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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 18, 2026 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
11-13, 16-25
Withdrawn claims:
17-20
Previously canceled claims:
1-10
Newly canceled claims:
14-15
Amended claims:
11
New claims:
None
Claims currently under consideration:
11-13, 16, 21-25
Currently rejected claims:
11-13, 16, 21-25
Allowed claims:
None
Claim Rejections - 35 USC § 103
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 11-13, 16, 21, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Gayet et al. (US 2016/0039732) (Reference from IDS filed 08/08/2022) in view of Schwarz (Schwarz, Bernd. Identification of Novel Orosensory Active Molecules in Cured Vanilla Beans (Vanilla planifolia), Journal of Agriculture and Food Chemistry, Volume 57, Issue 9, pp. 3729-3737, published May 13, 2009) (Reference from IDS filed 08/08/2022).
Regarding claim 11, Gayet teaches natural vanillin exhibiting a natural vanillin titer of greater than or equal to 90% (natural vanillin having a degree of purity ranging from 95% to 99%, [0018], where “95% to 99%” falls within the claimed range of “greater than or equal to 90%”). Titer and purity both are understood in the art as referring to the concentration of a compound within a composition.
Gayet does not teach the presence of 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde in an amount of 10 ppm to 10,000 ppm or 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde in an amount of 10 ppm to 5,000 ppm.
Although Gayet does not explicitly disclose the presence of 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde, Gayet does state the presence of dimers of vanillin ([0023]) having two phenyl groups ([0034]). One of ordinary skill recognizes that 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde is a dimer of vanillin having two phenyl groups. Gayet also states that the composition of the outlet stream comprises between 0.0% and 5% by weight (0 ppm and 50000 ppm, respectively) of dimers ([0028], [0034]), which overlaps with the claimed range of “less than or equal to 10000 ppm and greater than or equal to 10 ppm”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to produce the species 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde as claimed based on the disclosed genus of vanillin dimers having two phenyl groups. Vanillin dimers having two phenyl groups is a genus that is limited in scope to compounds comprising only two vanillin subunits. Because there is a limited number of ways that vanillin subunits can be bound, there is a limited number of species that comprise the genus. See MPEP §2144.08(II)(A)(4). Further, the instruction in Schwarz that 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde, which is also a vanillin dimer, imparts desirable taste attributes (page 3735, right-hand column, paragraph 2) provides a reasonable expectation that 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde would similarly impart desirable taste attributes. The claimed composition comprising natural vanillin and 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde would thus be obvious to one of ordinary skill.
With respect to the overlapping range, MPEP §2144.05 states in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding the presence of 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde, Schwarz teaches the composition of vanilla extract (p. 3733, right-hand column, paragraph 4) having 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde (page 3735, left-hand column, paragraph 1). Schwartz further teaches that 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde was found to induce a velvety mouth-coating sensation (page 3735, right-hand column, paragraph 2). Additionally, Schwarz teaches concentration of 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde in vanilla extract as 26.3 µmol/kg (p. 3736, Table 3). 26.3 µmol/kg x 288.3 g/mol ÷ 1000 = 7.58 µg/kg or 7.58 ppm, which is close to the claimed range of “less than or equal to 5000 ppm and greater than or equal to 10 ppm”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the vanillin composition of Gayet with the compound 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde. Although Gayet is primarily directed toward the production of essentially pure vanillin ([0010]), it indicates at paragraph [0011] that lower purity products may separately be produced, where impurity concentrations may be modified “which have a positive influence on the organoleptic quality of the final natural vanillin”. Since Gayet does not provide additional instruction regarding the composition of such impurities that positively impact the taste, a practitioner would be motivated to consult Schwarz to determine 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde imparts a desirable velvety mouth-coating organoleptic characteristic. As such, the addition of 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde to a vanillin composition of Gayet would be obvious in order to positively impact the organoleptic characteristics of the composition.
With respect to the close range, MPEP §2144.05 states a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 12, Gayet modified by Schwarz teaches all elements of claim 11 as described above. Gayet also teaches further comprising at least one compound chosen from vanillyl alcohol, vanillic acid, guaiacol and vinylguaiacol (stream at the output comprising vanillyl alcohol, vanillic acid, guaiacol, and guaiacol derivatives, [0007], where vinylguaiacol is a known derivative of guaiacol).
Regarding claim 13, Gayet modified by Schwarz teaches all elements of claim 11 as described above. Gayet also teaches wherein the natural vanillin titer is greater than 95% (starting degree of purity ranging from 95% to 99%, [0018], where “95% to 99%” falls within the claimed range of “greater than 95%”).
