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 .
DETAILED ACTION
Status of the application
Claims 1-13 are pending in this application.
Claims 1-13 have been rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject 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 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.
Claim(s) 1-5, 7-13 are rejected under 35 U.S.C. 103 as being unpatentable
over Hesseltine et al. USPN 3243301 in view of Cho et al. US 2022/0022500 A1 and in view of Kazunobu et al. US 2018/0242605 A1.
Regarding claims 1, 2, 3, Hesseltine et al. discloses an advantageous method of
preparation of an improved variety of tempeh that nutritionally complement soybean protein with cereal grain components by utilizing cereal grains such as wheat, rice, barley etc. alone or in combination with pretreated soybean grits (at least in col 1 lines 40-45, 55-62). Hesseltine et al. also discloses that the novel variety of tempeh which can be obtained from pretreated cereal grains or mixed soybean cereal grain substrate using molding organism which is limited to a fungus that produces large amounts of both proteolytic and lipolytic enzymes but little amylolytic enzyme activity due to break down of cereal grain starch to simpler sugar and causing disagreeable taste (col 2 lines 20-25). Hesseltine et al. also discloses that tempeh made from substrate comprising cereal grain substrate provides benefit of its superior quality of overcoming bland taste , off-white or cream colored , somewhat cheese-like solid when exclusively soybean is used ( col 2 lines 1-5) and cereal grain substrate provides the benefit of differently flavored tempeh with the complementation of soybean protein as well (col 1 lines 40-45).
Hesseltine et al. discloses the sterilization step at 100 degree C (col 2 lines 40-42).
However, Hesseltine et al. is silent about the step of steaming grains as claimed in claim 1 (a).
Cho et al. discloses that the substrate for making tempeh can be steam sterilized [0003], [0011], [0013], [0015], [0017], [0018]). However, Cho et al. also discloses that the method of producing Tempeh is applicable from steamed grain e.g. rice by adding steamed rice (at least in [0015], [0017]) to tempeh to ferment tempeh (at least in [0018]). It is to be noted that it is known and it within the skill of one of ordinary skill in the art to perform known steaming method (in background section [0003]) to apply to grain e.g. rice in order to get disclosed steamed rice (at least in [0015], [0017], [0018], [0020]) which meets claim 1 step (a). In a similar manner, it would have been obvious that the step of inoculation applied to incubating Rhizopus strain into steamed beans ([0011]) is applicable for steamed rice to ferment the steamed rice (at least in [0018], [0020]).
One of ordinary skill in the art would have been motivated to ferment steamed rice to achieve a desired fermentation flavor ([0018]) which will exhibit a unique flavor to tempeh, either by considering primary fermentation or secondary fermentation to achieve desired final product ([0020], 0021]). As claim 1 is broad, therefore, claim 1 can include one or two or both the fermentation using tempeh fungus to perform primary ferment using the method used for steamed bean and/or using tempeh fungus e.g. Rhizopus oligosporous from primary fermented tempeh to make desired high content amino acid , vitamins containing unique flavor of tempeh ([0018], claim 2 of Cho et al.).
However, to further strengthen motivation for steam treatment and to address claim limitation of “continuous steaming method” as claimed in claim 3, Kazunobu et al. is used to address claims 1, 3.
Kazunobu et al. discloses that ([0011]) it is desirable to provide a superheated steam sterilization apparatus capable of continuously sterilizing a large amount of grain and superior in maintainability ([0011]).
One of ordinary skills in the art before the effective filling date of the claimed invention would have been motivated to modify Hesseltine et al. in view of Cho et al. (in Cho et al. to perform steam sterilization to sterile the cereal and or cereal for making tempeh [0003], [0011], [0013], [0015], [0017], [0018]) to perform continuous steam sterilization because a superheated steam sterilization apparatus capable of continuously sterilizing a large amount of grain and superior in maintainability as disclosed by Kazunobu et al. ([0011]).
Regarding claim 4, Cho et al. discloses that tempeh starter strain is inoculated in
an amount of 0.1-5 wt.% based on the total weight of the steamed bean (at least in [0003], [0011], [0058]). It is to be noted that the substrate may include steamed rice (i.e. grain) also (at least in 0015]).
Regarding claim 5, Cho et al. discloses that the incubation for preparing the
tempeh may include fermenting at 25 degree C to 35 degree C (at least in [0011], [0013]). It is known and as discussed above that the raw material substrate can be beans ([0003]) and any equivalent grain source including steamed rice depending on desired flavor (at least in [0015], [0018]).
