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 Nov. 3, 2025 has been entered. Claims 11, 13-20 and 24-29 are pending. Claims 1-10, 12 and 23 have been canceled. Claims 11 and 18 have been amended.
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 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wilhelm et al. (GB 1420909 A; Jan. 14, 1976).
Regarding claim 11, Wilhelm teaches an edible composition 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).
Regarding claim 13, Wilhelm teaches that the edible composition further comprises at least one other flavor compound (See Examples).
Claims 14-20 and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Wilhelm et al. (GB 1420909 A; Jan. 14, 1976) as applied to claim 11 above, and further in view of Abe et al. (JP 2003104997 A; April 9, 2003).
Regarding claim 14, as stated above, Wilhelm teaches an edible article composition the edible composition according to claim 11, but fails to teach the edible article further comprising a salt.
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 the edible composition of Wilhelm 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 composition 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.
Regarding claim 15, Abe teaches that the salt can be sodium chloride ([0062]).
Regarding claim 16, 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 17, 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 18, as stated above, Wilhelm in view of Abe render obvious an edible article comprising linear Pro-Ala and a salt, wherein it is added to a food composition to enhance flavor.
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 a salt, which is not different than what is taught by Wilhelm in view of Abe, the composition of Wilhelm in view of Abe would be capable of being a salty taste enhancer and enhancing a salty taste of an edible article comprising a salt.
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).
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 teache 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 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.
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).
Response to Arguments
Applicant’s amendment and arguments were found persuasive to overcome the 102 rejection from the previous Office Action and therefore it has been withdrawn.
While the examiner agrees that Wilhelm fails to specifically teach a linear Pro-Ala dipeptide in the examples, 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).
As stated in MPEP 2123: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
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.
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 claims do 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 use the dipeptide to enhance different flavors, the prior art clearly recognizes its use as a flavor enhancing compound. The examiner 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.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791