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 filed 01/20/2026 and the Request for Continued Examination (RCE under 37 CFR 1.114) filed 03/10/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the 35 U.S.C. 112(b) rejection of claim 24 has been withdrawn; and (2) the 35 U.S.C. 103 rejections of claims 18 and 25 over Postrel have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 16 and 18-25
Withdrawn claims: None
Previously canceled claims: 1-15 and 17
Newly canceled claims: 18 and 25
Amended claims: 16, 19, and 24
New claims: 26-29
Claims currently under consideration: 16, 19-24, and 26-29
Currently rejected claims: 16, 19-24, and 26-29
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 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 16, 19-24, and 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Postrel (U.S. 2019/0062738 A1).
Regarding claim 16, Postrel discloses a food product comprising a composition (claim 69; [0006] “administering to an individual”; [0037], “use by humans”; [0038]-[0040], where components are used as food/dietary supplements) comprising the oligopeptide Asp-Val-Glu (claim 69, “DVE”).
Postrel does not explicitly disclose the composition as being a flavor composition or that the oligopeptide binds to a feline calcium-sensing receptor (CaSR) to impart a kokumi taste to a cat. However, MPEP 2112.01 II states: “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.” The peptide in Postrel has an identical chemical structure as presently claimed, and the oligopeptide would thus inherently constitute a flavor composition and bind to a feline calcium-sensing receptor (CaSR) to impart a kokumi taste to a cat.
Postrel also does not explicitly disclose the flavor composition as being present at a concentration of from about 0.0001-10% w/w.
However, Postrel discloses the composition as comprising a “therapeutically effective amount of an agent” ([0022]), which suggests at least a minimum concentration of the composition is present in the combined mixture, with no limit on the maximum concentration beyond the required presence of some amount of the antioxidant in claim 69. Such instruction is considered to render obvious concentrations of the oligopeptide ranging from greater than 0% to an amount approaching 100%, which renders the claimed concentration of from about 0.0001-10% w/w obvious.
Further, MPEP 2144.05 II states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” No such evidence of criticality is apparent for the claimed food product, especially where the claimed food product is merely required to comprise a flavor composition comprising the oligopeptide and the only concentration requirement is for the flavor composition, such that the oligopeptide may be at any concentration within the flavor composition.
As for claim 19, Postrel discloses that the subject may be “a live animal” ([0025]) such that producing a pet food product would be obvious.
As for claim 20, Postrel discloses that the subject may be “a live animal” ([0025]), which renders any type of animal obvious, such that formulating the food product as a feline pet food product would be obvious.
As for claims 21 and 22, Postrel discloses that subject may be “a live animal” ([0025]), which is considered to render any type of pet food obvious, including wet pet food (claim 21) and dry pet food (claim 22).
As for claim 23, MPEP 2113 I states: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” The claimed product is the same as that of Postrel, such that the claimed method of producing the flavor composition does not patentably distinguish the claimed product from that of the prior art. The claimed flavor composition is thus rendered obvious by Postrel.
As for claim 24, Postrel discloses a food product comprising a composition (claim 69; [0006] “administering to an individual”; [0037], “use by humans”; [0038]-[0040], where components are used as food/dietary supplements) comprising the oligopeptide Asp-Val-Glu (claim 69, “DVE”), and thus implicitly discloses mixing a food product, such as an antioxidant ([0046]), and the flavor composition.
Postrel does not explicitly disclose the flavor composition as being present at a concentration of from about 0.0001-10% w/w.
However, Postrel discloses the composition as comprising a “therapeutically effective amount of an agent” ([0022]), which suggests at least a minimum concentration of the composition is present in the combined mixture, with no limit on the maximum concentration beyond the required presence of some amount of the antioxidant in claim 69. Such instruction is considered to render obvious concentrations of the oligopeptide ranging from greater than 0% to an amount approaching 100%, which renders the claimed concentration of from about 0.0001-10% w/w obvious.
