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 .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 09/08/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: the objection to claim 11 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 9-18, 20-24
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: 1-8, 19
Amended claims: 11
New claims: 20-24
Claims currently under consideration: 9-18, 20-24
Currently rejected claims: 9-18, 20-21, 23-24
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/08/2026 has been entered.
Claim Rejections - 35 USC § 112
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 21 and 23-24 are rejected under 35 U.S.C. 112(b) 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.
Claim 21 recites the limitation "R7". There is insufficient antecedent basis for this limitation in the claim.
For the purpose of this examination, the claim will be interpreted as depending from claim 20 instead of claim 9.
Claim 23 recites that R7 is one of “methyl, ethyl, n-propyl, isopropyl, n-butyl, sec-butyl, isobutyl, or tert-butyl”. However, claim 21, from which claim 23 depends, recites that R7 is isobutyl. Therefore, claim 23 is broader in scope than claim 21 so that it is unclear as to what is required by claim 23. Therefore, the claim is indefinite.
For the purpose of this examination claim 23 will be considered to depend from claim 22.
Claim Rejections - 35 USC § 103
Claims 9-18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sugita (JP2014227393A; English translation relied on for citations; previously cited) in view of Zhang (WO 2016/150355; English translation relied on for citations; previously cited) as evidenced by Mettler (“pH measurement of Soft Drinks”, 2026, Mettler Toledo, https://www.mt.com/au/en/home/library/applications/lab-analytical-instruments/measurement-pH-of-soft-drinks.html; previously cited).
Regarding claims 9 and 13, Sugita teaches a composition comprising water (corresponding to beverages) and at least one compound having the formula pictured below:
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wherein the claimed R2 position is a caffeic acid derivative; wherein the claimed Rb and Rc positions are hydroxyl and the claimed Ra, Rd, and Re positions are each hydrogen; wherein the claimed R1 position (corresponding to the R2 position of Sugita) is a hydrogen; and wherein the claimed R5 position (corresponding to R1 position of Sugita) is OR, wherein R is a saturated or unsaturated alkyl group having a straight or branched chain of 1-12 carbon atoms such as ethyl (page 2, lines 11-16). Ethyl contains two carbon atoms and thus is a C1-6alkyl as presently claimed. Sugita teaches that the compound further comprises a hydrogen or a saturated or unsaturated acyl group having a straight or branched chain of 2-12 carbon atoms at the claimed R3 and R4 positions (corresponding to the R4 and R3 positions of Sugita, respectively) (page 2, lines 12-14). An acyl group is a C(O)R group so that Sugita discloses that the claimed R3 and/or R4 positions may be hydrogen or C(O)R wherein R is a C2-12alkyl group.
Sugita teaches that the composition may be a soft drink or carbonated drink. Soft drinks and carbonated drinks typically have a pH of 2.5-3.5 with some deviation around these values such as 3.7 and around 5.7 as evidenced by Mettler (page 1, 1st and 8th paragraphs). A pH of 2.5-3.5, 3.7, and around 5.7 fall within the claimed pH range of the composition; therefore, Sugita discloses compositions having the claimed pH recited in present claims 9 and 13.
Sugita does not teach that the R in the C(O)R group of R3 and/or R4 positions is one of the groups recited in present claim 9.
However, Zhang teaches a composition (corresponding to solution) (page 2, paragraph beginning “Wherein, the oral preparation is a tablet”) which may comprise a compound wherein the claimed R2 position is a caffeic acid derivative, wherein the claimed Rb and Rc positions are hydroxyl and the claimed Ra, Rd, and Re positions are each hydrogen; the claimed R1 position is hydrogen; the claimed R3 position is C(O)R, wherein R may be one of the alkyl groups ethyl, n-propyl, n-butyl, isopropyl, and isobutyl; R4 is hydrogen; and R5 is OR (page 2, paragraph beginning “A chlorogenic acid acylate for improving” – paragraph beginning “In the formula”). Zhang also teaches that a composition may comprise a compound wherein the claimed R2 position is a caffeic acid derivative, wherein the claimed Rb and Rc positions are hydroxyl and the claimed Ra, Rd, and Re positions are each hydrogen; the claimed R1 position is hydrogen; the claimed R3 position is hydrogen; the claimed R4 position is C(O)R, wherein R may be one of the alkyl groups ethyl, n-propyl, n-butyl, isopropyl, and isobutyl; and the claimed R5 position is OR (page 2, paragraph beginning “A chlorogenic acid acylate for improving” – paragraph beginning “In the formula”). Therefore, Zhang discloses that the alkyl group at the claimed R3 and/or R4 positions may be one of the alkyl groups ethyl, n-propyl, n-butyl, isopropyl, and isobutyl as recited in present claim 9.
It would have been obvious for a person of ordinary skill in the art to have modified the R3 and/or R4 positions of Sugita to be one of the alkyl groups ethyl, n-propyl, n-butyl, isopropyl, and isobutyl as taught by Zhang. Since Sugita teaches that the group at the R3 and/or R4 positions may be hydrogen or C(O)R wherein R is a straight or branched C2-12alkyl group (page 2, lines 12-14), but does not disclose an R group having such features, a skilled practitioner would have been motivated to consult an additional reference such as Zhang in order to determine a suitable straight or branched C2-12alkyl group for the R3 and/or R4 positions, thereby rendering the claimed R in the C(O)R group of R3 and/or R4 positions obvious.
While it is necessary to select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formulas of Sugita and Zhang to arrive at the presently claimed compounds, Sugita and Zhang are considered to sufficiently limit the substituents so that a skilled practitioner is able to at once envisage the specifically claimed compounds. MPEP 2131.02.III.
