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 .
The amendment filed December 17, 2025 is acknowledged. Claims 3-13, 15, 17-29, 33, 36-37, and 47 are pending in the application. Claims 1, 2, 14, 16, 30-32, 34-35, and 38-46 have been cancelled. Claims 29, 33, and 36-37 have been withdrawn from consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 20, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-13, 15, 17-28, and 47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 3 has been amended to recite “An umami pet food flavor composition comprising…an amino acid in an amount of from about 1 mM to about 1M” at P2, L1 and P9, L6. The instant specification fails to provide support for this claimed quantity of amino acid in the flavor composition. See P90, L8-15 and the recitation of “the at least one first amino acid…can be present in an amount of from about 1 mM to about 1 M …of the pet food product” (emphasis added).
Claims 4-13, 15, 17-28, and 47 are not specifically discussed but are rejected due to their dependence on claim 3.
Accordingly, there is no indication that applicant had possession of the presently claimed invention at the time of the filing the instant application.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3, 15, 17-28, and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”).
With respect to claims 3 and 47, Dunkel teaches a flavor composition with boiled chicken character (Abstract; and paragraphs [0017] and [0026]).
Regarding the recitation of comprising a nucleotide derivative selected from the listed group of nucleotide derivates in claim 3, Dunkel teaches the flavor composition may include nucleotides such as AMP as well as one or more additives (paragraphs [0018], [0026], and [0032]).
However, Dunkel does not expressly disclose the flavor composition comprises at least one of the claimed nucleotide derivates.
Winder teaches AMP-activated protein kinase activators (AMPK activator). The AMPK activator(s) may be AMP or an AMP analog, such as
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. The AMPK activator(s) may be administered orally to mammals to treat, prevent, or alleviate obesity, type 2 diabetes, muscle paralysis or may be used as an ergogenic aid (P4, L13-23; P6, L13-16; and P6, L29-P7, L2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Winder, to select the AMPK activator
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in the composition of Dunkel based upon its suitability for its intended use with the expectation of successfully preparing functional product. One of ordinary skill in the art would have been motivated to do so because Dunkel teaches the composition may include nucleotides such as AMP as well as one or more additives and serves for nutrition (paragraphs [0018], [0026], and [0032]), the simple selection of particular additive(s) incorporated in the composition is a matter of choice, Winder recognizes the equivalence of AMP and AMP analogs such as
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in oral compositions and teaches the AMP analog may be used to treat, prevent, or alleviate obesity, type 2 diabetes, muscle paralysis or as an ergogenic aid (P4, L13-23; P6, L13-16; and P6, L29-P7, L2), and said modification would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of comprising an amino acid in an amount from about 1mM to about 1M selected from the group consisting of tryptophan, phenylalanine, histidine, glycine, cysteine, alanine, tyrosine, serine, methionine, asparagine, and leucine in claim 3, Dunkel teaches the flavor composition comprises one or more amino acids such as glycine, L-alanine, L-leucine, L-asparagine, L-serine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-methionine, and/or L-cysteine. In the examples, the flavor composition comprises about .85 mM L-histidine, about .60 mM glycine, about .77 mM L-alanine, and about .56 L-serine (calculated from [grams of amino acid/Kg of composition D] x [1 mole of amino acid/molar mass of amino acid] x [1 Kg of composition D/1000 g of composition D] x [15.367 g of composition D/1 L water] x [1000 mM/ 1M]) (Abstract; and paragraphs [0017], [0026], [0027], and [0068]-[0069]). As set forth in MPEP 2144.05, in the case where the claimed range “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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.). Also, the claimed range and the prior art range are close enough that one skilled in the art would have expected them to have the same properties of high intensities for umami (paragraph [0015]). Applicant is reminded a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); and In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding the recitation of wherein the nucleotide derivative and the amino acid binds to one or more amino acids of a feline umami receptor comprising the amino acid sequence set forth in SEQ ID NO: 2 or SEQ ID NO: 4, to thereby impart an umami flavor in claim 3 and wherein the one or more amino acids of the feline umami receptor are selected from the group consisting of Thr449, Serl72, Glul7O, G1u301, His7l, His47, Arg277, His3O8, Asn69, Asn3O2, Ser3O6, Ser3 84, Asp3O2, A1a380, Met383, Ser385, 11e309, SerIO7, Asp49, and combinations thereof as recited in claim 47, it is noted that these limitations relate to functional language. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Applicant is also reminded that the broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system (or apparatus or product) regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, these claimed features would naturally occur from said flavor composition since modified Dunkel teaches a flavor composition that is substantially similar to the presently claimed flavor composition as addressed above, and there is no structural difference between the claimed nucleotide derivative and the nucleotide derivate in Dunkel as modified by Winder or the claimed amino acid and the amino acids of Dunkel. Additionally, Dunkel teaches the flavor composition has high intensities for umami (paragraph [0015]). Further, the functional language is not considered to confer patentability to the claims. It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. in re Best, 195 USPQ 430, 433 (CCPA 1977), in re Spada, 15 USPQ2d 1655, 1658 ( Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. in re Best, 195 USPQ 430, 433 (CCPA 1977).
