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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 12/15/2025 has been entered.
Claim status
The examiner acknowledges the amendment made to claims on 11/17/2025.
Claims 1-10, 12-30, 32-34 and 36-37 are pending in the application. Claims 6 and 36-37 currently amended. Claim 10 is previously presented. Claims 11, 31 and 35 are previously cancelled. Claims 36-37 are newly presented. Claims 1-5, 7-9, 12-30 and 32-34 are withdrawn with traverse in response to the restriction/election requirement. Claims 6, 10 and 36-37 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi US Patent Application Publication No. 2013/0096209 A1 (hereinafter referred to as Hayashi).
Regarding claims 6 and 10, Hayashi teaches a method of reducing bitter taste in a food product, the method comprising adding a compound such as β-caryophyllene oxide (see 0875 compound 121) to the food product (Abstract; 0928; 0875; 0010; 0017; 0928); additionally, Hayashi teaches that the food product is a cheese, yogurt or butter (0507), each of which necessarily contains butterfat. Furthermore, Hayashi teaches that the compound is added to the food product at an amount of 0.001-1000 ppm, or narrowly 0.1- 5 ppm, or even narrowly 0.1-1 ppm (0891). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, Hayashi teaches that the compound is directly mixed with the food product, or co-crystallized with a salt to add to the food (0933). Given that β-caryophyllene oxide is present in a solid form at room temperature (the melting point of β-caryophyllene oxide is above 60 °C), the limitation of adding β-caryophyllene oxide in a solid form would have been obvious.
The preamble language about “for enhancing a mouth-coating feel” as in claim 6 recites the purposes of the claim, and the recited purpose do not result in a manipulative difference between the claims and prior art because the actual steps recited in Hayashi and the instant claim are the same and will necessarily provide the purposes in the preambles of claim 6. Further, Hayashi discloses that the compound is able to reduce bitter taste of the food product.
Therefore, Hayashi renders obvious claims 6 and 10.
Claims 6, 10 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Balentine US Patent Application Publication No. 2014/0272080 A1 (hereinafter referred to as Balentine) in view of Hayashi US Patent Application Publication No. 2013/0096209 A1 (hereinafter referred to as Hayashi).
Regarding claims 6, 10 and 36-37, Balentine teaches a food which is a margarine or spread, and the margarine or spread is made from a combination of rape seed oil (e.g., canola oil), sunflower oil and soybean oil (0007).
Balentine is silent regarding adding 0.01-1 ppm to the margarine or spread so as to enhance a mouth-coating feel of the margarine or spread.
Hayashi teaches a method of reducing a bitter taste in a food product comprising adding a compound such as β-caryophyllene oxide (see 0875 compound 121) to the food product (Abstract; 0928; 0875; 0010; 0017; 0928); additionally, Hayashi teaches that the food product can be a margarine or spread, (0507). Furthermore, Hayashi teaches that the compound is added to the food product at an amount of 0.001-1000 ppm, or narrowly 0.1- 5 ppm, or even narrowly 0.1-1 ppm (0891).
Both Balentine and Hayashi are directed to margarines or spreads. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Balentine by adding 0.001-1000 ppm, or narrowly 0.1- 5 ppm, or even narrowly 0.1-1 ppm β-caryophyllene oxide to the margarine or the spread so as to reduce a bitter taste. The amount of β-caryophyllene oxide as disclosed by Hayashi encompasses the range as recited in claim 6. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, Hayashi teaches that the compound is directly mixed with the food product, or co-crystallized with a salt to add to the food (0933). Given that β-caryophyllene oxide is present in a solid form at room temperature (the melting point of β-caryophyllene oxide is above 60 °C), the limitation of adding β-caryophyllene oxide in a solid form would have been obvious.
The preamble language about “for enhancing a mouth-coating feel” as in claim 6 recites the purposes of the claim, and the recited purpose do not result in a manipulative difference between the claim and prior art because the actual steps recited in Balentine as modified by Hayashi and the instant claim are the same and will necessarily provide the purposes in the preambles of claim 6.
Response to Arguments
Applicant’s arguments on 11/17/2025 with respect to pending claims have been considered but are moot over a new ground of rejection by Hayashi, or by Balentine in view of Hayashi.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791