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 status
The examiner acknowledges the amendment made to the claims on 08/19/2026.
Claims 1-2, 4-5 and 7-13 are pending in the application. Claims 1, 7 and 11 are currently amended. Claims 3 and 6 are newly cancelled. Rest of claims are previously presented. Claims 1-2, 4-5 and 7-13 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 103
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.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Takai KR20130091713A (cited in the IDS submitted 06/20/2024, English translation relied upon for reference, hereinafter referred to as Takai).
Regarding claims 1-2 and 4-5, Takai teaches an emulsified coagulant for tofu comprising an aqueous solution of fast-acting coagulant and an edible oil (page 11, para. 3-4), wherein the fast-acting coagulant is at least one of magnesium chloride, calcium chloride, sodium chloride, potassium chloride, magnesium sulfate and prepared seawater magnesium chloride (page 12, 2nd para.); wherein the edible oil is rice bran oil, corn oil, soybean oil, rapeseed oil, sunflower oil, sesame oil, safflower oil, palm oil, palm kernel oil, olive oil, macadamia nut oil, cashew oil, perilla oil, etc., and combination thereof (page 16, para. 3-4, and page 17 first line), wherein the molar concentration of the fast-acting coagulant in the water phase or the aqueous solution is 2 M or more, for example, magnesium chloride has a molar concentration of 2-6.1 M in the water phase (page 12, 3rd para.; page 65, para. 0080), and wherein the weight ratio of water phase/oil phase is 1:0.2 to 1:3 (page 23, 4th para.).
On the limitation that the coagulant comprises macadamia oil and perilla oil, and a third edible oil as recited in claims 1-2, wherein Takai teaches that the edible oil is rice bran oil, corn oil, soybean oil, rapeseed oil, sunflower oil, sesame oil, safflower oil, palm oil, palm kernel oil, olive oil, macadamia nut oil, cashew oil, perilla oil, etc., and combination thereof, the combination of macadamia oil, perilla oil and a third edible oil is reasonably encompassed by the prior art.
On the limitation about the individual contents of macadamia nut oil, perilla oil and a third oil in the emulsified coagulant, one of ordinary skill in the art would have been motivated to manipulate the amounts of each of the oil type in the emulsified coagulant provided that an emulsion is formed and that the weight ratio of water phase/oil phase is 1:0.2 to 1:3 as prescribed by Takai. Alternatively, where Takai encompasses the embodiment teaching an oil phase composing macadamia oil, perilla oil, and a third edible oil, the proportion of each of the oil type is reasonably 0-100% by weight of the oil phase thus encompassing the ranges as recited in the claims. As such, the individual contents of macadamia nut oil, perilla oil and a third oil by weight of the emulsified coagulant as recited in claims 1-2 are merely obvious variant of the prior art.
On the limitation about the content of the fast-acting coagulant by weight of the emulsified coagulant, Takai teaches that the weight ratio of water phase/oil phase is 1:0.2 to 1:3 (page 23, 4th para.), and that the molar concentration of the fast-acting coagulant such as magnesium chloride is 2-6.1 M by weight of the water phase or the aqueous solution (page 65, para. 0080), then the amount of the fast-acting coagulant by weight of the emulsified phase overlaps with the range as recited in claim 1. For example, page 50, para. 0057 of Takai teaches that in forming the emulsified coagulant, 333 g magnesium chloride is dissolved in 167 gram of water to form the water phase or the aqueous solution that comprises 4.3 M magnesium chloride (e.g., magnesium chloride is mixed with water at a ratio of 2:1 to form 500 gram aqueous solution), and the water phase is mixed with 500 gram oil to form the emulsion, then the amount of magnesium chloride by weight of the emulsion is 333/1000 = 33%. Further, since Takai as recited above teaches a broader molar concentration of 2-6.1 M besides 4.3 M for magnesium chloride, it logically follows that Takai teaches a range of fast-acting coagulant that overlaps with the range as recited in claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further regarding claim 4, Takai teaches that the viscosity of the emulsified coagulant is 10-100 Pa.s (page 64, bottom para.) which is equal to 10,000-100,000 cp. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further regarding claim 5, Takai teaches coagulating soy milk with the emulsified coagulant to obtain a bean curd (e.g., tofu) (page 25, 4th para.; page 26, 3rd para.).