With respect to claim 15, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of wherein the amino acid is alanine in claim 15, modified Dunkel teaches this limitation since Dunkel teaches the amino acid is alanine (paragraph [0027]).
With respect to claim 17 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of comprising a second amino acid from the list in claim 17, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprises one or more compounds comprising amino acids, such as glycine, L-alanine, L-valine, L-leucine, L-isoleucine, L-glutamine, L-glutamic acid, L-aspartic acid, L-asparagine, L-serine, L-homoserine, L-threonine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-lysine, L-arginine, L-methionine, L-proline, L-hydroxyproline, L-cysteine, L-cystine, L-homocysteine, L-citrulline, L-ornithine, and / or taurine (Abstract; and paragraphs [0017], [0026], and [0027]).
With respect to claim 18 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a nucleotide from the listed nucleotides in claim 18, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprises one or more nucleoside and/or nucleotides, such as 3'-IMP, 5'-IMP, 3’-AMP, 5'-AMP, 3'-GMP, 5'-GMP, 3'-UMP, 5'-UMP, 3'-CMP, 5'-CMP, 3'-XMP, 5'-XMP, ADP, ATP, UDP, UTP, GDP, GTP, CDP, or CTP (Abstract; and paragraphs [0017], [0026], [0032], and [0033]).
With respect to claim 19 modified Dunkel is relied upon for the teaching of the composition of claim 18 as addressed above.
Regarding the recitation of wherein the nucleotide is selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof in claim 19, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprises one or more nucleoside and/or nucleotides, such as IMP and GMP (Abstract; and paragraphs [0017], [0026], [0032], and [0033]).
With respect to claim 20 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising alanine and guanosine monophosphate (GMP) in claim 20, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise alanine and GMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 21 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising glycine and guanosine monophosphate (GMP) in claim 21, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise glycine and GMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 22 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising histidine and guanosine monophosphate (GMP) in claim 22, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise histidine and GMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 23 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising alanine and inosine monophosphate (IMP) in claim 23, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise alanine and IMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 24 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising glycine and inosine monophosphate (IMP) in claim 24, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise glycine and IMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 25 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising histidine and inosine monophosphate (IMP) in claim 25, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition may comprise histidine and IMP (Abstract and paragraphs [0017], [0026], [0027], [0032], and [0033]).
With respect to claim 26 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising proline and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine in claim 26, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprising one or more compounds comprising amino acids, such as glycine, L-alanine, L-valine, L-leucine, L-isoleucine, L-glutamine, L-glutamic acid, L-aspartic acid, L-asparagine, L-serine, L-homoserine, L-threonine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-lysine, L-arginine, L-methionine, L-proline, L-hydroxyproline, L-cysteine, L-cystine, L-homocysteine, L-citrulline, L-ornithine, and / or taurine (Abstract; and paragraphs [0017], [0026], and [0027]).
