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 .
Application Status
Claim 16-17, 19-26, and 28-39 are under examination.
Claim 1-15, 18 and 27 are cancelled.
Claim 16-17, 19-26 and 28-29 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/14/2026 was filed after the mailing date of the Non-Final Rejection on 01/27/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejection
The 112 second paragraph rejection set forth in previous office action has been withdrawn.
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.
Claim 16-17, 19-26, and 28-39 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.
The 112, first paragraph rejection of new matter of recitation of “…unencapsulated polymethoxyflavones” in claim 16 and 25 is maintained. The limitation is not supported in the specification as originally filed. Applicant notes the support found in the specification, page 20, lines 7-15 and Example 1. The Examiner disagrees. While contrary for support of the new limitation “…unencapsulated polymethoxyflavones”, the specification as filed on page 20, line 9-15, are directed flavorings are encapsulated; there is no mention of the polymethoxyflavones as unencapsulated. Additionally, the specification as filed page 18, line 16-33 to page 19, line 1-34, pg. 20, line 1-4, and Example 1, do not support the polymethoxyflavones as unencapsulated; hence the limitation is new matter.
In response to Applicant’s remarks, pg. 6-5; the recitation of “…unencapsulated…” is in other words considered as negative limitation wherein the instant specification as filed on page 20, line 9-15, are directed flavorings are encapsulated. The instant specification does not disclose alternative elements, for example “encapsulated or unencapsulated” but rather the instant claim discloses as filed on page 20, line 9-15, are directed flavorings are encapsulated.
See MPEP 2173.05 (i), [a]ny negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). In describing alternative features, the applicant need not articulate advantages or disadvantages of each feature in order to later exclude the alternative features. See Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356-57, 116 USPQ2d 2006, 2010-11 (Fed. Cir. 2015). The mere absence of a positive recitation is not basis for an exclusion….Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
Applicant is required to remove new matter in response to this office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 16, 19-20, 22-25, 28-29 and 31-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Green (US 20150125557 A1, Applicant’s IDS submitted on 01/15/2026).
Regarding claim 16, 24, 25, and 34-37, with respect to when reading the preamble in the context of the entire claim, the limitation “[a] method of enhancing mouthfeel of a flavored product” recited in claim 16, and “[a] method of reducing a bitter taste of a flavored product” in claim 25, are not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Green discloses a method of adding, incorporating a crystalline powder of Ortanique peel polymethoxylated flavones extract (unencapsulated polymethoxyflavones) (‘557, [0006]) into food (‘557, [0007], [0024], [0048], [0073]-[0076]) in an effective amount (‘557, [0082]). Green disclose the polymethoxylated flavones extract (unencapsulated polymethoxyflavones) comprising sinensetin, tangeratin, tetramethylscutellarein and hexamethyl-o-quercetagetin (‘557, [0039]).
With respect to the limitations of “…and wherein the one or more polymethoxyflavones enhances the mouthfeel of the flavored product…” as recited in claim 16; and “…wherein the one or more polymethoxyflavones reduce the bitter taste of the flavored product…” as recited in claim 25; Green uses like materials, polymethoxylated flavones extract (unencapsulated polymethoxyflavones) comprising sinensetin, tangeratin, tetramethylscutellarein and hexamethyl-o-quercetagetin (‘557, [0039]) in a like manner in effective amounts in the food as claimed; it would therefore be expected that Green’s food will have the same characteristics claimed, “enhances the mouthfeel of the flavored product” in claim 16; and “reduces the bitter taste of the flavored product …”, absent a showing of unexpected results.
Regarding claim 19, 20, 24, 28, 29 and 33, Green discloses the food (flavored product) includes fruit juices and sodas (‘557, [0076]). Fruit juices is well known to contain fructose (sweetener).
Regarding claim 22. 23, 31 and 32, Green discloses the food (flavored product) containing the Ortanique peel polymethoxylated flavones extract including heptamethoxyflavone (sweetness enhancer/flavone).
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 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.
Claim(s) 17, 21, 26, 30, 38 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Green (US 20150125557 A1).
