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 .
The Amendment filed July 23, 2026 has been entered. Claims 18-20, 24-25, and 29-33 are pending. Claims 11, 13-18, and 26-28 have been canceled. Claims 18 and 29 have been amended. Claims 30-33 are new.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 18-20, 24-25, and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Wilhelm et al. (GB 1420909 A; Jan. 14, 1976) in view of Abe et al. (JP 2003104997 A; April 9, 2003).
Regarding claim 18, Wilhelm teaches an edible composition, or seasoning, comprising an edible excipient or carrier and a flavoring composition used to enhance the flavor of foodstuff, wherein the flavor composition comprises a dipeptide that can be Pro-Ala (See Examples).
With respect to the Proline-Alanine being a salty taste enhancer, Wilhelm fails to specifically teach such use, however, as Wilhelm teaches the use of Pro-Ala as a flavor enhancer in food compositions, it would necessarily be capable of also being a salty taste enhancer as it is the same composition as claimed.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, the examiner notes that the use of Pro-Ala as a salty taste enhancer is merely a recitation of the intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As the claim only requires the structural components of a Pro-Ala and an edible excipient or carrier, which is not different than what is taught by Wilhelm, the composition of Wilhelm would be capable of being a salty taste enhancer.
With respect to the dipeptide being linear, Wilhelm teaches that the dipeptide can be open chain, which is known in the art to have a linear structure, or cyclic ( page 3, para 2; page 6). Wilhelm teaches that the dipeptides incorporated into the composition described in the Examples can be open chain dipeptides or cyclic dipeptides (page 6), wherein the examples include the dipeptide Proline-Alanine (See Examples).
Therefore, it would have been obvious to one of ordinary skill in the art to use an open chain, or linear, dipeptide Proline-Alanine depending on the flavor profile as Wihelm teaches that cyclic dipeptides provide a different flavor effect versus open chain and further teaches that either can be used (page 3).
Wilhelm teaches an edible article comprising the edible composition, or seasoning, as described above, but fails to teach the edible article further comprising a salt in an amount of less than 0.120 g of salt per 100 g of the edible article.
Abe teaches a dipeptide comprising proline and alanine ([0033] and [0039]) and one or more edible excipients or carriers as a salty taste enhancer (e.g. a umami taste enhancer) in an edible article comprising salt (Derwent Abstract, also English Translation [0022]-[0024]). Abe teaches that the dipeptides can be used as umami components in seasonings.
As Wilhelm teaches that it is known in the art to use Pro-Ala to enhance flavor, and Abe also teaches the use of dipeptides to enhance flavor, e.g. umami, it would have been obvious for the edible article of Wilhelm to further comprise a salt depending on the type of flavor to be enhanced. It would have been obvious to add a salt to the edible article of Wilhelm if more of a salty taste was desired as Abe teaches that it is well known in the art to combine dipeptides similar to Pro-Ala with a salt to enhance flavor.
With respect to the salt content, Abe teaches that salt can be present in an amount of 0.3% ([0062]), which is higher than the claimed range of 0.12%, however, it would have been obvious to one of ordinary skill in the art to lower the salt content depending on the desired amount of flavor and saltiness. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 19, Wilhelm teaches that the addition of the dipeptide occurs during the elaboration of the edible article (See Examples).
Regarding claim 20, Wilhelm in view of Abe teach providing the dipeptide, which as stated above can act as a salty taste enhancer, selecting a food material, and adding the dipeptide in a desired amount. Abe teaches adding salt to the article and therefore it would have been obvious to add the dipeptide in an amount to maintain saltiness in order to produce a salty taste low salt edible article. It is well within the ordinary skill in the art to determine an optimum amount of each component to result in a desired saltiness level.
Step (d) is optional and therefore not required.
Regarding claims 24-25, Abe teaches that the salt can be sodium chloride ([0062]).
Regarding claim 29, Abe teaches that the edible article can be a seasoning ([0024]) and Wilhelm teaches that the edible article can be a dairy product or beverage (see Examples).
Regarding claim 30, Wilhelm teaches that the edible article can be beverage (see Examples), or liquid food. Abe teaches that the edible article comprising the peptides can be soups or bouillon, e.g. liquid food ([0024]).
Abe teaches that the dipeptide can be added to the edible article in an amount from 1 mg to 10 g/100 ml, which is 0.001 to 10 % by weight ([0023]), but fails to teach a concentration of 8 mM to 12 mM.