With respect to claim 27 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising threonine and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine in claim 27, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprising one or more compounds comprising amino acids, such as glycine, L-alanine, L-valine, L-leucine, L-isoleucine, L-glutamine, L-glutamic acid, L-aspartic acid, L-asparagine, L-serine, L-homoserine, L-threonine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-lysine, L-arginine, L-methionine, L-proline, L-hydroxyproline, L-cysteine, L-cystine, L-homocysteine, L-citrulline, L-ornithine, and / or taurine (Abstract; and paragraphs [0017], [0026], and [0027]).
With respect to claim 28 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising glutamic acid and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine in claim 28, modified Dunkel teaches this limitation since Dunkel teaches the flavor composition comprising one or more compounds comprising amino acids, such as glycine, L-alanine, L-valine, L-leucine, L-isoleucine, L-glutamine, L-glutamic acid, L-aspartic acid, L-asparagine, L-serine, L-homoserine, L-threonine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-lysine, L-arginine, L-methionine, L-proline, L-hydroxyproline, L-cysteine, L-cystine, L-homocysteine, L-citrulline, L-ornithine, and / or taurine (Abstract; and paragraphs [0017], [0026], and [0027]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Aissaoui et al. US 20110224210 (hereinafter “Aissaoui”).
With respect to claim 4, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound selected from the group of listed compounds in claim 4, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound(s).
Aissaoui teaches a medicament comprising
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(paragraphs [0226]-[0228], [0344], and P33, Table – (S)-2-Benzylamino-3-phenylpropionic acid methyl ester).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Aissaoui, to select (S)-2-Benzylamino-3-phenylpropionic acid methyl ester in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aissaoui and Dunkel similarly teach compositions comprising propionic acid and their stereoisomers (Dunkel-paragraph [0031]), Aissaoui teaches enteral administration of the medicament (paragraph [0226]), Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Erlanger et al., “Improved Synthesis of Amino Acid Benzyl Esters” (hereinafter “Erlanger”) and Weiner et al. US 20110027346 (hereinafter “Weiner”).
With respect to claim 5, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound selected from the group of listed compounds in claim 5, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound(s).
Erlanger teaches the preparation of L-phenylalanine benzyl ester
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and L-tyrosine benzyl ester
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(P5781-P5782).
Weiner teaches the manufacture of derivatives of L-phenylalanine and L-tyrosine
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(X = H or OH) for industrial, medical, and agricultural use (such as human food and domestic animal feed processing, nutritional and pharmaceutical applications, e.g., for food and feed supplements, colorants, nutraceuticals, cosmetic, and pharmaceutical needs) (Abstract; Fig. 5; and paragraphs [0002]-[0004], [0007], [0009]-[0013], [0074], [0081]-[0083], [0109]-[0111], [0460], [0465], [0471], [0571]-[0581], [0586]-[0588], and [0601]-[0620]; P207, claim 150).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Erlanger and Weiner, to select derivatives of L-phenylalanine and L-tyrosine in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product of desirable organoleptic and nutritional qualities. One of ordinary skill in the art would have been motivated to do so because Dunkel teaches the composition may comprise additional additives and serves for nutrition (paragraphs [0018], [0022], [0026], [0060], and [0064]), Weiner teaches the L-phenylalanine and L-tyrosine derivatives may be prepared for industrial, medical, and agricultural use (such as human food and domestic animal feed processing, nutritional and pharmaceutical applications, e.g., for food and feed supplements, colorants, nutraceuticals, cosmetic, and pharmaceutical needs), improve the quality of the food or feed, e.g., improve palatability, and including other ingredients, such as flavoring agents (paragraphs [0571]-[0581] and [0601]-[0620]), and the desired flavor and nutritional profile obtained is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Zemolka et al. US 20100009986 (hereinafter “Zemolka”).
With respect to claim 6, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound having the claimed structure in claim 6, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound (N-[2-(1H-Indol-3-yl)-ethyl]-nicotinamide).
