DETAILED ACTION
Background
The amendment dated July 13 2026 (amendment) amending claims 4-9 has been entered. Claims 1-9 as filed with the amendment have been examined. Claims 10-17 have been withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-9, drawn to a method for preparing a bonito extract and a bonito extract the reply filed July 13, 2026 is acknowledged.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to because the Legends in the drawings contain brackets. In drawings, numbers and letters identifying the views must be simple and clear and must not be used in association with brackets. 37 CFR 1.84(u)(2). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 4 is objected to because of the following informalities:
In claim 4, at line 2, at the beginning of the line make 3-methoxypyridine -- lowercase.
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 5-7 and 9 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.
In claim 5, the term “relative area” is indefinite because it is not clear to what area the claim refers and because the area units themselves are not clearly set forth. Is the recited total area the area under a peak or portion of a chromatographic spectrum or chart, or is it the area of a chromatographic medium such as paper? And is the recited area a percentage or just a raw ratio of area relative to total area?
In claims 6-7, the recited amount of phenol in “ppm/L” is indefinite for lacking a basis or denominator. Is the total part or denominator in question an entire extract, an amount based on total extract solids, a portion of aromatics or volatiles, an amount derived per liter of a starting material, or something else?
The Office considers the claims as reciting an amount of phenol, based on the total weight of the recited extract.
In claim 9, the recited amount of glutamic acid in “mg/L” is indefinite for lacking a basis or denominator. Is the total part or denominator in question an entire extract, an amount based on extract solids, a portion of total amino acids, an amount derived per liter of a starting material, or something else?
The Office considers the claims as reciting an amount of glutamic acid, based on the total weight of the recited extract.
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 3-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH10008088 A to Seki et al. (Seki), of record.
All references to Seki refer to the Clarivate machine translation, a copy of which was provided in a prior Office action.
The Office considers the claims as reciting, in claims 6-7, an amount of phenol, based on the total weight of the recited extract, and in claim 9 an amount of glutamic acid, based on the total weight of the recited extract.
Regarding instant claim 3, Seki at Abstract and [0008]-[0009] discloses a method for extracting an aroma component from dried bonito at a reduced pressure and a low temperature to prevent degradation of aroma components. Further, at Abstract Seki discloses extracting dried bonito from a mixture including “tangle”. The Office considers the “tangle” as disclosed in Seki as including kelp. And Seki at Abstract discloses preserving the flavor ingredients in its bonito extract (having “increased flavor and umami taste”).
Further and regarding instant claims 4-9, the Office considers the claimed method and that disclosed in Seki to be substantially the same thing. Accordingly, absent a clear showing as to how the method of Seki differs from that as claimed, the Office considers the extract of dried bonito disclosed in Seki at Abstract and [0008]-[0009] to have a reduced off-flavor and bitter taste as in claim 3; to be a bonito extract comprising 3-methoxypyridine as in claim 4; to be a bonito extract wherein a relative area (area/total) of 3-methoxypyridine is at least 0.00059 as in claim 5; to be a bonito extract that contains phenol in an amount of at least 10,000 ppm/L, based on the total weight of the recited extract as in claim 6; to be a bonito extract that contains phenol in an amount of 20,000 ppm/L or less, based on the total weight of the recited extract as in claim 7; to be a bonito extract wherein the bonito extract comprises aspartic acid or glutamic acid as in claim 8; and to be a bonito extract that contains glutamic acid in an amount of 33 to 50 mg/L, based on the total weight of the recited extract as in claim 9. See MPEP 2112.01.I.
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 JPH10008088 A to Seki et al. (Seki), of record.
All references to Seki refer to the Clarivate machine translation, a copy of which was provided in a prior Office action.
The Office considers the claims as reciting, in claims 6-7, an amount of phenol, based on the total weight of the recited extract, and in claim 9 an amount of glutamic acid, based on the total weight of the recited extract.
Regarding instant claim 1, Seki at Abstract and [0009] discloses a method for extracting an aroma component from dried bonito (Katsuobushi, the method as a “method for preparing a bonito extract” - claim 1) in ethanol at a reduced pressure and a low temperature to prevent degradation of its aroma components (“. Further, at [0008] Seki discloses a pressure of about 30 to 500 mmHg, or about 50 to about 650 mbar, which the claimed 150 to 250 mbar lies within, and a temperature 0 to 50 °C, which the claimed 45 to 55 °C overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Seki would have found it obvious to extract its dried bonito at the claimed temperature and pressure to preserve its aroma because Seki discloses that extracting dried bonito at the claimed temperature and pressure provides a desirable increased aroma content and improved flavor in a bonito extract.