Regarding claim 16, Gayet modified by Schwarz teaches all elements of claim 11 as described above. Gayet also teaches comprising a color of less than or equal to 400 Hazen (having a color less than or equal to 200 Hazen, [0017], where “less than or equal to 200 Hazen” falls within the claimed range of “less than or equal to 400 Hazen”).
Regarding claim 21, Gayet modified by Schwarz teaches all elements of claim 11 as described above. Gayet also teaches further comprising at least one compound chosen from vanillyl alcohol and vanillic acid (stream at the output comprising vanillyl alcohol and vanillic acid [0007]).
Claim 22 is a product-by-process claim. MPEP §2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Claim 22 is directed to a vanillin composition that has been produced by fermenting ferulic acid and evaporated in a wiped film evaporator or in a falling film evaporator, optionally carried out in the presence of a technical adjuvant. Although claim 22 includes the process of producing the vanillin, the determination of patentability will dependent upon the itself. The structure imparted by the process of claim 22 is a vanillin composition that has the composition of a ferulic acid fermentation product that has been evaporated optionally with a technical adjuvant.
Gayet modified by Schwartz teaches all elements of claim 11 as described above. Gayet also teaches that the vanillin used in the inventive process is crude natural vanillin obtained from biosynthesis process ([0209]), and that natural vanillin is made by a biosynthesis process including fermentation of ferulic acid ([0019]). Gayet also teaches an evaporation step carried out in a scraped-film evaporator or a falling-film evaporator ([0231]). Therefore, the vanillin of Gayet has the same structure as that of the vanillin of claim 22.
Regarding claim 24, Gayet modified by Schwarz teaches all elements of claim 22 as described above.
Gayet does not teach the presence of 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde or 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde.
Although Gayet does not explicitly disclose the presence of 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde, Gayet does state the presence of dimers of vanillin ([0023]) having two phenyl groups ([0034]). One of ordinary skill recognizes that 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde is a dimer of vanillin having two phenyl groups.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to produce the species 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde as claimed based on the disclosed genus of vanillin dimers having two phenyl groups. Vanillin dimers having two phenyl groups is a genus that is limited in scope to compounds comprising only two vanillin subunits. Because there is a limited number of ways that vanillin subunits can be bound, there is a limited number of species that comprise the genus. See MPEP §2144.08(II)(A)(4). Further, the instruction in Schwarz that 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde, which is also a vanillin dimer, imparts desirable taste attributes (page 3735, right-hand column, paragraph 2) provides a reasonable expectation that 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde would similarly impart desirable taste attributes. The claimed composition comprising natural vanillin and 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde would thus be obvious to one of ordinary skill.
Regarding the presence of 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde, Schwarz teaches the composition of vanilla extract (p. 3733, right-hand column, paragraph 4) having 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde (page 3735, left-hand column, paragraph 1). Schwartz further teaches that 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde was found to induce a velvety mouth-coating sensation (page 3735, right-hand column, paragraph 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the vanillin composition of Gayet with the compound 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde. Although Gayet is primarily directed toward the production of essentially pure vanillin ([0010]), it indicates at paragraph [0011] that lower purity products may separately be produced, where impurity concentrations may be modified “which have a positive influence on the organoleptic quality of the final natural vanillin”. Since Gayet does not provide additional instruction regarding the composition of such impurities that positively impact the taste, a practitioner would be motivated to consult Schwarz to determine 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde imparts a desirable velvety mouth-coating organoleptic characteristic. As such, the addition of 4-hydroxy-3-(4-hydroxy-3-methoxybenzyl)-5-methoxybenzaldehyde to a vanillin composition of Gayet would be obvious in order to positively impact the organoleptic characteristics of the composition.
Regarding claim 25, Gayet modified by Schwarz teaches all elements of claim 11 as described above. Gayet teaches that the vanillin has organoleptic properties which are close to the properties of a vanilla pod (i.e., vanillin from pods; [0009]). Furthermore, MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Thus, the vanillin composition made obvious by the cited prior art would have the same organoleptic properties as that of the claimed invention.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Gayet et al. (US 2016/0039732) (Reference from IDS filed 08/08/2022) in view of Schwarz (Schwarz, Bernd. Identification of Novel Orosensory Active Molecules in Cured Vanilla Beans (Vanilla planifolia), Journal of Agriculture and Food Chemistry, Volume 57, Issue 9, pp. 3729-3737, published May 13, 2009) (Reference from IDS filed 08/08/2022) as applied to claim 22 above, and further in view of Muheim (EP 0885968 A1)(IDS Reference filed 08/08/2022).