Zemolka teaches medicaments comprising N-[2-(1H-Indol-3-yl)-ethyl]-nicotinamide (Abstract; and paragraph [0695]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Zemolka, to select N-[2-(1H-Indol-3-yl)-ethyl]-nicotinamide in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Zemolka and Dunkel similarly teach compositions comprising indole containing compounds (Dunkel-paragraph [0037]), Zemolka teaches oral administration of the medicament (paragraphs [0383] and [0695]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Shcherbakova et al. US 20060052345 (hereinafter “Shcherbakova”).
With respect to claim 7, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound having the claimed structure in claim 7, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026])
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound (2-Amino-N-phenethyl-benzamide).
Shcherbakova teaches pharmaceutical compositions comprising 2-Amino-N-phenethyl-benzamide (Abstract; and paragraphs [0275]-[0276]).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Shcherbakova, to select 2-Amino-N-phenethyl-benzamide in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Shcherbakova teaches oral administration of the pharmaceutical and the formulation may be incorporated into foodstuff along with a flavoring (paragraphs [0316] and [0332]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claims 8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Tachdjian et al. US 20050084506 (hereinafter “Tachdjian”).
With respect to claim 8 and 13, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound selected from the group of listed compounds in claims 8 and 13, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compounds.
Tachdjian teaches non-peptide compounds and amide derivatives, such as oxalamides, ureas, and acrylamides including 4-methoxy-3-methyl-N-(1-phenylethyl) benzamide
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, N-(heptan-4-yl)benzo[d][1,3]dioxole-5-carboxamide
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, (R)-methyl 2-(benzo[d][1,3]dioxole-6-carboxamido)-3-methylbutanoate
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, N-(2,3-dimethylcyclohexyl)benzo[d][1,3]dioxole-5-carboxamide
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are useful flavor or taste modifies for food, beverages, and other comestible or orally administered medicinal products or compositions. (Abstract; and paragraphs [0005], [0061], [0069], [0075], [0076], [0081], [0082], [0098], [0134], [0138], [0139], [0148], [0230], [0231], [0242], [0248], [0373]-[0375], [0384]-[0386], [0406]-[0408], [0589]-[0591], and [0743]-[0745]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Tachdjian, to select non-peptide compounds and amide derivatives, such as oxalamides, ureas, and acrylamides, based upon its suitability for its intended purpose in the composition of modified Dunkel with the expectation of successfully preparing a desirable flavoring composition. One of ordinary skill in the art would have been motivated to do so because Tachdjian and Dunkel similarly teach flavor compositions, Dunkel teaches the composition may be useful as flavor or taste modifiers/taste enhancers (Abstract), Dunkel teaches other flavors and taste modulators may be incorporated (paragraphs [0035], [0037], and [0064]), and the simple selection of particular flavor/taste modifier combination in the composition is a matter of choice and does not provide a patentable feature over the prior art. There would have been a reasonable expectation of success with said modification. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Rajabi et al. “Structure-activity relationship of 2,4,5-trioxoimidazolidines as inhibitors of thymidine phosphorylase” (hereinafter “Rajabi”) and Beckert et al. DD 154818 (hereinafter “Beckert”) (refer to the corresponding machine translation).
With respect to claims 9 and 10, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound having the claimed structure in claim 9 and further comprising a compound selected from the group of listed compounds as recited in claim 10, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compounds.
Rajabi teaches pharmaceutical compositions comprising 2,4,5-trioxoimidazolidines (Abstract; and P1165-1171).
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Beckert teaches preparation of 1,3-substituted parabanic acids and their 2,4,5-imino derivatives. The preparations may be applied in pharmacy areas (Abstract and P1, Description of machine translation; P3, Fig. VI of original document).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Rajabi and Beckert, to select 2,4,5-trioxoimidazolidines in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing functional product. One of ordinary skill in the art would have been motivated to do so because Rajabi and Beckert teach pharmaceutical applications of 2,4,5-trioxoimidazolidines (Rajabi-Abstract and Introduction, P1165; and Beckert-Abstract and P1, Description), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) incorporated in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 as applied to claim 3 above, and in further view of Kirsch et al. WO 2010129665 (hereinafter “Kirsch”).
