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 .
Status of the Application
Receipt of the Response and Amendment after Final Office Action filed 12/12/2025 and the Request for Continued Examination (RCE under 37 CFR 1.114) filed 12/29/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 29, 31, 32, 34-38, 40, and 51-54
Withdrawn claims: None
Previously canceled claims: 1-28, 30, 33, 39, 41-50, and 55-58
Newly canceled claims: None
Amended claims: 29
New claims: None
Claims currently under consideration: 29, 31, 32, 34-38, 40, and 51-54
Currently rejected claims: 29, 31, 32, 34-38, 40, and 51-54
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 29, 31, 32, 34-38, 40, and 51-54 are rejected under 35 U.S.C. 103 as being unpatentable over Tachdjian et al. (U.S. 2006/0257543 A1) (hereinafter “Tachdjian II”).
Regarding claim 29, Tachdjian II discloses a food product ([0002], [0032], [0289]) comprising a compound ([0141], Formula If; [0146]; [0166], where R3 – hydrogen and R1 and R2 may be arylalkyl or heteroaryl; [0104], where heteroaryl group may be furanyl; [0106], where the arylalkyl groups may be “aromatic and heteroaromatic systems which are coupled to another residue through a carbon chain, including substituted or unsubstituted, saturated or unsaturated carbon chains, typically of 1-6C…arylalkyl or heteroalkyl is an alkyl group substituted at any position by an aryl group, [or] heteroaryl”; [0107], where “‘substituted arylalkyl’ denotes an arylalkyl group substituted on the alkyl portion with one or more, and preferably one or two, groups preferably chosen from … heterocyclic ring”; such that R2 may be 1-phenylethyl and R1 may be 2-(furan-2-yl)-2-phenylethyl) that is equivalent to the claimed compound depicted as follows:
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Tachdjian II further discloses adding a sufficient amount of the compound to a food product in order to cause a desirable modulation in the savory flavor of the food product ([0137], [0292]-[0294]), including in the range of “at least a savory flavor modulating amount” ([0023]) that may be from 0.001-100 ppm ([0058]). Such instruction renders the claimed range of from about 1 mM to about 1 M obvious (e.g., 1 mM of a compound having the formula C21H23NO and a molecular weight of 305 would be at 305 ppm, thus falling within the range of at least 100 ppm).
As for claim 31, Tachdjian II also discloses adding a sufficient amount of the compounds to a food product in order to cause a desirable modulation in the savory flavor of the food product ([0292]-[0294]). Tachdjian II is thus considered to disclose the compound as being present in an amount effective to increase a kokumi taste of the food product, as determined by a panel of taste testers.
As for claim 32, Tachdjian II discloses adding a sufficient amount of the compounds to a food product in order to cause a desirable modulation in the savory flavor of the food product ([0292]-[0294]). Tachdjian II is thus considered to disclose the compound as being present in an amount effective to increase the palatability of the food product, as determined by a panel of taste testers.
As for claim 34, Tachdjian II discloses the food product as comprising a pet food product ([0288]).
As for claims 35-37, the disclosure of Tachdjian II that the food products may be pet food products ([0288]) is adequate to deem the claimed requirements that the product is for felines/canines (claim 35) and is wet (claim 36) or dry (claim 37) obvious, since such types of pet food are extremely commonplace in the art.
As for claim 38, Tachdjian II also discloses adding a sufficient amount of the compounds to a food product in order to cause a desirable modulation in the savory flavor of the food product ([0292]-[0294]). Tachdjian II is thus considered to disclose a method of increasing a kokumi taste intensity of a food product via mixing the flavor composition with the food product with the flavor composition being present in an amount effective to increase a kokumi taste of the food product, as determined by a panel of taste testers.
As for claim 40, the present specification indicates that “kokumi taste is a sensation caused by activation or inhibition of receptor cells in a subject’s taste buds” (p. 13, ¶2). Tachdjian II discloses that “[c]ompounds of the invention modulate an umami receptor” ([0065], [0041], [0046], [0050], [0052]). Though the reference does not explicitly disclose modulating the activity of a calcium-sensing receptor via contacting a CaSR with the flavor composition, the instruction in the reference regarding the modulation of an umami receptor via the consumption of the compound (which would inherently involve contacting any taste receptors with the composition), is considered to render the claimed method obvious.
