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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on December 15, 2025 has been entered.
Claims 19-28 are new. Claim 17 has been cancelled. Claims 15 and 18-28 are pending.
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 23-28 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.
New claims 23-28 are directed to a method of increasing the binding of T1R taste receptor to a sweetener of a consumable product. The present disclosure does not reference the T1R taste receptor or the binding of a receptor to a sweetener.
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.
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 15 and 18-28 are rejected under 35 U.S.C. 103 as being unpatentable over Washino et al. (EP 0605261 A2).
Regarding claims 15 and 18-22, Washino et al. teach polymethoxyflavones of formula (I) (shown below) as taste modifiers that affect the sweetness of sugars (e.g., sucrose and glucose), as well as high intensity sweeteners, by inhibiting the unpleasant taste of the sweeteners (p. 3 lines 31-34). This is considered to “enhance” the sweetness of the consumable product in which the compound (and sweetener) are included. The compounds 2, 5, 6, and 7 taught by Washino et al. include tetramethoxyflavones and hexamethoxyflavones (p. 8 Table 1).
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Washino et al. do not teach the specifically claimed compounds. However, the generic compound of Washino et al. is taught to have R2 and R7 as methoxy, R5 as methoxy or hydroxy, and R1, R3, R4, R6 and R8 as methoxy or hydrogen (p. 3 lines 10-14). The claimed TMS has R2, R5, R6 and R7 as methoxy, and R1, R3, R4, and R8 as hydrogen. The claimed hexamethoxyquercetogetin has R2, R3, R4, R5, R6 and R7 as methoxy, and R1 and R8 as hydrogen. Therefore, where the generic structure of Washino et al. allows for the claimed compounds, and where Washino et al. teach the addition of the polymethoxyflavones to compositions comprising sweeteners in order to improve/enhance the sweetness of the compounds, it would have been obvious to have added compounds as claimed to consumable products comprising sweeteners in order to convey, enhance or improve the sweetness of the consumable product. This would have required no more than routine experimentation and would have been expected to provide the predictable result of a composition having an improved/enhanced sweetness where polymethoxyflavones are known in the art to be included in consumable products to improve flavors.
Further, Washino et al. allow for combinations of the polymethoxyflavones to be added to consumable compositions (e.g., claim 6). Additionally, "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). Therefore, it would have been obvious to have combined the compounds as claimed for addition to consumables in order to affect the sweetness of the consumable composition.
Washino et al. is silent with respect to the ratio of tetra-O-methylscutellarein to hexamethyoxyquercetogetin. However, where the prior art suggests combinations of polymethoxyflavones to be included in consumable compositions for the improvement/enhancement of sweetness, it would have been obvious to have included the compounds in a ratio as claimed through no more than routine experimentation and with the reasonable expectation that the sweetness of the resultant composition would be improved.
Regarding claims 23-28, Washino et al. teach polymethoxyflavones of formula (I) (shown below) as taste modifiers that affect the sweetness of sugars (e.g., sucrose and glucose), as well as high intensity sweeteners, by inhibiting the unpleasant taste of the sweeteners (p. 3 lines 31-34). This is considered to “enhance” the sweetness of the consumable product in which the compound (and sweetener) are included. The compounds 2, 5, 6, and 7 taught by Washino et al. include tetramethoxyflavones and hexamethoxyflavones (p. 8 Table 1).
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Washino et al. do not teach the specifically claimed compounds. However, the generic compound of Washino et al. is taught to have R2 and R7 as methoxy, R5 as methoxy or hydroxy, and R1, R3, R4, R6 and R8 as methoxy or hydrogen (p. 3 lines 10-14). The claimed TMS has R2, R5, R6 and R7 as methoxy, and R1, R3, R4, and R8 as hydrogen. The claimed hexamethoxyquercetogetin has R2, R3, R4, R5, R6 and R7 as methoxy, and R1 and R8 as hydrogen. Therefore, where the generic structure of Washino et al. allows for the claimed compounds, and where Washino et al. teach the addition of the polymethoxyflavones to compositions comprising sweeteners in order to improve/enhance the sweetness of the compounds, it would have been obvious to have added compounds as claimed to consumable products comprising sweeteners in order to convey, enhance or improve the sweetness of the consumable product. This would have required no more than routine experimentation and would have been expected to provide the predictable result of a composition having an improved/enhanced sweetness where polymethoxyflavones are known in the art to be included in consumable products to improve flavors.
Washino et al. is silent with respect to increasing the binding of a T1R receptor to a sweetener in the consumable product. However, given Washino et al. teach the claimed compounds added to consumable products comprising sweeteners, it would therefore be expected that binding of the T1R receptor to the sweeteners in the consumable product of Washino et al. would be increased.
Further, Washino et al. allow for combinations of the polymethoxyflavones to be added to consumable compositions (e.g., claim 6). Additionally, "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). Therefore, it would have been obvious to have combined the compounds as claimed for addition to consumables in order to affect the sweetness of the consumable composition.
Washino et al. is silent with respect to the ratio of tetra-O-methylscutellarein to hexamethyoxyquercetogetin. However, where the prior art suggests combinations of polymethoxyflavones to be included in consumable compositions for the improvement/enhancement of sweetness, it would have been obvious to have included the compounds in a ratio as claimed through no more than routine experimentation and with the reasonable expectation that the sweetness of the resultant composition would be improved.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer
Claims 15 and 18-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-33 of copending Application No. 17/277,827 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are to method of adding polymethoxyflavones, which include the instantly claimed tetra-O-methylscutellarein and hexamethoxyquercetogetin, to consumable products. The copending claims additionally recited the consumable products comprise a sweetener. Therefore, while the claimed effects of the polymethoxyflavones are different (i.e., enhancing sweetness or increasing the binding of the T1R taste receptor to a sweetener vs. enhancing mouthfeel or reducing (enhancing?) bitter taste), by the fact that instant claims require only the step of adding the compound(s), one of ordinary skill carrying out the copending method would arrive at the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed December 15, 2025 have been fully considered but they are not persuasive.
Applicant submits claim 15 has been amended to recite a ratio range that does not include a 1:1 ratio. Applicant argues “Washino does not discuss composition including two compounds covered by its generic formula (I) in any specific ratios.”
Where the prior art suggests combinations of polymethoxyflavones to be included in consumable compositions for the improvement/enhancement of sweetness, it would have been obvious to have included the compounds in a ratio as claimed through no more than routine experimentation and with the reasonable expectation that the sweetness of the resultant composition would be improved.
Regarding claim 23, Applicants submit Washino et al. does not discuss the binding of T1R taste receptor to a sweetener.
Note, the rejection of claims 23-28 under 35 U.S.C. 112 (a) as failing to comply with the written description requirement. The present specification does not discuss the T1R taste receptor or the binding of the receptor to sweeteners.
Here Washino et al. disclose adding the combination of the claimed polymethoxyflavones to consumable compositions, it is expected that binding of sweeteners in the consumable compositions to the T1R receptor would be increased. There is no evidence on the record demonstrating the unexpected properties of the particularly claimed polymethyoxyflavones on T1R receptor binding of sweeteners.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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