With respect to claim 11, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound having the listed structure in claim 11, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound.
Kirsch teaches pharmaceutical compositions comprising pyrimidine-2,4,6-triones, such as
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(Abstract; and paragraphs [00130] and [00186]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select pyrimidine-2,4,6-triones in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Kirsch teaches oral administration of the pharmaceutical and the formulation may be combined with foodstuff and flavoring (paragraphs [0037], [00237], [00239], and [00248]-[00252]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) incorporated in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dunkel et al. EP 2119372 (hereinafter “Dunkel”) in view of Winder WO 0193874 (hereinafter “Winder”) as applied to claim 3 above, and in further view of Clark et al. US 4144341 (hereinafter “Clark”).
With respect to claim 12, modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the recitation of further comprising a compound having the claimed structure in claim 12, Dunkel teaches the composition may include one or more additives and serves for nutrition (paragraphs [0018] and [0026]).
However, modified Dunkel does not expressly disclose the flavor composition further comprises the claimed compound.
Clark teaches 1,3-dihydroimidiazo[4,5-b]pyridine-2-ones, such as
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. These compositions may be used as pharmaceutical formulations for oral administration (C1, L10-15, 18-32, and 65; C2, L6, 8-20, 54, and 59; C11, L50-55; and C11, L61-C12, L2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Clark, to select 1,3-dihydroimidiazo[4,5-b]pyridine-2-ones, such as
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, in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Clark and Dunkel similarly teach compositions comprising pyridine containing compounds (Dunkel-paragraph [0037]), Clark teaches oral administration of the pharmaceutical and the formulation may be combined with foodstuff and flavors (C1, L10-15; C11, L50-55; C11, L61-C12, L2; and C30, L1-59), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 52 of copending Application No. 15534440 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the present application and claim 52 of copending application no. 15534440 relate to similar combinations of nucleotide derivatives, compounds (Tm-2), and amino acid(s) in pet food flavor.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks filed December 17, 2025 are acknowledged.
Applicant’s argument have been fully considered, but they are unpersuasive.
Applicant argues while Dunkel provides a list of amino acids, which preferably include L-glutamic acid, L-aspartic acid, and/or taurine, there is no discussion as to an amount of any of the amino acids recited in claim 3 that would be effective in binding the feline umami receptors T1R1/T1R3 to impart an umami flavor. In the example of Dunkel, Applicant notes that tryptophan, phenylalanine, histidine, glycine, cysteine, alanine, tyrosine serine, methionine, asparagine, and leucine, which are recited in instant claim 3, are included in amounts less than the range presently recited in the instant claim. Dunkel further demonstrates that the amino acids recited in claim 3 have no impact on the flavor (i.e., the umami flavor) or aroma of the broths. Dunkel has shown that different components of the broth influence the flavor and aroma, but the amino acid concentrations have no influence on the flavor profile of the products. Dunkel at best suggests only aspartic acid, glutamic acid, and taurine, none of which are recited in amended claim 3, are associated with maintaining umami flavor in a food flavoring composition. The flavor composition of Dunkel is specifically formulated for human oral consumption, thus the amino acids selected for imparting umami flavor in Dunkel are selected for having known binding affinity for human T1R1/T1R3 receptors. Thus, Dunkel fails to provide any guidance for a skilled artisan to arrive at any amino acid that binds a feline umami receptor to impart an umami flavor because human experts could not perceive any combination of amino acids suitable for imparting umami flavor in a feline. The removal of the amino acids recited in instant claim 3 had no negative impact on the overall flavor of the broths of Dunkel, further supporting that human experts can identify suitable amino acids for imparting umami flavor in human (i.e., glutamate and aspartic acid), but cannot detect amino acids suitable for imparting umami flavor in a feline. The data presented by Dunkel provides no motivation for a skilled artisan to arrive at an effective concentration of any of the amino acids as claimed. Applicant respectfully submits the present application demonstrates an unexpected advantage and superior umami pet food flavor composition because the claimed amino acids work synergistically with the recited nucleotide derivatives to enhance activation of feline T1R1/T1R3 umami receptors, which is not suggested by any of the cited references. Dunkel fails to provide guidance for a skilled artisan to select any concentration of the amino acids recited in claim 3 that would impart an umami flavor in a feline, let alone suggest any synergistic properties arising from the combination of the recited amino acids with the nucleotide derivatives as provided in the present application (P25-P30).
