DETAILED ACTION
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 January 14, 2026 has been entered. Claims 5, 6, 17, 18 and 21-24 are pending examination. Claims 1-3, 7, 8 and 16 were previously withdrawn.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.
Claims 5, 6, 17, 18 and 21-24 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.
Claim 5 has been amended to recite “at least an aqueous or powdered extract from thermally processed lettuce (Latuca sativa), comprising 2-acetyl-1-pyrroline, wherein the extract does not comprise 3-Methyl-2(5H)-furanone.”
Any 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 (MPEP §2173.05(i)).
3-Methyl-2(5H)-furanone is not recited in the original disclose. There is no support to exclude 3-Methyl-2(5H)-furanone as component of the claimed extract from thermally processed lettuce ( (Latuca sativa).
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.
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 5, 6 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Apintanapong et al. ( “The use of spray drying to microencapsulate 2-acetyl-1-pyrroline, a major flavour component of aromatic rice”, International Journal of Food Science and Technology, 38, (2003), pp. 95-102).
Regarding claims 5, 18, 19, 23 and 24, Apintanapong et al. disclose a microencapsulate comprising 2-acetyl-1-pyrroline isolated from pandan leaves (Pandanus amaryllifolius)(i.e., an extract) and encapsulated with gum acacia and maltodextrins (i.e., flavor carriers)(p. 95/Summary, p. 95-98/Materials and methods).
While Apintanapong et al. disclose 2-acetyl-1-pyrroline isolated from pandan leaves and not stalk lettuce or thermally processed lettuce, the patentability of the claimed 2-acetyl-1-pyrroline flavor composition does not depend on it method of production (i.e., extracted from lettuce). If the product in a product-by-process claim is the same as or obvious from a production of the prior art, the claim is unpatentable even though the prior product was made by a different process (i.e., obtained from a different source). MPEP §2113 I. Here, the flavoring composition of claim 1 only requires 2-acetyl-1-pyrroline and a flavor carrier.
Apintanapong et al. disclose the 2-acetyl-1-pyrroline was extracted from pandan leaves (Pandanus amaryllifolius) by steam distillation including steps of: (a) blending fresh pandan leaves and mixing with distilled water; (b) placing the mixture in a boiling flask; (c) placing the boiling flask in a steam distillation extraction to obtain a water fraction comprising 2-acetyl-1-pyrroline (i.e., aqueous extract – p. 96-97/Materials and methods/Preparation of ACPY).
Apintanapong et al. does not disclose precursors of 2-acetyl-1-pyrroline or wherein the extract of 2-acetyl-1-pyrroline comprises 3-Methyl-2(5H)-furanone.
Regarding claims 6 and 20, Apintanapong et al. disclose rice comprising 2-acetyl-1-pyrroline (p. 96/Introduction – adding 2-acetyl-1-pyrroline to rice based on the intensity of flavor desired).
Apintanapong et al. disclose the 2-acetyl-1-pyrroline was extracted from pandan leaves (Pandanus amaryllifolius) by steam distillation including steps of: (a) blending fresh pandan leaves and mixing with distilled water; (b) placing the mixture in a boiling flask; (c) placing the boiling flask in a steam distillation extraction to obtain a water fraction comprising 2-acetyl-1-pyrroline (i.e., aqueous extract – p. 96-97/Materials and methods/Preparation of ACPY).
While Apintanapong et al. disclose 2-acetyl-1-pyrroline isolated from pandan leaves and not lettuce or thermally processed lettuce, the patentability of the claimed 2-acetyl-1-pyrroline flavor composition does not depend on it method of production (i.e., extracted from lettuce). If the product in a product-by-process claim is the same as or obvious from a production of the prior art, the claim is unpatentable even though the prior product was made by a different process (i.e., obtained from a different source). MPEP §2113 I. Here, the flavoring composition of claim 1 only requires 2-acetyl-1-pyrroline and a flavor carrier.
Regarding claim 17, Apintanapong et al. disclose all of the claim limitations as set forth above. Apintanapong et al. disclose rice comprising the microencapsulate (p. 96/Introduction – adding 2-acetyl-1-pyrroline to rice based on the intensity of flavor desired).
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Apintanapong et al. ( “The use of spray drying to microencapsulate 2-acetyl-1-pyrroline, a major flavour component of aromatic rice”, International Journal of Food Science and Technology, 38, (2003), pp. 95-102) as applied to claims 5 and 6, and further in view of Hinge et al. (“Aroma volatile analyses and 2AP characterization at various developmental stages in Basmati and Non-Basmati scented rice (Oryza sativa L.) cultivars” , Rice, Vol. 9, article number 38, (2016), pp. 1-22).