Regarding claim 23, Gayet modified by Schwarz teaches all elements of claim 22 as described above.
The cited prior art does not teach wherein the vanillin composition obtained by fermentation comprises a weight concentration of natural vanillin between 0.5% and 60%.
However, in the same field of endeavor of vanillin production, Muheim teaches a process for fermenting ferulic acid to produce vanillin resulting in a concentration of 5.94 g/L of vanillin (p. 5, Example 2). Because a fermentation broth is well known in the art to comprise primarily water, it logically follows that the density of the broth is close to that of water (i.e., 1 g/mL). Therefore, the weight concentration of vanillin after fermentation is 0.594%, which falls within the claimed range of “0.5% and 60%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Gayet with an intermediate concentration following fermentation as taught by Muheim. One of ordinary skill would have been motivated to make this modification because Gayet states that the fermentation process of Muheim is well known to create natural vanillin ([0019]).
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 11-16, 21, 22, and 24 over Gayet and Schwarz: Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant argued that the presence of the 2 products in the claimed natural vanillin is an unexpected result of a specific process of purification as exemplified by the specification and that there is no indication that the process of Gayet would result in the claimed natural vanillin composition (Remarks, p. 6, ¶ 1- p. 8, ¶ 4).
This argument has been considered. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the process of producing the natural vanillin of claim 1) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claims are merely directed to a natural vanillin composition. The Examiner maintains that one of ordinary skill would have arrived at the claimed invention using the disclosures of Gayet and Schwarz, regardless in the vanillin is produced using a different method. The data provided by the examples of the instant specification is not sufficient to demonstrate that the vanillin of the prior art would be materially different from that of the claimed invention.
Applicant further argued that there is no explanation as to how to produce 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde. Applicant also argued that Gayet discloses that the dimers are preferably diphenylmethanes, which 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde is not. Applicant further argued that neither reference discusses the organoleptic properties of a dimer bound via an etheric bridge (p. 9, ¶ 2- p. 14, ¶ 1).
This argument has been considered. However, the Examiner maintains that 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde would be a species of the genus vanillin dimers having two phenyl groups. Because there are a limited number of ways that vanillin subunits can be bound, there are a limited number of species that can comprise the genus of vanillin dimers having two phenyl groups, see MPEP § 2144.08(II)(A)(4). Therefore, one of ordinary skill would have found 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde obvious. Claim 6 of Gayet claims a generic species of dimers without limiting them to only diphenylmethanes. Furthermore, MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Even though Gayet does states that the dimers are advantageously diphenylmethanes, Gayet still suggests the use of other dimers. Thus, one of ordinary skill would have found it obvious to arrive at 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde, which is a dimer of vanillin.
Furthermore, Schwarz discusses the organoleptic properties compounds 5, 6, 7, 8, and 9, which are all vanillin dimers having two phenyl groups (p. 3732, Fig. 3, Nos. 5-8). Schwarz discloses that compounds 7, 8, and 9 all induced a velvety mouth-coating sensation (p. 3735, col. 2, ¶ 2) and that compounds 5-8 induced a creamy mouthfeel and fatty body when added to sweetened milk (p. 3735, col. 2, ¶ 3). Because all vanillin dimers of Schwarz displayed positive organoleptic qualities, one of ordinary skill would have had reasonable expectation of success including another dimer of vanillin as 4-((4-hydroxy-3-methoxybenzyl)oxy)-3-methoxybenzaldehyde.
Applicant further argued that Gayet and Schwarz must be considered as a whole under MPEP §2141 and that when considering the whole, one of ordinary skill would not have been motivated to simply add the claimed compounds in the claimed amounts (Remarks, p. 14, ¶ 2).
This argument has been considered. However, claim 6 of Gayet claims a generic species of dimers without limiting them to only diphenylmethanes. MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). Thus, the disclosures of Gayet and Schwarz are considered sufficient to teach the limitations as described above.
Claim Rejections – 35 U.S.C. §103 of claim 23 over Gayet, Schwarz, and Muheim: Applicant’s arguments filed March 18, 2026 have been fully considered but they are not persuasive.
Applicant's arguments as related to claim 11 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
The rejections of claims 11-13, 16, 21-25 have been maintained herein.
Conclusion
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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