0DETAILED 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 Response and Amendment after Non-Final Office Action filed 01/23/2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-19
Withdrawn claims: 1-8, 19
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: 9, 11
New claims: None
Claims currently under consideration: 9-18
Currently rejected claims: 9-18
Allowed claims: None
Claim Objections
Claim 11 is objected to because “wherein R6 is selected from C1-6alkyl, or benzyl” should be read as “wherein R6 is selected from C1-6alkyl or benzyl”.
Appropriate correction is required.
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.
Claims 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sugita (JP2014227393A; English translation relied on for citations) 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).
Regarding claims 9 and 13, Sugita teaches a composition comprising water (corresponding to beverages) and at least one compound having the formula pictured below:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
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, 16, and 17, Sugita teaches the invention as described above in claim 9, including the compound has the formula pictured below:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
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 claim 11. 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 R3 position provides a structure have the features seen in the 1st structure in the top row of present claim 11, thereby rendering that structure obvious. A C(O)R group at the R4 position provides a structure have the features seen in the 2nd structure in the top row of present claim 11, thereby rendering that structure 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.
Regarding claims 14 and 15, Sugita teaches the invention as described above in claim 9, including that the claimed R3 and/or R4 positions may be hydrogen or C(O)R; and the claimed R2 position is a caffeic acid derivative (page 2, lines 11-16). Zhang teaches that the R in the C(O)R 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”). Therefore, the combination of prior art renders the features of present claims 14 and 15 obvious.
Regarding claim 18, Sugita teaches the invention as described above in claim 11, including that the claimed R3 and/or R4 positions may be hydrogen or C(O)R (page 2, lines 11-16). The C(O)R in the claimed R3 and/or R4 positions corresponds to the C(O)R7 group shown in the structures of present claim 11. 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”). Therefore, the combination of prior art renders the claim obvious.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 9-14 and 16-18 over Coffee as evidenced by Peterson: Applicant’s arguments with respect to claim(s) 9-14 and 16-18 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.
Claim Rejections – 35 U.S.C. §103 of claims 9, 11, and 15 over Zhang and Narita: Applicant’s arguments and amendments have been fully considered and are considered to overcome the prior art rejections over Zhang and Narita. However, upon further consideration, the claims are now rendered obvious by the combination of Sugita and Zhang as evidenced by Mettler.
Applicant amended claim 9 to exclude the R in the OR group at position R5 from being hydrogen. Applicant argued that Zhang does not disclose a compound not having a hydrogen in this position (Applicant’s Remarks, pages 12-13, section B).
However, in the new grounds of rejection necessitated by the amendment of the claims, the claims are now rendered obvious by Sugita in view of Zhang as evidenced by Mettler. As described above in the rejection of present claim 9, Sugita teaches a compound having the formula pictured below:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
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). Therefore, Sugita teaches a compound wherein the R in the OR at position R5 is not hydrogen.
Since the prior art is shown to render the present claims obvious, the rejections of the claims stand as written herein.
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 Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KELLY P KERSHAW/Examiner, Art Unit 1791