Regarding claims 7, 12, the Examiner notes that claims 7, 12 are product-by-
process claims.
Therefore, it is to be noted that, in this case, the courts have held that when the
prior art factor appears to differ from the claimed factor only in the method of obtaining the factor, the burden of persuasion was on applicant to show that the claimed product exhibited unexpected properties compared with that of the prior art. The courts further noted that “no objective evidence has been provided establishing that no method was known to those skilled in this field whereby the claimed material might have been synthesized.” 10 USPQ2d in 1926.
The courts also held that “even 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See MPEP §2113.
Lastly the courts have held that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriads of processes put before it and then obtain prior art products and make physical comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). The examiner further notes that “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP §2113.
Regarding claim 8, Cho et al. discloses a sauce comprising the aged tempeh (at
least in [0022]).
Regarding claim 9, it is to be noted that the discussion made for claim 1 is
applicable to address claim 9 (a) also. In addition, Cho et al. also discloses a method of producing an ‘aged tempeh’ (at least in [0018]) to meet claim 9 (a). Cho et al. also discloses that an aged composition of fermented tempeh mixture is made by adding at least one of edible salt, or brine ([0014], [0018]) to meet claim 9 (b).
Regarding claim 10, Cho et al. discloses a method of producing an aged tempeh
(at least in [0018]) which method can include at least one or more steamed rice, steam brown rice or steamed black rice to have the desired flavor of the final product ([0020]). Cho et al. also discloses that the “fermented pastes” may be obtained by including sweet wheat paste also (i.e. grain) (at least [0031]). Therefore, if we combine at least the disclosed paragraphs [0020], [0031]), it meets the claim limitation of “adding one or more grains and steamed grains” of claim 10.
Regarding claim 11, Cho et al. discloses that the water content is in the range
amount of 56-69% by weight during the method of aging (at least in [0080], Table 1) which overlaps claimed range amount of 40-70% by weight of claim 11. It shows prima facie case of obviousness according to MPEP 2144.05. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 13, Cho et al. also discloses the method of producing
Tempeh is applicable from steamed grain e.g. rice by adding steamed rice (at least in [0015], [0017]) to tempeh to ferment tempeh (at least in [0018]). Cho et al. also discloses a sauce comprising the aged tempeh (at least in [0022]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over
Hesseltine et al. USPN 3243301 in view of Cho et al. US 2022/0022500 A1 and in view of Kazunobu et al. US 2018/0242605 A1 as applied to claim 1 and further in view of Ahnan-Winarno et al. (Entitles Tempeh: A semicentinneal Review…. affordability in Compr. Rev. Food Sci Food Saf. Vol. Pages 1717-1767, 2021: only first six pages i.e. 1717-1722 are attached).
Regarding claim 6, Hesseltine et al. in view of Cho et al. are silent about
humidity.
Ahnan-Winarno et al. discloses that tempeh fermentation to produce grain tempeh requires optimum level of 62% humidity (at least page 1721, col 2 last paragraph).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Hesseltine et al. in view of Cho et al. with the teaching of Ahnan-Winarno et al. who discloses that tempeh fermentation requires optimum level of 62% humidity (page 1721, col 2 last paragraph) to produce fermented grain tempeh.
Conclusion
Makoto et al. (JP 2007-175024 A) is pertinent art who teaches tempeh-like
fermented cereal including rice, wheat, barley corn etc. (at least on page 3, paragraph 4, which is above “Advantageous-Effects; at least in claims 1, 3, 4, 14 and last paragraph of page 4). Makoto et al. discloses that grain source e.g. rice, wheat are equivalent raw material ssourcesto make tempeh-like fermented food from Rhizopus genus fungus as evidenced by Makodo et al. (at least in claims 1,3,4,14 and last paragraph of page 4). However, Makoto does not teach specifically steamed grain and cannot be used to address other dependent claims. Therefore, Hesseltine et al. in view of Cho et al. is used. Hesseltine et al. is used as primary prior art who discloses tempeh-like fermented cereal including rice, wheat etc. that nutritionally complement soybean protein with cereal grain components by utilizing cereal grains such as wheat, rice, barley etc. alone or in combination with pretreated soybean grits (at least in col 1, lines 40-45, 55-62). This disclosure of Hesseltine et al. is appropriate to combine with the teaching of Cho et al. to modify Hesseltine et al. with steamed rice. Therefore, Hesseltine et al. in view of Cho et al., is used to address other dependent claims in this office action.
Conclusion
19. Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner’s supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BHASKAR MUKHOPADHYAY/Examiner, Art Unit 1792
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