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 office action is in response to the application filed on March 27, 2024.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) with a filing date of October 1, 2021. The certified copy of JP 2021-162734 has been filed in the present application, received on March 27, 2024.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The present application is a 371 National Stage Application of PCT/JP2022/036331 which has a filing date of September 29, 2022.
Status of Application
Claims 1-8 are pending. Claims 1-8 are presented for examination.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is less than 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 5, and 8 are objected to because of the following informalities: Each recitation of “Penicillium” and the specific Penicillium species (as recited in claim 8) need to be italicized. 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 1-8 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.
The term “cheese-like” in claim 1 is a relative term which renders the claim indefinite. The term “cheese-like” 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 meaning of “cheese-like” is unclear; there is no standard for determining what would make something “cheese-like.” Is “cheese-like” intending to be a cheese made from plants? Anything resembling cheese in flavor, texture, appearance, etc., could be considered “cheese-like,” and thus there is no clear indication as to what would need to be met in order for a product to be “cheese-like.”
Claim 1 step 2-3 recites “adding a Penicillium spore thereto” which renders the claim indefinite because it is unclear what the “thereto” is referring to. Is the spore added to the coagulum, the finely divided coagulum, or something else? For the purposes of examination, the claim will be interpreted as “adding a Penicillium spore to the finely divided coagulum.”
Claims 1-4 recite “finely dividing” which renders the claims indefinite because it is unclear what is considered “finely” divided. The term “finely divided” 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. Is there a certain measurement required of the resulting divisions in order to be considered “finely” divided? Does “finely” just mean small pieces? If so, how small? Claim 2 recites that the coagulum is finely divided into two or more equal parts – two parts of a coagulum does not seem to be “finely” divided, especially since a cheese coagulum can greatly vary in size. Thus, there is no clear definition of “finely divided” and the claims are rendered indefinite.
The term “substantially coalescing” in claims 1 and 5 is a relative term which renders the claims indefinite. The term “substantially coalescing” is not defined by the claims, 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. There is no standard for determining what is considered to be a “substantially” coalesced coagulum. Does it mean merely combining the pieces in a mixture (but still loose) or does it have to be one solid combined mass? Thus, there is no clear indication as to what meets “substantially coalescing” and thereby the claims are rendered indefinite.
The term “approximately” in claims 2 and 3 is a relative term which renders the claims indefinite. The term “approximately” is not defined by the claims, 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. Claim 2 recites that the coagulum is divided into “approximately two or more equal parts,” which is unclear as is it at least two parts, or is it “approximately” two parts? How could something be divided into “approximately” two parts? It is either two parts (or more) or not. Alternatively, is the “approximately” intending to modify the “equal parts” of the claim limitation? If so, there is still no standard for determining what would meet something being “approximately” equal parts. Would “approximately equal” be based on size, weight, shape, etc.? Would the parts need to be within a certain degree of each other (e.g., 5%)? The same rationale can be applied to the limitation of “approximately two or more times” of claim 3. Thus, the claim limitations are unclear and the claims are thereby rendered indefinite.
Claim 3 is rendered indefinite because the claim limitation is unclear. The claim recites finely dividing the coagulum, but then limits the surface area of that coagulum, seemingly limiting the coagulum prior to the division; it seems that the claim should be limiting the surface area of the finely divided coagulum. Additionally, it is unclear how a surface area can be per weight, as surface area is simply a measurement of length/width/height and is not affected by the weight of a product. Lastly, it’s unclear how the surface area of the coagulum can be twice the surface area of the final product, since the final product is made up of the coalesced coagulum. A larger surface area would make sense when taking the combined surface area of the divided coagulum pieces compared to the final product. Therefore, the claim is unclear and is rendered indefinite. For the purposes of examination, the claim will be interpreted such that the divided coagulum pieces have a larger surface area than the surface area of the coalesced coagulum.
Claims 1 and 5 are rendered indefinite because it is unclear how step 3 of claim 5 comprises “further forming the Penicillium spore in the coagulum” since claim 1 requires adding a Penicillium spore to the coagulum in step 2 and “further proliferating a Penicillium hyphae in the coagulum” in step 3. Is the spore added or is the spore formed from the hypha? Is the limitation of claim 5 merely explaining what happens in step 3 of claim 1? In other words, does proliferating a Penicillium hypha (i.e., proliferation with no spore) in the coagulum form a spore by combining sections comprising a spore with sections comprising only hyphae? If so, how does claim 5 further limit claim 1 as “coalescing the coagulum” in step 3 of claim 1 would necessarily perform the steps of claim 5? As stated in the instant specification in [0041], the coagulum contains both spores and hyphae, and by coalescing the coagulum after adding the spore and finely dividing the coagulum, the coalesced coagulum would combine sections with spores and sections with no spores (i.e., the hyphae). Moreover, the coagulum would also necessarily possess hyphae at one point or the other in making cheese.
