DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 1-12
Withdrawn claims: 9-12
Cancelled claims: None
Claims currently under consideration: 1-8
Currently rejected claims: 1-8
Allowed claims: None
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-8) in the voicemail left on 06/16/2026 is acknowledged.
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-V, there being no allowable generic or linking claim. Election was made without traverse in the voicemail left on 06/16/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8, drawn to a method for producing a flavoring agent.
Group II, claim(s) 9, drawn to a cocoa substitute.
Group III, claim(s) 10, drawn to a cocoa-flavored beverage.
Group IV, claim(s) 11, drawn to a chocolate-like food.
Group V, claim(s) 12, drawn to a flavoring agent.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-V lack unity of invention because even though the inventions of these groups require the technical feature of a method of producing a cocoa substitute by treating seeds of a plant belonging to the family Poaceae with a protease, and roasting the protease-treated product, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Evans (Evans, J., “Roasting Koji”, 2013, Nordic Food Lab Archive, https://nordicfoodlab.wordpress.com/2013/12/24/2013-12-roasting-koji/) as evidenced by Saké (“About Koji”, 2021, Saké Experience Japan, https://sakeexperiencejapan.com/about-koji/) .
Evans teaches a flavoring agent (corresponding to roasted koji) produced by roasting koji produced from rice (page 1, 1st – 2nd paragraphs under photo) which is a seed of a plant belonging to the family Poaceae. Rice koji is produced by treating rice with koji fungus, wherein the fungus produces acid protease which hydrolyzes the proteins in the rice as evidenced by Saké (page 1, 1st-2nd, 5th paragraphs under photo). Therefore, Evans discloses a method comprising treating seeds of a plant belonging to the family Poaceae with a protease and roasting the protease-treated product.
Evans teaches that the flavoring agent has aromas of chocolate; and that the flavoring agent may be used to produce a ganache-like substance and “chocolate” ice cream (page 1, 2nd -3rd paragraphs under photo; page 4, 2nd photo under photo). Therefore, Evans teaches the flavoring agent is a cocoa substitute.
Groups III-IV lack unity of invention because even though the inventions of these groups require the technical feature of a mixture comprising a cocoa component and cocoa substitute, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Evans (Evans, J., “Roasting Koji”, 2013, Nordic Food Lab Archive, https://nordicfoodlab.wordpress.com/2013/12/24/2013-12-roasting-koji/) as evidenced by Saké (“About Koji”, 2021, Saké Experience Japan, https://sakeexperiencejapan.com/about-koji/).
Evans teaches that the cocoa substitute produced by the method described above may be combined with chocolate (page 3, paragraph under 1st photo). Therefore, Evans teaches a mixture comprising the cocoa substitute and a cocoa component (corresponding to chocolate).
During a voicemail left on 06/16/2026 from Amy Schmid, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
In claim 1, “belonging to the family Poaceae with a protease; and roasting” should be read as “belonging to the family Poaceae with a protease to form a protease-treated product; and roasting”.
In claim 2, “the protease-treated plant belonging to the family Poaceae” should be read as “the protease-treated product”.
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.
Claim 5 is rejected under 35 U.S.C. 112(b) 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.
Claim 5 recites that the ratio of the protease-treated product to the seeds of the plant belonging to the family Poaceae in the mixture is 100:0 to 1:99. However, the claim does not recite a unit of measurement associated with the ratio (e.g., volume ratio, weight ratio). Furthermore, the claim also recites a ratio of 100:0. It is unclear as to how a mixture comprising the protease-treated product and the seeds of the plant belonging to the family Poaceae can have a ratio of 100:0 as a ratio of 100:0 implies that there are no seeds of the plant belonging to the family Poaceae in the mixture. For these reasons, the claim is indefinite.
For the purpose of this examination, the claim will be interpreted as meaning that the ratio is a weight ratio. The claim will also be interpreted as meaning that the ratio of the protease-treated product to the seeds of the plant belonging to the family Poaceae in the mixture is any ratio wherein the concentration of the protease-treated product in the mixture is from 1% to less than 100%; and the concentration of the seeds of the plant belonging to the family Poaceae is from greater than 0% to 99%.
Claim Rejections - 35 USC § 102
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 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans (Evans, J., “Roasting Koji”, 2013, Nordic Food Lab Archive, https://nordicfoodlab.wordpress.com/2013/12/24/2013-12-roasting-koji/) as evidenced by Saké (“About Koji”, 2021, Saké Experience Japan, https://sakeexperiencejapan.com/about-koji/).
Regarding claims 1 and 8, Evans teaches a flavoring agent (corresponding to roasted koji) produced by roasting koji produced from rice (page 1, 1st – 2nd paragraphs under photo) which is a seed of a plant belonging to the family Poaceae. Rice koji is produced by treating rice with koji fungus, wherein the fungus produces acid protease which hydrolyzes the proteins in the rice as evidenced by Saké (page 1, 1st-2nd, 5th paragraphs under photo). Therefore, Evans discloses a method comprising treating seeds of a plant belonging to the family Poaceae with a protease and roasting the protease-treated product as recited in present claim 1.