Further, MPEP 2144.05 II states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” No such evidence of criticality is apparent for the food product produce according to the claimed method, especially where the food product is merely required to comprise a flavor composition comprising the oligopeptide and the only concentration requirement is for the flavor composition, such that the oligopeptide may be at any concentration within the flavor composition.
As for claims 26 and 27, the rationale detailed previously in relation to claim 16 established that any concentration of the oligopeptide ranging from greater than 0% to an amount approaching 100% would be obvious, which renders the claimed concentrations of from about 0.001-5% w/w (claim 26) and from about 0.001-1% w/w (claim 27) obvious.
As for claims 28 and 29, the rationale detailed previously in relation to claim 24 established that any concentration of the oligopeptide ranging from greater than 0% to an amount approaching 100% would be obvious, which renders the claimed concentrations of from about 0.001-5% w/w (claim 28) and from about 0.001-1% w/w (claim 29) obvious.
Response to Arguments
Claim Rejections - 35 U.S.C. § 112: Applicant has overcome the 35 U.S.C. § 112(b) rejection of claim 24 based on amendment to the claim. Accordingly, the 35 U.S.C. § 112(b) rejection has been withdrawn.
Claim Rejections - 35 U.S.C. § 103 of claims 16 and 18-25 over Postrel: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first cited MPEP § 2144.05 in asserting that the breadth of the disclosure of Postrel should not be considered adequately instructive to deem the claimed ranges obvious (Applicant’s Remarks, p. 4, ¶6 – p. 7, ¶1). Applicant alleged that the breadth of disclosure amounted to the disclosure of “millions of ranges”, which would be insufficient to render the claimed ranges obvious (Applicant’s Remarks, p. 7, ¶2).
While Examiner appreciates the basis for Applicant’s argument, the genus/species framework applied to chemical compounds is not applicable to the present analysis. The disclosure of Postrel is not “so broad as to encompass a very large number of possible distinct compositions”; the analysis applies merely to range of concentrations for a single component within a broader mixture. Virtually any range may be deemed to disclose “millions of ranges” if the ranges are short enough (except for a relatively small range of integers). The narrowest claimed range of about 0.001-1% w/w may be said to encompass “millions of ranges”, at least to the point that the difference in the number of molecules between the low point and the high point of a range would preclude further narrowing of the range. The claimed ranges do not approach such a limitation. Applicant’s argument attempting to apply the genus/species framework to the analysis for the claimed concentration range is thus unpersuasive due to the framework not being appropriate for the present analysis.
Applicant continued by arguing that the disclosed “therapeutically effective amount” was too vague to support the present claim rejections, asserting that numerous factors would need to be accounted for in determining such an amount (Applicant’s Remarks, p. 5, ¶2). Applicant asserted that “virtually countless” experiments would have to be performed in order to arrive at a “therapeutically effective amount” (Applicant’s Remarks, p. 5, ¶3).
However, Postrel details the method by which a “therapeutically effective amount”, among other factors, may be determined ([0035] – [0036](c)). A skilled practitioner would readily recognize that if the intended experimental effects were not achieved, then an increased concentration may be utilized. In such an approach, there is no concentration of the active substance that would be considered non-obvious, particularly where the concentration of the active substance within the administered composition may be modulated via varying the amount of composition that is actually administered. Examiner thus maintains that the disclosure of Postrel is adequate to deem the claimed concentration ranges obvious and is not too broad or insufficiently enabled to support the claim rejections.
Applicant further argued that the claim rejections have not provided a sufficient evidentiary basis as to why a practitioner “would have made the particular selections and modifications that would be required to arrive at the ranges recited in the pending claims” (Applicant’s Remarks, p. 5, ¶3).
However, a practitioner would not need to determine “the ranges recited in the pending claims”; producing a composition according to Postrel or the present claims requires merely the selection of a single concentration to produce an embodiment of the food product. Examiner maintains that the disclosure of Postrel is adequate to deem the claimed ranges obvious—i.e., the selection of a single concentration of an oligopeptide that falls within the claimed ranges.
Applicant’s arguments are unpersuasive.
The rejections of claims 16 and 18-25 have been maintained herein.
Conclusion
Claims 16, 19-24, and 26-29 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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