Examiner disagrees. Although Dunkel teaches L-glutamic acid, L-aspartic acid, and/or taurine are preferred, Dunkel is not limited to this disclosure since the reference also teaches the flavor composition comprises one or more amino acids such as glycine, L-alanine, L-leucine, L-glutamic acid, L-aspartic acid, L-asparagine, L-serine, L-phenylalanine, L-tyrosine, L-tryptophan, L-histidine, L-methionine, L-cysteine, and /or taurine (paragraph [0027]). Applicant is reminded that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, the flavor composition comprises about .85 mM L-histidine, about .60 mM glycine, about .77 mM L-alanine, and about .56 L-serine (calculated from [grams of amino acid/Kg of composition D] x [1 mole of amino acid/molar mass of amino acid] x [1 Kg of composition D/1000 g of composition D] x [15.367 g of composition D/1 L water] x [1000 mM/ 1M]) in the examples, and Dunkel also teaches providing taste-effective amount of the components which can be adjusted as desired (Abstract; and paragraphs [0017], [0018], [0026], [0027], and [0068]-[0069]). 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.).
Further, the flavor composition of Dunkel being intended for humans (paragraph [0046]) does not preclude it from being used as a pet flavor composition or the amino acids of the composition from binding to the amino acids of a feline umami receptor since the amino acids of Dunkel are identical to the claimed amino acids and it is understood that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Additionally, Dunkel teaches the flavor composition has high intensities for umami (paragraph [0015]). Thus, the features of the invention as described by the Applicant are expected in view of the prior art. Applicant is reminded that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02.
Applicant argues Winder does not contemplate the inclusion of an amino acid in the disclosed method. There would be no motivation to apply an AMP analogue that is not effective in vitro, such as adenostine-5’-thiomonophosphate, in combination with Dunkel to arrive at said composition. Further, neither Dunkel nor Winder suggest any synergistic stimulation of the feline T1R1/T1R3 umami receptor achieved by the claimed composition comprising a nucleotide derivative and an amino acid. Winder broadly lists various methods of administering the AMP analogues, but also states that it may be necessary to administer the analog directly into the muscle of the mammal. Thus, a skilled artisan would not find any motivation to administer the AMP analogues orally. Dunkel, on the other hand, teaches an aroma and flavor composition, which is ingested orally. There is no motivation to combine the disclosures of Dunkel and Winder to arrive at instant claim 3 (P30-P31).
Examiner disagrees. As previously addressed, modified Dunkel teaches the claimed invention. While Winder does not disclose all the features of the presently claimed invention, Winder is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
Additionally, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine Dunkel and Winder is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art. As previously addressed, given that Dunkel teaches the composition may include nucleotides such as AMP as well as one or more additives and serves for nutrition (paragraphs [0018], [0026], and [0032]), the simple selection of particular additive(s) incorporated in the composition is a matter of choice, and Winder teaches the composition is administered orally to mammals including animals (P4, L4-5 and 13-23; and P6, L29-L7, L2), recognizes the equivalence of AMP and AMP analogs in oral compositions, and teaches the AMP analog may be used to treat, prevent, or alleviate obesity, type 2 diabetes, muscle paralysis or as an ergogenic acid (P4, L13-23; P6, L13-16; and P6, L29-P7, L2), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Winder, to select the AMPK activator in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product.