Evans teaches that the flavoring agent has aromas of chocolate; and that the flavoring agent may be used to produce a ganache-like substance and “chocolate” ice cream (page 1, 2nd -3rd paragraphs under photo; page 4, 2nd photo under photo). Therefore, Evans teaches the flavoring agent is a cocoa substitute as recited in present claim 8.
Regarding claim 6, Evans teaches the invention as described above in claim 1, including the plant belonging to the family Poaceae is selected from the group consisting of rice and barley (page 1, 1st – 2nd paragraphs under photo; page 10, reply on June 10th from Josh Evans to comment from Bradley Meilinger on June 8th).
Regarding claim 7, Evans teaches the invention as described above in claim 1, including the protease is an acid protease as evidenced by Saké (page 1, 2nd paragraph under photo).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bouvet (WO 2012/076051; IDS citation).
Regarding claim 1, Bouvet teaches a method for producing a flavoring agent (corresponding to hydrolyzed grain composition) (page 4, lines 16-25; page 10, lines 25-28; page 23, lines 21-23), wherein the method comprises treating seeds of a plant belonging to the family Poaceae with a protease; and roasting the protease-treated product (page 8, lines 10-11, 20-26; page 21, lines 4-20; page 23, lines 4-5).
Regarding claim 3, Bouvet teaches the invention as described above in claim 1, including the method comprises producing a food product comprising the protease-treated product (corresponding to hydrolyzed whole grain composition) and non-hydrolyzed whole grain (page 8, lines 10-11; page 17, lines 17-19). Therefore, Bouvet teaches that the method may comprise mixing the protease-treated product and seeds of a plant belonging to the family Poaceae; and roasting the mixture (page 21, lines 4-19; page 23, lines 4-5).
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.
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 2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Bouvet (WO 2012/076051; IDS citation) as applied to claims 1 and 3 above.
Regarding claim 2, Bouvet teaches the invention as described above in claim 1, including that the incubation time and concentration of protease determines the amount of proteins that are hydrolyzed into amino acid and peptide fragments (page 11, lines 1-3). Amino acids and peptide fragments have varying molecular weights and thus, varying molecular weight distribution, so that the amount of amino acids and peptide fragments formed by hydrolysis will determine the size and distribution of peak areas of the varying molecular weights. As the size and distribution of peak areas of the varying molecular weights are variables that can be modified, among others, by adjusting incubation time and protease concentration, the size and distribution of peak areas of the varying molecular weights would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed size and distribution of peak areas of the varying molecular weights cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the size and distribution of peak areas of the varying molecular weights to obtain the desired viscosity and organoleptic parameters as taught by Bouvet (page 11, lines 7-8) (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). MPEP §2144.05, II.
Regarding claim 4, Bouvet teaches the invention as described above in claim 1, including the method comprises treating seeds of a plant belonging to the family Poaceae with a protease; and roasting the protease-treated product (page 8, lines 10-11, 20-26; page 21, lines 4-20; page 23, lines 4-5). Bouvet teaches that the seeds of a plant belonging to the family Poaceae may be mixture of seeds from different types of plants belonging to the family Poaceae such as barley and rice (page 8, lines 21-26). Therefore, the first type of seed belonging to the family Poaceae may correspond to the claimed protease-treated product and the second type of seed belonging to the family Poaceae may correspond to the seed of a plant belonging to the family Poaceae despite both seed types undergoing protease treatment.
Bouvet teaches that the mixture of seeds from different types of plants belonging to the family Poaceae may be roasted after protease treatment (page 21, lines 4-20; page 23, lines 4-5). Although Bouvet teaches roasting the seeds after combining the seeds as opposed to roasting the seeds prior to mixing the seeds together as presently claimed, the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. MPEP §2144.04.IV.C.
Regarding claim 5, Bouvet teaches the invention as described above in claim 3, including a food product produced from the mixture comprising the protease-treated product and seeds of a plant belonging to the family Poaceae may comprise the mixture containing the protease-treated product and seeds of a plant belonging to the family Poaceae (corresponding to the total content of the whole grain) in an amount of 0.5-70 wt.%; and the protease-treated product (corresponding to hydrolyzed whole grain composition) in an amount of 0.1-50 wt.% (page 19, lines 17-33). From these disclosures, Bouvet discloses weight ratios of the protease-treated product to the seeds of a plant belonging to the family Poaceae that at least overlap the claimed weight ratio range. For example, a mixture comprising 50 wt.% of a combination of the protease-treated product and seeds of a plant belonging to the family Poaceae; and 25 wt.% of the protease-treated product would contain a weight ratio of the protease-treated product to the seeds of a plant belonging to the family Poaceae of 1:1, which falls within the claimed range. The selection of a value within the overlapping range renders the claimed weight ratio obvious. MPEP §2144.05.I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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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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/KELLY P KERSHAW/Examiner, Art Unit 1791
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