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, 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/15/2026 has been entered.
Application Status
Amended claim 16, 17, 19-26, 28-33 and new claim 34-39 are under examination.
Claim 1-15, 18 and 27 are cancelled.
Claim 16, 17, 19-26 and 28-39 are rejected.
Withdrawn Rejections
The 35 U.S.C. 102(a)(1) over claim(s) 16, 19-25 and 28-33 as being anticipated by Rivera et al. (US 2010/0196577 A1) have been withdrawn in light of Applicant’s amendments to recite “…unencapsulated polymethoxyflavones” in independent claims 16 and 25.
The 35 U.S.C. 103 rejection over claim(s) 17 and 26 as being unpatentable over Rivera et al. (US 2010/0196577 A1) have been withdrawn in light of Applicant’s amendments.
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.
Applicants have amended to recite new limitation of “…unencapsulated polymethoxyflavones” in claim 16 and 25, however the new 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 new limitation is new matter. Applicant is required to remove new matter in response to this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16, 17, 19-26 and 28-39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “a perceived lack of a mouthfeel” in claim 16 is a relative term which renders the claim indefinite. The term “perceived lack of a mouthfeel” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “a bitter taste” in claim 25 is a relative term which renders the claim indefinite. The term “a bitter taste” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 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’s arguments with respect to claim(s) 16, 17, 19-26 and 28-39 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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/HONG T YOO/Primary Examiner, Art Unit 1792