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 July 8, 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 Claims 29, 33, and 36-37 have been withdrawn from consideration.
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 limitation of comprising a nucleotide derivative selected from the listed group of nucleotide derivates as recited 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 limitation of comprising an amino acid selected from the group consisting of tryptophan, phenylalanine, histidine, glycine, cysteine, alanine, tyrosine, serine, methionine, asparagine, leucine, threonine, isoleucine, proline, hydroxyl proline, arginine, cystine, glutamine, lysine, valine, ornithine, monosodium glutamate, taurine, and combinations thereof as recited in claim 3, 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-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]).
Regarding the limitation of wherein the nucleotide derivative 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 as recited 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. 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 limitation of wherein the amino acid is alanine as recited 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 limitation of comprising a first amino acid and a second amino acid from the lists as recited in claim 17, 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 18 modified Dunkel is relied upon for the teaching of the composition of claim 3 as addressed above.
Regarding the limitation of further comprising a nucleotide from the listed nucleotides recited 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 limitation of wherein the nucleotide is selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof as recited 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 limitation of further comprising alanine and guanosine monophosphate (GMP) as recited 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 limitation of further comprising glycine and guanosine monophosphate (GMP) as recited 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 limitation of further comprising histidine and guanosine monophosphate (GMP) as recited 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 limitation of further comprising alanine and inosine monophosphate (IMP) as recited 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 limitation of further comprising glycine and inosine monophosphate (IMP) as recited 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 limitation of further comprising histidine and inosine monophosphate (IMP) as recited 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 limitation of further comprising proline and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine as recited 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 limitation of further comprising threonine and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine as recited 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 limitation of further comprising glutamic acid and an amino acid selected from the group consisting of histidine, alanine, glycine, phenylalanine, tryptophan, and tyrosine as recited 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 limitation of further comprising a compound selected from the group of listed compounds as recited 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 limitation of further comprising a compound selected from the group of listed compounds as recited 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 limitation of further comprising a compound having the claimed structure as recited 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 limitation of further comprising a compound having the claimed structure as recited 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 limitation of further comprising a compound selected from the group of listed compounds as recited 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 limitation of further comprising a compound having the claimed structure as recited 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 limitation of further comprising a compound having the listed structure as recited 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 limitation of further comprising a compound having the claimed structure as recited 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 July 8, 2025 are acknowledged.
Due to the amendments to the claims, the 35 USC 112 rejection of record in the previous Office Action has been withdrawn (P25).
Applicant’s argument have been fully considered, but they are unpersuasive.
Applicant argues that only AICA-riboside has been shown to be effective in vivo. Winder asserts that adenosine-5‘-thiomonophosphate is only effective in activating AMP kinase in vitro. Winder clearly leads away from the use of adenosine-5’-thiomonophosphate administration to a mammal, only teaching AICAR for such a purpose. A skilled artisan, based on this disclosure, would find no motivation to use adenosine-5’-thiomonophosphate as an AMP-activated protein kinase activator administered orally or otherwise to an animal, let alone in a flavor composition as taught by Dunkel. There is no reason to combine Dunkel and Winder. Winder is not analogous art. No rationale is provided as to how Winder is in the relevant filed of endeavor of either the present invention or Dunkel. A person of ordinary skill would not have consulted and applied the teachings of art directed to treatment of obesity for the flavor composition of Dunkel or the umami pet food flavor composition of the present application. Winder is not reasonably pertinent to either the present application or Dunkel (P26-P29).
Examiner disagrees. As previously addressed, modified Dunkel teaches the claimed invention. 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).
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, Winder is analogous art since the reference is within the field of the inventor’s endeavor because the composition Winder is identical to the composition as presently claimed in claim 3, and the composition is administered orally to mammals including animals (P4, L4-5 and 13-23; and P6, L29-L7, L2). Thus, 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 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.
Applicant argues there is no motivation to apply the compound from Aissaoui to Dunkel. Aissaoui does not teach the intended purpose of (S)-2- benzylamino-3-phenylpropionic acid methyl ester is for use in the pharmaceutical composition for use in treating protozoal infections as disclosed in Aissaoui, let alone for use as a compound for use in the flavor composition of Dunkel (P30-P31).
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. 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. Weiner fails to contemplate any specific derivatives as taught in either Erlanger or instant claim 5. The Examiner’s simple assertion that it would be obvious to select L-phenylalanine benzyl ester and L-tyrosine benzyl ester based in its suitability for intended purpose provides no reason why a skilled artisan would select these two specific compounds. Thus, there is no motivation to combined Dunkel and Winder with Erlanger and Weiner (P31-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 of Zemolka are not shown or discussed to be appropriate for use as a medicament. A skilled artisan would not find triflic acid appropriate for use in the flavor composition of Dunkel simply because Dunkel uses various acids or additives. Zemolka provides no motivation to apply the compound as an additive in Daniel (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 taught in Dunkel (P34-P35).
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 Examiner has acknowledged at par. 108 of the Office Action 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 (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 the Dunkel in view of Winder in further view of 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-P37).
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-P38).
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
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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