Regarding claim 10, modified Sugita teaches the invention as described above in claim 9. It would have been obvious to have provided the compound with a stereochemistry as claimed given claim 10 covers multiple different options and there is no showing of unexpected results arising from a particular stereochemistry.
Regarding claims 11, 14, 15, 16, 17, 18, 20, and 21, Sugita teaches the invention as described above in claim 9, including the compound has the formula pictured below:
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wherein the claimed R2 position is a caffeic acid derivative; wherein the claimed Rb and Rc positions are hydroxyl and the claimed Ra, Rd, and Re positions are each hydrogen as recited in present claims 16 and 17; wherein the claimed R1 position (corresponding to the R2 position of Sugita) is a hydrogen; and wherein the claimed R5 position (corresponding to R1 position of Sugita) is OR6, wherein R6 is a saturated or unsaturated alkyl group having a straight or branched chain of 1-12 carbon atoms such as ethyl (page 2, lines 11-16). Ethyl contains two carbon atoms and thus is a C1-6alkyl as recited in present claims 11 and 20.
Sugita teaches that the compound further comprises a hydrogen or a saturated or unsaturated acyl group having a straight or branched chain of 2-12 carbon atoms at the claimed R3 and R4 positions (corresponding to the R4 and R3 positions of Sugita, respectively) (page 2, lines 12-14). An acyl group is a C(O)R group so that Sugita discloses that the claimed R3 and/or R4 positions may be C(O)R. A C(O)R group at the presently claimed R3 position corresponds to the C(O)R7 group shown in the structure of present claim 11. A C(O)R group at the presently claimed R4 position corresponds to the C(O)R7 group shown in the structure of present claim 20. Zhang teaches that the R7 in the C(O)R7 group of the claimed R3 and/or R4 positions may be isobutyl (page 2, paragraph beginning “A chlorogenic acid acylate for improving” – paragraph beginning “In the formula”). Isobutyl contains four carbons and thus is a C1-6alkyl as recited in present claims 11 and 20.
Since the combination of prior art provides a structure wherein the presently claimed R3 position may be C(O)R; wherein the presently claimed R4 position may be hydrogen, wherein the presently claimed R2 position is a caffeic acid derivative, and wherein the R in the C(O)R group of the presently claimed R3 position may be isobutyl (Sugita, page 2, lines 11-16; Zhang, page 2, paragraph beginning “A chlorogenic acid acylate for improving” – paragraph beginning “In the formula”), the combination of prior art renders a structure having the features recited in present claims 11, 14, and 18 obvious. Since the combination of prior art also provides a structure wherein the presently claimed R4 position may be C(O)R; wherein the presently claimed R3 position may be hydrogen, wherein the presently claimed R2 position is a caffeic acid derivative, and wherein the R in the C(O)R group of the presently claimed R4 position may be isobutyl (Sugita, page 2, lines 11-16; Zhang, page 2, paragraph beginning “A chlorogenic acid acylate for improving” – paragraph beginning “In the formula”), the combination of prior art also renders a structure having the features recited in present claims 15, 20, and 21 obvious.
Regarding claim 12, Sugita teaches the invention as described above in claim 9, including the amount of compound in the composition is adjusted according to factors such as the purpose of the compound, the symptoms in the consumer, and the gender of the consumer (page 3, lines 48-51). Sugita also teaches that the composition may provide 0.01-100 mg of the compound to the consumer per day (page 3, lines 51-52). A composition providing 0.01 to 100 mg of the compound is considered to contain concentrations of the compound that at least overlap the claimed concentration. The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP §2144.05.I.
Response to Arguments
Claim Objections: Applicant amended claim 11 to fully address the objection. Therefore, the objection is withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 9-18 over Sugita and Zhang as evidenced by Mettler: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the chemical compound of Sugita is in a cis configuration at the double bond between the dihydroxy phenol group while the presently claimed compound is in trans configuration at this same location on the chemical compound. Applicant argued that the chemical compound of Sugita would have an entirely different 3-D shape than the presently claimed chemical compound so that the compound of the prior art would be expected to bind to entirely different receptors in the mouth or on the tongue. Applicant argued that neither Zhang nor Mettler remedy these deficiencies of Sugita (Applicant’s Remarks, page 7, 1st paragraph under heading beginning “The Claims” – page 9, 4th paragraph).
However, the present specification states in page 5, line 30 – page 6, line 2, “Unless stated to the contrary, a formula with chemical bonds shown only as solid lines and not as wedges or dashed lines contemplates each possible isomer, e.g., each enantiomer and diastereomer, and a mixture of isomers, such as a racemic or scalemic mixture. Compounds described herein can contain one or more asymmetric centers and, thus, potentially give rise to diastereomers and optical isomers. Unless stated to the contrary, the present invention includes all such possible diastereomers as well as their racemic mixtures, their substantially pure resolved enantiomers, and all possible geometric isomers.” The double bond between the dihydroxy phenol group is a chemical bond shown only as solid lines and thus allows for the claimed compound to be an isomer at this position. Cis and trans configurations are geometric isomers. Therefore, the present claims encompass the asserted cis configuration present in the chemical compound of Sugita. Therefore, Applicant’s arguments regarding the difference in stereochemistry between the claimed chemical compound and the chemical compound of the prior art are unpersuasive.
In response to Applicant’s assertion that the chemical compound of Sugita would have an entirely different 3-D shape than the presently claimed chemical compound so that the compound of the prior art would be expected to bind to entirely different receptors in the mouth or on the tongue, the present claims merely require a composition comprising water and a compound having the recited compound wherein the composition is buffered to a pH of 2-8. None of the claims recite that the composition is consumed in a food or beverage, let alone recite that the compound in the composition binds to any particular receptors in the mouth or on the tongue. Therefore, Applicant’s arguments regarding such features are moot.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