It would have been obvious to one of ordinary skill in the art to vary the amount of dipeptide added depending on the desired flavor of the edible article to which it is added to. As stated in MPEP 2144.05: 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 31, Abe teaches that the edible article comprising the peptides can be soups or bouillon, e.g. broths ([0024]). It would have been obvious to have the edible article of Wihelm be a soup or broth as taught by Abe depending on the type of food product desired to be consumed. The prior art clearly teaches that the peptides can be added to a variety of food products to enhance flavor, and therefore it would have been obvious have the edible article of Wihelm be a soup or broth as taught by Abe.
Regarding claim 32, Wilhelm teaches that the edible article is prepared by added the dipeptide to the beverage (See Examples).
Abe teaches that the edible article is prepared by adding the peptides and salt as seasonings to the soup or broth, but fails to specifically teach cooking a broth comprising salt and the dipeptide.
However, it is well known in the art that when adding seasoning to broth, it is added during the cooking process and therefore would have been obvious to cook a broth comprising salt and the dipeptide when preparing the edible article.
It would have been obvious to have the edible article of Wilhelm be broth as taught by Abe and prepared by cooking a broth comprising salt and the dipeptide.
Regarding claim 33, Abe teaches that the dipeptide can be added to the edible article in an amount from 1 mg to 10 g/100 ml, which is 0.001 to 10 % by weight ([0023]), thus overlapping the claimed range of 0.05 to 15% by weight. 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)
It would have been obvious to add the dipeptide of Wilhelm in a similar amount as taught by Abe as Abe teaches that such amount is useful for enhancing flavor.
Regarding claim 26, Abe teaches that salt can be present in an amount of 0.3% ([0062]), which falls within the claimed range of 1% to 99%.
Regarding claim 27, Abe teaches that salt can be present in an amount of 0.3% ([0062]), which is higher than the claimed range of 0.12%, however, it would have been obvious to one of ordinary skill in the art to lower the salt content depending on the desired amount of flavor and saltiness. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 28, Abe teaches that the dipeptide can be added to the edible article in an amount from 1 mg to 10 g/100 ml, which is 0.001 to 10 % by weight ([0023]), thus overlapping the claimed range of 0.05 to 15% by weight. 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)
It would have been obvious to add the dipeptide of Wilhelm in a similar amount as taught by Abe as Abe teaches that such amount is useful for enhancing flavor.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Wilhelm uses dipeptides to impart bitter flavor characteristics and would not have been obvious to use to enhance salty taste. Applicant further argues that Abe is directed towards umami taste and not a salty taste.
While the examiner agrees that the cited prior art fails to specifically teach that the claimed peptide specifically enhances salty taste, the examiner notes that the combination of the prior art renders obvious the use of the claimed peptide for enhancing flavor, wherein the exact flavor is depending on the type and amount of peptide used.
As Wilhelm teaches the use of Pro-Ala as a flavor enhancer in food compositions, it would necessarily be capable of also being a salty taste enhancer as it is the same composition as claimed.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Further, the examiner notes that the use of Pro-Ala as a salty taste enhancer is merely a recitation of the intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As the claim only requires the structural components of a Pro-Ala and an edible excipient or carrier, which is not different than what is taught by Wilhelm, the composition of Wilhelm would be capable of being a salty taste enhancer.
The claims do not exclude additional components from being recited in the prior art compositions and therefore a composition comprising the claimed dipeptide would be capable of performing the claimed function of enhancing a salty taste. Further, the examples in the specification show that the dipeptide has to be present at certain amounts to enhance a salty taste. The independent claim does not reflect such amounts to show unexpected results. Will any amount of the dipeptide enhance a salty taste?
Additionally, in response to applicant's argument that the prior art does not teach or suggest the use of the dipeptide Pro-Ala to enhance a salty taste, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Even though the prior art uses the dipeptide to enhance different flavors, the prior art clearly recognizes its use as a flavor enhancing compound. The exact flavor it is enhancing would be dependent upon the composition to which it is added. The instant specification teaches its addition to a broth, which is known to already have a salty taste. Therefore, based upon the teachings of the prior art, adding Pro-Ala to a broth product would enhance a flavor in the broth, which is expected and obvious over the prior art.
Further, Abe teaches that different peptides exhibit different taste, wherein the taste can be dependent on the peptide concentration or the pH of the edible article. Abe teaches in one example that at a pH of 3.5 a peptide exhibited a sour taste, but changed to umami at a pH of 6.5, and then saltiness appeared at a pH of 9.5 ([0066]). Therefore, it is clear that the type and amount of peptide present, as well as the exact edible article it is added to would alter the tastes exhibited. It would have been obvious to one of ordinary skill in the art to vary the amount of peptide or other ingredients in the broth in order to result in a desired salty taste. The prior art clearly teaches that flavor is enhanced using the claimed peptide, and therefore it is well within the ordinary skill in the art through routine experimentation to determine the exact flavor desired to be enhanced.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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