II states, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. Though Hatanaka et al. does not explicitly teach the turbidity of the composition, the composition would possess the same properties as that of the claimed invention due to the identical nature of the composition.
Additionally, the recitation ,”which is a lactic acid fermented product of a pressed soup of a soy sauce moromi” amounts to a product by process limitation, wherein the soy sauce is the product and the pressed soup of soy sauce moromi would have been the process for producing it. MPEP 2113 I states, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production”. Therefore, the method of producing the product does not further limit the product itself.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hatanaka et al. in order to devise a soy sauce which is a product of a pressed moromi soup, with a lactic acid content of 2.5 w/v% or more, wherein the lactic acid is not externally added, the pH is 4.5 or greater, and the turbidity is 500ppm or more, thereby rendering claim 2 obvious.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka et al. (JP 2008-061583 A) in view of Kawashima et al. (US 2020/0115673 A1).
With respect to Claim 3, Hatanaka et al. renders obvious the invention recited in claim 2, as described above, but is silent to the type of lactic acid bacterium used to ferment the product.
Kawashima et al. teaches a method for producing lactic acid bacteria. [0010] Kawashima et al. teaches that a specific bacterium that can be used in the invention is Tetragenococcus halophilus [0038] and that the bacterium of the invention can be used in the production of soy sauce moromi. [0041]
Hatanaka et al. and Kawashima et al. exist within the same field of endeavor in that they teach lactic acid fermentation and products thereof. Where Hatanaka et al. teaches the production of soy sauce using salt water and lactic acid bacteria, Kawashima et al. teaches specific bacteria and methods for cultivation.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Hatanaka et al. in view of Kawashima et al. to have produced a soy sauce wherein the bacterium used for fermentation is Tetragenococcus halophilus, thereby rendering claim 3 obvious.
Response to Arguments
Applicant’s arguments with respect to the rejections under 35 U.S.C. 102 of claims 1 and 2 have been considered but are moot because the new ground of rejection is under 35 U.S.C. 103 in response to applicant’s amendments.
Applicant's arguments filed July 7, 2026 have been fully considered but they are not persuasive.
Applicant asserts on Page 5, Lines 24-15, “The only relevant soy sauces taught in Hatanaka that might be considered to fall within the scope of claim 3 are samples 14 to 16 shown in Table 6 of Hatanaka”. Applicant proceeds on Page 6, Lines 12-13, “the pH of samples 14-16 is less than 4.5” and concludes on Page 7, Lines 1-2, “Thus, Hatanaka fails to teach a soy sauce that has each of the limitations of claim 3, with respect to lactic acid content and pH value”.
Applicant is directed to MPEP 2123 II, which states, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed” and MPEP 2144.05 I, which states, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists”. Simply because Hatanaka et al. teaches a variety of embodiments that do not teach the claimed limitations, does not disqualify other solutions suggested by the teaching. Additionally, a variety of embodiments teaches a potential range of desirable results, specifically in the circumstance of Hatanaka et al., the range overlaps with the range recited in the instant claims.
Therefore, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, Lines 1-2, that “Table 1 of paragraph [0063] of the present specification shows that the turbidity of Pressed Soup was 9.82 p-pm, that is, less than 10 ppm” and continues on Lines 5-7, that, “it can be understood that lactic acid bacteria cause turbidity, and that if pressing is performed, the lactic acid bacteria are removed and the turbidity decreases”, concluding on Lines 8-11, “it is asserted that the turbidity of the soy sauce of Hatanaka would be low (well below 500 ppm), given that the methods disclosed in Hatanaka are similar to those discussed in the present application where the resulting turbidity is less than 10ppm”.
Applicant’s assertion that the turbidity of the composition taught by Hatanaka et al. would necessarily be less than the recited 500ppm due to a step of separation that would cause a decrease in lactic acid bacteria is found lacking due to no explicit teaching of said step. Hatanaka et al. teaches a step of pressing the moromi [0042] but does not teach a subsequent required step of filtration or centrifugation. Applicant’s own admission requires a filtration or centrifugation step in order to achieve a ”cleared soy sauce” of the lower turbidity.
Additionally, even if Hatanaka et al. were to teach a step of filtration or centrifugation, MPEP 2123 II states, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”. Hatanaka et al. would still teach an embodiment wherein the filtration or centrifugation would not be necessary, and therefore teach an embodiment of the invention that would render claims 2 and 3 obvious.
For this reason and those enumerated above, applicant’s assertions are found to be unpersuasive, and the rejections of claims 1-3 are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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