Regarding claim 17, 26, 38 and 39, Green discloses the claimed invention as discussed above. Green disclose the polymethoxylated flavones extract (unencapsulated polymethoxyflavones) comprising the tetramethylscutellarein and the hexamethyl-o-quercetagetin (‘557, [0039]). Green does not explicitly disclose the effective amount in a concentration as cited in claim 17, 26, 38 and 39, however it would have been obvious to one of ordinary skill in the art to adjust amounts of the polymethoxylated flavones extract (unencapsulated polymethoxyflavones) in the food (flavored product) including the cited amounts to achieve a desired therapeutic effect (‘557, [0082]), absent a clear and convincing argument or evidence to the contrary.
Regarding claim 21 and 30, Green discloses the food (flavored product) includes the fruit juices and sodas (‘557, [0076]), wherein the fruit juices contains natural sweetener, fructose. Green is silent on the sweetener is aspartame. However it is well known in the food art, aspartame is known to provide sweetness to beverages such as fruit juices without added calories. It would have been obvious to one of ordinary skill in the art to be motivate to use well-known commercially available sweetener, aspartame in Green’s fruit juices to promote sweetness without additional calories from sweeteners for a desired customer market.
Response to Arguments
Applicant asserts “…Green does not disclose "introducing one or more unencapsulated polymethoxyflavones to a flavored product having a perceived lack of a mouthfeel" or "introducing one or more unencapsulated polymethoxyflavones to a flavored product having a bitter taste" as recited by Claims 16 and 25, respectively…”.
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive. Green clearly discloses the method of adding, incorporating (introducing) a crystalline powder of Ortanique peel polymethoxylated flavones extract (unencapsulated polymethoxyflavones) (‘557, [0006]) into food (‘557, [0007], [0024], [0048], [0073]-[0076]) in an effective amount (‘557, [0082]). With respect to the limitations of “…and wherein the one or more polymethoxyflavones enhances the mouthfeel of the flavored product…” as recited in claim 16; and “…wherein the one or more polymethoxyflavones reduce the bitter taste of the flavored product…” as recited in claim 25; Green uses like materials, polymethoxylated flavones extract (unencapsulated polymethoxyflavones) comprising sinensetin, tangeratin, tetramethylscutellarein and hexamethyl-o-quercetagetin (‘557, [0039]) in a like manner in effective amounts in the food as claimed; it would therefore be expected that Green’s food will have the same characteristics claimed, “enhances the mouthfeel of the flavored product” in claim 16; and “reduces the bitter taste of the flavored product …”, absent a showing of unexpected results.
Applicant asserts “ …Green does not anticipate the recited hexamethoxyquercetogetin of the instant Claims 35 and 37. Therefore, Claims 35 and 37 are not anticipated by Green for this additional reason…”.
Applicant is not are not persuasive. Green clearly teaches hexameth-o-quercetogetin of the instant Claims 35 and 37, see inserted [0039] herein
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In response to Applicant’s remarks to “effective amounts” the instant claim 16, 19-25, and 28-37, Green discloses the method of adding, incorporating (introducing) the Ortanique peel polymethoxylated flavones extract (unencapsulated polymethoxyflavones) (‘557, [0006]) into food (‘557, [0007], [0024], [0048], [0073]-[0076]) in an effective amount (‘557, [0082]). However, Green does not explicitly disclose the effective amount in a concentration as cited in claim 17, 26, 38 and 39, however it would have been obvious to one of ordinary skill in the art to adjust amounts of the polymethoxylated flavones extract (unencapsulated polymethoxyflavones) in the food (flavored product) including the cited amounts to achieve a desired therapeutic effect (‘557, [0082]), absent a clear and convincing argument or evidence to the contrary. Green clearly discloses the method of adding, incorporating (introducing) a crystalline powder of Ortanique peel polymethoxylated flavones extract (unencapsulated polymethoxyflavones) (‘557, [0006]) into food (‘557, [0007], [0024], [0048], [0073]-[0076]).
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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ERIK KASHNIKOW can be reached at (571)270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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