Claims 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Takai as applied to claim 1 above, and further in view of Kang US Patent Application Publication No. 2014/0302199 A1 (hereinafter referred to as Kang) and Schaefer, “Relationships between soybean components and Tofu textures”, Journal of Food Quality, 1992, 15, pages 53-66 (hereinafter referred to as Schaefer).
Regarding claims 7-13, Takai as recited above teaches coagulating soy milk with the emulsified coagulant to obtain a bean curd (e.g., tofu), in which the emulsified coagulant is continuously added to the soy milk under the action of a static mixer (page 25, 4th para.; page 26, 3rd para.; page 51, para. 0059). Further, Takai teaches that for coagulating soy milk using the emulsified coagulant, either a rotary stirring type mixer or a static (e.g., stationary type mixer) is acceptable (page 34, first para.). As such, Takai encompasses the embodiment of coagulating the soy milk under stirring while adding the coagulant.
Further, Takai teaches that when making a silk tofu using the emulsified coagulant, if magnesium chloride is added in an amount of 0.1-0.5% to soy milk, the surface is smooth, the water retention is high the flavor is like that of original tofu, and the finished product is silk tofu in a state of firmness, elasticity and water retention (page 27, 3rd para.). An example is on pages 50-51, para. 0057-0059 of Takai, in which an emulsified coagulant comprising 33% magnesium chloride is added to a soy milk (see para. 15 of the instant office action above for calculation) in which the amount of coagulant added was 2.5 gram as an equivalent amount of magnesium chloride per liter of soy milk. Thus assuming a density of 1 g/ml for soy milk, the amount of the emulsified coagulant added to 100 gram of soy milk would be ~0.25 g/33% = 0.75 g. Such an amount falls within the range of claim 11.
Takai teaches that the soy milk is obtained by a standard method (page 51, para. 0059), but is silent regarding that the method of obtaining the soy milk comprising selecting soybeans such as selecting the soybeans of particle grain size, weight and crude protein content, soaking and swelling the soybeans, grinding, heating and filtering the soybean.
Kang in the same field of endeavor teaches that the production of Tofu comprising soaking dry soybeans in water for 10-14 hours to swell the soybeans (e.g., to saturate the soybeans with water), grinding the soaked soybeans to desired particulate size using a grinder to form a slurry, heating the slurry up to 100-110 °C to denature the soy protein, filtering the heated slurry to remove okara to obtain soy milk, and mixing the coagulant with soymilk under stirring to obtain tofu (0006; 0043).
Schaefer in the same field of endeavor teaches a method of making tofu comprising soaking dry soybeans for 12-18 hours, grinding the soaked soybeans in a blender to obtain a slurry, heating the slurry to boiling, filtering the slurry to obtain soy milk, adding a coagulant to the soy milk and stirring to obtain tofu (page 56-57, under “sample preparation”). Further Schaefer teaches that soybeans variety affects the yield and qualities (e.g., color and textures) of tofu (page 54, para. 3-4). Further, Schafer teaches that soybean varieties used to make tofu have varying amounts of crude protein contents (e.g., 35-39%) (Table 1), and a positive correlation exists between the soybean protein level and tofu protein level (page 60-61, under “Relationships among components”).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Takai by incorporating the steps of making soy milk as disclosed by Kang or Schaefer with reasonable expectation of success, for the reason that those steps are known to be suitable for making soy milk for tofu preparation. The soaking time and temperature of heating as disclosed by prior art fall within or overlap with the ranges as recited in claims 12-13. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Takai by selecting soybean having suitable amount of crude protein such as 35-39% such that the resulting tofu has desirable amounts of protein.