Regarding claims 21 and 22, Apintanapong et al. disclose all of the claim limitations as set forth above. While Apintanapong et al. disclose a microencapsulate comprising 2-acetyl-1-pyrroline isolated from pandan leaves (Pandanus amaryllifolius) and encapsulated with gum acacia and maltodextrins (i.e., flavor carriers)(p. 95/Summary, p. 95-98/Materials and methods), the reference does not disclose the microencapsulate comprises benzaldehyde, octanal, 2-acetylpyrrole, and/or nonanal. Apintanapong et al. disclose the microencapsulate can be used to flavor rice (p. 96/Introduction – adding 2-acetyl-1-pyrroline to rice based on the intensity of flavor desired).
Hinge et al. disclose the aroma of rice is mainly equated to 2-acetyl-1-pyrroline (Abstract). Hinge et al. also disclose additional volatile compounds that contribute to the aroma of rice including nonanal (p. 4/Table 1/7. Aliphatic Aldehyde),, octanal (p. 4/Table 1/7. Aliphatic Aldehyde) and benzaldehyde (p. 4/Table 1/8. Aromatic aldehyde).
Apintanapong et al. and Hinge et al. are combinable because they are concerned with the same field of endeavor, namely rice flavor. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present application to have added nonanal, octanal and/or benzaldehyde to the 2-acetyl-1-pyrroline microencapsulate of Apintanapong et al. to enhance its rice flavor profile and ability to flavor rice.
Response to Amendment
The Declaration under 37 CFR 1.132 filed January 14, 2026 is insufficient to overcome the rejection of claims 5, 6, 17, 18 and 21-24 based upon Apintanapong et al. under 35 U.S.C. 103 as set forth in the last Office action.
Declarant states the Supplementary Data document demonstrates that lettuce extract and pandan extract are compositionally and organoleptically distinct (paragraph 4). Declarant states the present claims produce unexpected results in terms of both product stability and sensory performance (paragraph 5).
There is no information regarding lettuce extract in the Supplementary Data document, i.e., Laokakunjit et al. Laokakunjit et al. is directed to the supercritical carbon dioxide extraction of 2-acetyl-1-pyrroline and volatile components from pandan leaves. Laokakunjit et al. disclose the main fragrant component of pandan leaves is 2-acetyl-1-pyrroline (p. 256/second column).
Laokakunjit et al. is silent with respect to lettuce. Nowhere has Declarant provided any evidence comparing the flavor profile (i.e., sensory performance) and storage stability of the claimed lettuce extract to the 2-acetyl-1-pyrroline extract of Apintanapong et al.
Declarant states that “[n]either the Apintanapong reference nor the Hinge reference disclose or suggest all the elements of the present claims, including that the extract does not include 3-Methyl-2(5H)-furanone (paragraph 8).
There is no evidence on the record demonstrating the extracted 2-acetyl-1-pyrroline of Apintanapong et al. comprises 3-Methyl-2(5H)-furanone. Laokakunjit et al. only teaches 3-Methyl-2(5H)-furanone is one of the volatile components of pandan leaves (p. 253/Table 1).
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive.
Applicant notes “Claims 1 and 5-8 have been each amended to recite that the extract does not comprises 3-Methyl-2(5H)-furanone.”
Applicant is directed to the rejection under 35 U.S.C. 112(a) set forth above.
Applicant submits the inventor declaration under 37 CFR 1.132 and the corresponding Supplementary Data document show that lettuce extract and pandan extract are “compositionally and organoleptically distinct.” Specifically, Applicant finds that the Laohakunjit et al. reference shows that 3-Methyl-2(5H)-furanone is the predominant compound found in pandan and that the absence of pandan-characteristic compounds in the lettuce extract is reflected in the sensory profiles.
While extracts from pandan leaf are known to comprise 3-Methyl-2(5H)-furanone, Applicant has not demonstrated that the extract of 2-acetyl-1-pyrroline of Apintanapong et al. would necessarily comprise 3-Methyl-2(5H)-furanone. Apintanapong et al. seeks to extract only 2-acetyl-1-pyrroline. Moreover, Laohakunjit et al. only shows that an extract from pandan leaves comprises 3-Methyl-2(5H)-furanone. The reference does not demonstrate that an extract from lettuce would be free of 3-Methyl-2(5H)-furanone.
Applicant submits the present claims recites an “aqueous or powdered extract” rather than the microencapsulated extract of Apintanapong et al. Applicant asserts “powdered extract is not microencapsulated.”
Apintanapong et al. disclose a process of encapsulating 2-acetyl-1-pyrroline by combining 2-acetyl-1-pyrroline with a gum solution of gum acacia and maltodextrin and spray drying (p. 98/Encapsulation of ACPY). Here a spray-dried encapsulated volatile flavorant, i.e., 2-acetyl-1-pyrroline, is considered a powder. Note, Apintanapong et al. disclose the encapsulated flavor has a moisture content after spray drying ranging from 2.30-3.8% by weight (p. 101/Table 2). Moreover, there is nothing in the claims that exclude encapsulated forms of 2-acetyl-1-pyrroline.
Applicant discloses “the present claims produce unexpected results in terms of both product stability and sensory performance.”
See Response to Amendment set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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