Claim 6 requires that the animal raw material is at least one selected from a Markush group, then recites “or at least one processed product” selected from another Markush group. It is unclear how a processed product can be a raw material since a “processed product” is something that has been processed from a starting material and a “raw material” is something that is in its raw/natural form and has definitively not been processed. Thus, the claim is unclear and thereby rendered indefinite. For the purposes of examination, the claim will be interpreted such that the animal raw material is one selected from the first listed Markush group.
Claim 7 requires that the plant raw material is at least one selected from a Markush group, listing “a hydrolysate…a powder, and a fraction obtained from a raw material derived from at least one plant selected from the group…”. It is unclear if the “a fraction obtained…” is a member of the Markush group and is intending to be claimed as one of the plant raw materials, or if the fraction obtained from a raw material derived from a plant is intending to be claimed as an additional component to the plant raw material. Moreover, it is unclear if the “beans, nuts, and grains” are limiting all of the hydrolysate, emulsion, powder, and fraction, or if they are only for the ”fraction obtained from a raw material.” Therefore, the claim is unclear and thereby rendered indefinite. For the purposes of examination, the claim will be interpreted such that the plant raw material is at least one of a hydrolysate, an emulsion, and a powder.
Additionally, similar to the rejection of claim 6, it is unclear how a hydrolysate or emulsion can be a raw material since a hydrolysate is a product of hydrolysis (a process step) and an emulsion is typically formed from the combination of two materials.
Claim 8 is rejected as being dependent on a rejected base claim.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barthelemy et al. (US Patent 4,588,594), herein after referred to as Barthelemy.
Regarding claims 1 and 5, and as best interpreted in light of the 112(b) rejections above, Barthelemy discloses a method for producing cheese, the method comprising:
using whole milk (i.e., an animal raw material);
(2-1) after the step (1), adding a Penicillium spore to the milk, then coagulating the mixture (i.e., preparing a coagulum), and then cutting the coagulum into pieces of size 2x2x3 cm (i.e., finely dividing the coagulum); and
(3) after the step (2), mashing the coagulum pieces then molding the mashed coagulum (i.e., further proliferating a Penicillium hypha in the coagulum by forming the Penicillium spore in the coagulum and substantially coalescing the coagulum) (Example 1).
The step of coalescing the coagulum, in the step of cutting, mashing, then molding as taught by Barthelemy is considered to be proliferating a Penicillium hypha and coalescing a portion where the Penicillium spore is formed and a portion where the Penicilium spore is not formed as claimed because any portion of the coagulum that does not have spores, but has been proliferated (as taught by Barthelemy), will necessarily combine with the portion that does have spores when the coagulum is mashed and molded (i.e., coalesced) as taught.
Regarding claim 2, Barthelemy discloses that the coagulate is divided into 2x2x3 cm pieces (Example 1), thereby disclosing that the parts are equal sizes and there at least two parts.
Regarding claim 3, where Barthelemy discloses that the coagulate is divided into 2x2x3 cm pieces, mashed, then molded into one (Example 1), it is necessarily true that the combined surface area of all the pieces is larger than the surface area of the one large mold.
Regarding claim 4, Barthelemy discloses that finely dividing the coagulum is done by cutting the coagulum (Example 1, line 61).
Regarding claim 6, Barthelemy discloses that the animal raw material is pasteurized whole milk (Example 1), which is presumed to be cow milk.
Regarding claim 7, this claim is met through the rejection of claim 1 as set forth above with regard to the animal raw material. Claim 1 requires the selection of an animal raw material or a plant raw material; by selecting an animal raw material to meet claim 1, claim 7 is also considered to be met.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Savage et al. (US PG Pub. 2011/0052757), herein after referred to as Savage.
Regarding claim 1, and as best interpreted in light of the 112(b) rejections above, Savage discloses a method for producing a cheese, the method comprising:
using milk (i.e., an animal raw material);
(2-1) after the step (1), adding a Penicillium spore to the milk, then preparing a curd (i.e., coagulum), then cutting the curd, then putting the curd through a peg mill (i.e., finely dividing the coagulum); and
(3) after the step (2), placing the milled curd in molds to form the cheese (i.e., substantially coalescing the coagulum) (Example 1).
The step 3 as disclosed by Savage is also considered to further proliferate a Penicillium hypha in the coagulum because any portion of the coagulum that does not have spores, but has been proliferated, necessarily contains Penicillium hyphae and will necessarily form spores when combined with the portion that does have spores, as when the milled curd is combined (i.e., coalesced) in a mold as taught by Savage.
Regarding claim 8, Savage discloses that the Penicillium is Penicillium roqueforte.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Smith et al., US PG Pub. 2007/0254064, teaches cheese curd inoculated with a Penicillium spore and that during the mold growing period, untreated sections of the curd are exposed to further proliferate the spores in the curd [0078].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571)-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791