Further, while Winder teaches only AICA-riboside has been shown to be effective in vivo (P9, L17-22), Winder is not limited to this embodiment since the reference also teaches the AMP analog adenosine-5’-thiomonophosphate may also be administered orally (P4, L13-23; and P6, L29-P7, L2). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Applicant argues one skilled in the art would not arrive at the features of claim 3 from the disclosure of Dunkel in view of Winder. Any further reliance on Aissaoui fails to render claim 4 obvious. Because the differences between human and feline T1R1/T1R3 receptors and the methods used in Dunkel used to evaluate umami flavoring, a skilled artisan would not rely on the teachings of Dunkel to arrive any effective flavor composition for the purpose of imparting umami flavor in feline. Thus, a skilled artisan would not be motivated to combine Aissaoui with Dunkel and Winder as suggested (P31).
Examiner disagrees. As addressed above, Dunkel in view of Winder teaches the invention as claimed in claim 3. Aissaoui is relied upon for the teachings of dependent claim 4. Applicant is reminded that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine is found within the references themselves as well as the knowledge generally available to one of ordinary skill in the art. Additionally, Aissaoui teaches using a compound that is identical to that as presently claimed in a product. Given that Aissaoui and Dunkel similarly teach compositions comprising propionic acid and their stereoisomers (Dunkel-paragraph [0031]), Aissaoui teaches enteral administration of the medicament (paragraph [0226]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice, it would have been obvious to one of ordinary skill in the art to select (S)-2-Benzylamino-3-phenylpropionic acid methyl ester in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product.
Applicant argues Erlanger is not analogous art. Nothing is Erlanger is in a relevant field of endeavor or is reasonably pertinent so a skilled artisan would not have referred to Erlanger. Assertions that the present application and Erlanger share a compound is simply hindsight bias. A skilled artisan would not find it obvious to select L-phenylalanine benzyl ester and L-tyrosine benzyl ester based in its suitability for intended purpose, as suggested by the Examiner, because Weiner provides no guidance to a skilled artisan to select these two specific compounds in a pet food flavor composition. Further, Weiner is completely silent on any composition suitable for imparting umami flavoring to a feline. Thus, there is no motivation to combine Dunkel and Winder with Erlanger and Weiner (P32-P33).
Examiner disagrees. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Erlanger is analogous art since the reference is within the field of the inventor’s endeavor because the compositions of Erlanger (L-phenylalanine benzyl ester and L-tyrosine benzyl ester, P5781-P5782) are identical to the composition as presently claimed in claim 5, and derivatives of L-phenylalanine and L-tyrosine may be prepared for industrial, medical, and agricultural use (such as human food and domestic animal feed processing, nutritional and pharmaceutical applications, e.g., for food and feed supplements, colorants, nutraceuticals, cosmetic, and pharmaceutical needs), improve the quality of the food or feed, e.g., improve palatability, and including other ingredients, such as flavoring agents (see Weiner-paragraphs [0571]-[0581] and [0601]-[0620]). Thus, given that Dunkel teaches the composition may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]) and the desired flavor and nutritional profile obtained is a matter of choice, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Erlanger and Weiner, to select derivatives of L-phenylalanine and L-tyrosine, such as L-phenylalanine benzyl ester and L-tyrosine benz7l ester, in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product of desirable organoleptic and nutritional qualities. Additionally, Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues the intermediates disclosed in Zemolka are neither shown or discussed as appropriate for use as a medicament. Zemolka provides no motivation to apply the compound as an additive in Dunkel (P33-P34).
Examiner disagrees. Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine is found within the references themselves as well as the knowledge generally available to one of ordinary skill in the art. Given that Zemolka and Dunkel similarly teach compositions comprising indole containing compounds (Dunkel-paragraph [0037]), Zemolka teaches oral administration of the medicament (paragraphs [0383] and [0695]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice, it would have been obvious to one of ordinary skill in the art to select N-[2-(1H-Indol-3-yl)-ethyl]-nicotinamide in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. While Zemolka teaches utilizing the composition as a building block in the example (paragraph [1681]), Zemolka is not limited to the examples since the reference teaches preparing the composition of claim 6 (paragraph [0695]). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. /n re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, the reference teaches oral administration (paragraphs [0383] and [0695]). Applicant is reminded that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." /n re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
Applicant argues Shcherbakova does not disclose the compound is suitable for the intended purpose of preparing a functional product, as suggested by the Examiner (P34).