As for claim 51, Tachdjian II discloses adding a sufficient amount of the compounds to a food product in order to cause a desirable modulation in the savory flavor of the food product ([0137], [0292]-[0294]), including in the range of “at least a savory flavor modulating amount” ([0023]) that may be from 0.001-100 ppm ([0058]). Such instruction renders the claimed range of from about 10 mM to about 1 M obvious (e.g., 10 mM of a compound having the formula C21H23NO and a molecular weight of 305 would be at 3050 ppm, thus falling within the range of at least 100 ppm).
As for claims 52-54, Tachdjian II discloses the compound as being present at a concentration of from about 0.001-100 ppm ([0294]), or 0.0000001-0.01% w/w, which renders the claimed ranges of about 0.0001-10% w/w (claim 52), about 0.001%-5% w/w (claim 53), and about 0.01-1% w/w (claim 54) obvious.
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 29, 31, 32, 34-38, 40, and 51-54 over Tachdjian II: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Tachdjian II discloses too broad of a list of suitable substituents for Formula If (Applicant’s Remarks, p. 6, ¶5 – p. 7, ¶1). Applicant asserted that a practitioner reading Tachdjian II would consult only the examples (Applicant’s Remarks, p. 7, ¶1 – p. 8, ¶1).
As noted in paragraph 20 of the Final Office Action filed 10/16/2025, the disclosure of Tachdjian II encompasses the claimed compound structure, thus rendering the claims obvious. Again, MPEP 2123 II states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” That exemplary compounds may exhibit characteristics that are not shown in the all of the compounds of the broader disclosure does not constitute a teaching against compounds that lack the noted characteristics. Applicant’s assertion that a broad disclosure “would not ‘reasonably lead’ those skilled in the art to any particular species” reduces the broad teaching to effectively being no teaching at all and is consequently unpersuasive. If no particular species may be elucidated from a genus, as Applicant asserts, then the disclosure of the genus would be of no use, which defies logic. A practitioner would at least be able to discern at least one species from a genus taught in a reference.
Applicant further argued that the difference in substituents between the claimed compounds and those in the examples of Tachdjian II would affect “the ability of the compounds to bind to the desired receptors” (Applicant’s Remarks, p. 8, ¶1).
As discussed in paragraph 18 of the Final Office Action, an alleged difference in the receptor that is activated is insufficient to distinguish the claimed compounds from the disclosure of Tachdjian II. Consumption of a food product would presumptively involve contact with any and all compounds in the food product with all taste receptors. Whether a particular compound activated a particular receptor need not be disclosed in the prior art, since the compound would react with any suitable receptors upon consumption regardless of whether such an activity was recognized or not. MPEP 2144 IV (“It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”). Further, Applicant's argument is narrower in scope than the present claims. None of the claims require administration to a feline, which is apparently the only test subject administered the compositions. Applicant's argument is thus unpersuasive.
Applicant then argued that the claimed compounds “modulate the activity of a positive allosteric modulator (PAM)” (Applicant’s Remarks, p. 8, ¶2 – p. 11, ¶1). Applicant asserted that “Presence of a property not possessed by the prior art is evidence of nonobviousness.” (Applicant’s Remarks, p. 11, ¶1). Applicant further argued that Tachdjian II discloses only compounds that modulate a different receptor (Applicant’s Remarks, p. 11, ¶2).
However, MPEP 2145 II states: “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” Applicant has merely recognized properties of the claimed compounds, which consequently is insufficient to render the disclosed compounds nonobvious. MPEP 2112.01 II states: “"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). 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.” Applicant has not produced compounds that have properties that are not present in identical compounds that are effectively disclosed in the prior art, which undermines Applicant’s arguments.
The rejections of claims 29, 31, 32, 34-38, 40, and 51-54 have been maintained herein.
Conclusion
Claims 29, 31, 32, 34-38, 40, and 51-54 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793