Regarding instant claim 2, Seki at Abstract discloses preserving the flavor ingredients in its bonito extract (having “increased flavor and umami taste”). Further, At Abstract, Seki discloses including “tangle” in its extract. The Office considers the “tangle” as disclosed in Seki as including kelp. Further, the Office considers the claimed method and that disclosed in Seki to be substantially the same thing. Accordingly, absent a clear showing as to how the method of Seki differs from that as claimed, the Office considers the method of extracting dried bonito in Seki at Abstract and [0008]-[0009] to provide a bonito extract having reduced off-flavor and bitter taste as in claim 2. See MPEP 2112.01.I.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over US2017/0027204 A1 to Washizu et al. (Washizu)
The Office considers the claims as reciting, in claims 6-7, an amount of phenol, based on the total weight of the recited extract, and in claim 9 an amount of glutamic acid, based on the total weight of the recited extract.
Regarding instant claims 1-3, Washizu at Abstract discloses a method (claim 1) for extracting dried fish having excellent flavor (having “increased flavor and umami taste” -claims 2 and 3) and an extract thereof (claim 3). At [0015] and Example 1, Washizu discloses a bonito extract (from Katsuobushi) and a method for preparing a bonito extract (claim 1) in ethanol at a low temperature. Further, at [0027] Washizu discloses extracting its dried bonito at a reduced pressure (claim 3) and a temperature of 30 to 70 °C, which the claimed 45 to 55 °C lies within. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Washizu would have found it obvious to extract its dried bonito at the claimed temperature and pressure to preserve its aroma because Washizu discloses that extracting dried bonito at the claimed temperature and pressure provides a desirable bonito extract having improved flavor.
Further and regarding instant claims 4-9, the Office considers the claimed method and that disclosed in Washizu to be substantially the same thing. Accordingly, absent a clear showing as to how the method of Washizu differs from that as claimed, the Office considers the extract of dried bonito disclosed in Washizu at Abstract, [0015] and [0027] to have a reduced off-flavor and bitter taste as in claim 3; to be a bonito extract comprising 3-methoxypyridine as in claim 4; to be a bonito extract wherein a relative area (area/total) of 3-methoxypyridine is at least 0.00059 as in claim 5; to be a bonito extract that contains phenol in an amount of at least 10,000 ppm/L, based on the total weight of the recited extract as in claim 6; to be a bonito extract that contains phenol in an amount of 20,000 ppm/L or less, based on the total weight of the recited extract as in claim 7; to be a bonito extract wherein the bonito extract comprises aspartic acid or glutamic acid as in claim 8; and to be a bonito extract that contains glutamic acid in an amount of 33 to 50 mg/L, based on the total weight of the recited extract as in claim 9. See MPEP 2112.01.I.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US2017/0027204 A1 to Washizu et al. (Washizu) as applied to claim 3 above, and further in view of CN102740942 B to Kuzmich et al. (Kuzmich).
All references to Kuzmich refer to the Clarivate machine translation, a copy of which is provided with this Office action.
The Office considers claim 9 as reciting an amount of glutamic acid, based on the total weight of the recited extract.
As applied to claim 3, Washizu at Abstract, [0015] and [0027] discloses a bonito extract having a reduced off-flavor and bitter taste and increased flavor and umami taste, as well as methods of making the bonito extract by extracting at a low temperature and at a reduced pressure.
Washizu does not disclose a bonito extract wherein the bonito extract comprises aspartic acid or glutamic acid as in claim 8; and, further does not disclose a bonito extract that contains glutamic acid in an amount of 33 to 50 mg/L, based on the total weight of the recited extract as in claim 9.
Kuzmich at [0013] discloses a method for extracting a range of material to improve the quality of the extract and reduce oxidation thereof in processing. At [0050]-[0051], Kuzmich discloses extracting fish in ethanol at from 30-32 °C and under a vacuum pulse that varies from none to full vacuum or from 1000 mbar (no vacuum) to 0.01 MPa (100 mbar), wherein the product extract comprises the soluble proteins and amino acids from the fish substrate.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Kuzmich for Washizu to process its bonito extract in such a way as to preserve glutamic and aspartic acid and thereby contain such materials in its bonito extract. Both references disclose low temperature ethanol in water extraction of fish at a reduced pressure to obtain more of the flavor or aroma in the resulting fish extract. The ordinary skilled artisan in Washizu would have desired to extract its dried bonito at the claimed temperature and pressure for the purpose disclosed in Kuzmich so as to preserve the soluble proteins and amino acids from the extracted fish and so as to produce a bonito extract comprising glutamic or aspartic acid.
The Office considers the bonito extract of Washizu as modified by Kuzmich to be substantially the same thing as the claimed bonito extract. Accordingly, absent a clear showing as to how the bonito extract of Washizu as modified by Kuzmich differs from that as claimed, the Office considers the method of Washizu at Abstract, [0015] and [0027] as modified by Kuzmich at [0050]-[0051] to be a bonito extract that contains glutamic acid in an amount of 33 to 50 mg/L, based on the total weight of the recited extract as in claim 9. See MPEP 2112.01.I
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H 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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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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