Examine disagrees. Given that Shcherbakova teaches oral administration of the pharmaceutical and the formulation may be incorporated into foodstuff along with a flavoring (paragraphs [0316] and [0332]), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) incorporated in the composition is a matter of choice, it would have been obvious to one of ordinary skill in the art to select 2-Amino-N-phenethyl-benzamide in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product.
Applicant argues while the Examiner has acknowledged at par. 108 of the Office Action that Tachdjian fails to disclose 4-methoxy-methyl-N-(1-phenethyl) benzamide, Applicant notes the rejection beginning at par. 70 still states that Tachdjian allegedly teaches 4-methoxy-3-methyl-N-(1-phenylethyl) benzamide (P34-P35).
Examiner disagrees. As previously indicated, while Tachdjian teaches 3-chloro-4-methoxy-N-)1-phenylethyl)benzamide in the example (paragraphs [0589]-[0591]), Tachdijan is not limited to this embodiment since the reference also teaches that the residues may optionally be substituted with a halogen (paragraphs [0069], [0075], [0076], and [0081]-[0082]). This is not an acknowledgement that Tachdjian fails to teach the claimed composition. Rather, this is merely intended to draw Applicant’s attention to other portions of the reference as opposed to limiting the reference to its examples as previously and inappropriately done by Applicant. However, “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues Rajabi fails to disclose the compounds of instant claims 9 and 10, and any further reliance on Rajabi and Beckert fail to render claims 9 and 10 obvious (P35-P36).
Examiner disagrees. The combination of Rajabi and Beckert teach the presently claimed compositions of clams 9 and 10. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Given that Rajabi and Beckert teach pharmaceutical applications of 2,4,5-trioxoimidazolidines (Rajabi-Abstract and Introduction, P1165; and Beckert-Abstract and P1, Description), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) incorporated in the composition is a matter of choice, it would have been obvious to one of ordinary skill in the art to select 2,4,5-trioxoimidazolidines in the composition of modified Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product.
Applicant argues Kirsch is not analogous art. The reference is neither pertinent nor in the same field of endeavor as the present application (P36).
Examiner disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kirsch is analogous art since the reference is within the field of the inventor’s endeavor because the composition of Kirsch is identical to the composition as presently claimed in claim 11, and Kirsch also teaches oral administration of the pharmaceutical and the formulation may be combined with foodstuff, such as sugars, starch, oil, polyols, gums, water, solutions, and the like, and flavoring (paragraphs [0037], [00237], [00239], and [00248]-[00252]). Thus, given that Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]) and the simple selection of particular additive(s) included in the composition is a matter of choice, it would have been obvious to one of ordinary skill in the art to select pyrimidine-2,4,6-triones in the composition of Dunkel based in its suitability for its intended purpose with the expectation of successfully preparing a functional product. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Applicant argues there is no motivation to modify the compounds of Clark to arrive at the compound of claim 12 (P37).
Examiner disagrees. Clark successfully teaches the composition as claimed in claim 12. One of ordinary skill in the art would have been motivated to select the composition of Clark in modified Dunkel because Clark and Dunkel similarly teach compositions comprising pyridine containing compounds (Dunkel-paragraph [0037]), Clark teaches oral administration of the pharmaceutical and the formulation may be combined with foodstuff and flavors (C1, L10-15; C11, L50-55; C11, L61-C12, L2; and C30, L1-59), Dunkel teaches a composition that may comprise additional additives and serves for nutrition (paragraphs [0018] and [0026]), and the simple selection of particular additive(s) included in the composition is a matter of choice.
Applicant requests that the outstanding non-statutory double patenting rejections of the pending claims be held in abeyance until the claims of this application are otherwise found to be allowable (P38).
Examiner maintains the double patenting rejection as addressed above.
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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