It is noted claims 8-9 further limit the grain size and weight the soybeans. Different soybean varieties necessarily have different grain size and weight. Also the amount of water present in the soybean affects the grain size and weight. In the instant case, absent a showing of new results, one of ordinary skill in the art would have been motivated to use soybeans of any varieties to prepare soy milk based on desirability and availability. Note that no matter the grain size of the soybeans, they are ground to desired particulate size to make a slurry, and no matter the weight of the individual soybean grain, a specific amount of soybeans are measured to prepare soy milk.
Response to Arguments
Applicant's arguments filed 08/19/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 4-5 of the Remarks that there is no reason for a skilled artisan to choose the combination of macadamia nut oil and perilla oil because Takai’s experiment shows that the two oils do not form stabilized emulsion and additional measures including cooling or one pass emulsification are required to form stable emulsion using the two oils, which will deter the skilled artisan to use the two oils.
The arguments are considered but found unpersuasive. Applicant appears to assert that since cooing and one pass emulsification are additional measures in forming the emulsion, a skilled artisan would rather choose oil that does not need such an additional measure. Such an assertion is not correct because cooling and/or one pass operation during forming the emulsion are actually preferred embodiment of Takai. For example, para. 0040 of Taki teaches that “it is desirable to cool the raw material or to adequately provide a cooling effect by appropriately combining a jacketed tank in the storage tank”; para. 0041 teaches “it is preferable to use a one-pass continuous emulsification dispersion device”; para. 0076 teaches “the one-pass continuous type is a desirable form because it can minimize the generation of stirring heat and maintain a stable emulsification state”; and para. 0081 teaches “it is desirable to use a one-pass process or a cooling means in combination, as in the present invention”. As can be seen, the cooling and/or one pass emulsification are actually preferred embodiment as opposed to a redundant or additional measure, and such a feature necessarily will form a stable emulsion.
Applicant is further reminded that macadamia nut oil, perilla oil or the combination thereof are positively disclosed as the suitable oil in forming the coagulant.
Unfortunately, applicant has not shown any new result associated with the combination of macadamia nut oil and perilla oil in the coagulant.
Applicant argues on page 5 of the Remarks that Takai fails to teach the individual content of either oil.
The argument is considered. However the examiner submits that the argument has failed to consider the reasoning in the para. 14 of the office action issued 05/19/2026 which shows that the individual content of the two oil are obvious. In particular, the para. recites that one of ordinary skill in the art would have been motivated to manipulate the amounts of each of the oil type in the emulsified coagulant provided that an emulsion is formed and that the weight ratio of water phase/oil phase is 1:0.2 to 1:3 as prescribed by Takai. Alternatively, where Takai encompasses the embodiment teaching an oil phase composing macadamia oil, perilla oil, and a third edible oil, the proportion of each of the oil type is reasonably 0-100% by weight of the oil phase thus encompassing the ranges as recited in the claims.
Unfortunately, applicant has not shown any new result associated with 20-50% macadamia nut oil and/or 1-10% perilla oil by weight of the coagulant (see the para. below).
Applicant argues page 5 of the Remarks that Table 2 of the instant disclosure has shown that a coagulant comprising 20-42% macadamia nut oil , 2.5-5% perilla oil and 53-55% fast acting coagulant exhibited superior savory taste.
The examiner disagrees. It is noted that Example 1-1 and 1-2 of Table 1 and 2 meet claims 1, however, the compositions of the two examples are not commensurate in scope with claim 1 for the amounts of each of macadamia nut oil, perilla oil and the fast acting coagulant. For example, a macadamia nut oil content of 42% or 40% as in Example 1-1 and 1-2 does not enable a broad range of 20-50%. Further, the result from prepared sea water MgCl2 doe not cover the laundry list of the fast acting coagulants as recited in claim 1.
For a similar reason, Example 1-6, 1-7 and 1-8 of Table 1 and 2 which meet instant claim 2 are not commensurate in scope with claim 2, either. Note that claim 2 recites a generic edible oil as opposed to rice bran oil as in Example 1-6, 1-7 and 1-8, and claim 2 recites as little as 0.001% edible oil, which differs a lot from the amount of 10%, 11.25% or 20% as in Example 1-6, 1-7 and 1-8.
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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/CHANGQING LI/Primary Examiner, Art Unit 1791
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