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 .
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami “Chapter IV Aroma of shade grown tea” (published 2000) as applied to claim 1 above in view of Israni et al. US 2009/0169692.
A human translation of Kawakami has been attached herein. All citations of Kawakami are with respect to the attached human translation.
Regarding Kawakami discloses a solid composition comprising a powdered tea leaf extract composition (gyokuro) (Kawakami Translation, Pages 7 and 18) comprising dimethyl sulfide and β-ionone wherein the solid composition has a weight ratio of β-ionone content to dimethyl sulfide content of 0.3/12.1 or 0.3/8.0 (β-ionone Peak No. 48 on Page 64, Dimethylsulfide Peak No. 1 on Page 63), which converts to a weight ratio of β-ionone to dimethyl sulfide of 0.0248 to 0.0375, which falls within the claimed weight ratio of β-ionone to dimethyl sulfide content of 0.02 to 0.4. Where the claimed weight ratio of β-ionone content to dimethyl sulfide content of the powdered tea leaf extract composition encompasses the weight ratio of β-ionone to dimethyl sulfide content ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.).
Further regarding Claim 1, Kawakami discloses analyzing samples of sencha green tea and other samples of gyokuro and Kawakami discloses the claimed weight ratio of β-ionone content to dimethyl sulfide content with respect to a green tea sample of gyokuro. The right most column on Pages 63-64 does not detect β-ionone in the sencha tea leaf sample. Kawakami does not disclose the claimed weight ratio of β-ionone content to dimethyl sulfide content with respect to a green tea sample of sencha.
Israni et al. discloses an aqueous tea extract from any tea sources of fermented and/or substantially unfermented green tea (‘692, Paragraph [0018]) wherein volatile compounds including β-ionone contributes to the aroma of tea (‘692, Paragraph [0019]) wherein the concentrated volatile compounds are added back to tea to prepare aroma enriched tea (‘692, Paragraph [0021]).
Both Kawakami and Israni et al. are directed towards the same field of endeavor of green tea solid compositions It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the volatile compounds in the samples of sencha disclosed by Kawakami and add β-ionone aroma into the sencha sample as taught by Israni et al. based upon the desired aroma of the green tea solid composition. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the sencha green tea sample of sencha tea disclosed by Kawakami and incorporate the claimed weight ratio of β-ionone content to dimethyl sulfide content disclosed by the gyokuro sample disclosed by Kawakami since where the claimed weight ratio of β-ionone content to dimethyl sulfide content of the powdered tea leaf extract composition encompasses the weight ratio of β-ionone to dimethyl sulfide content ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the weight ratio of β-ionone content to dimethyl sulfide content of any particular green tea extract will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such weight ratio of β-ionone content to dimethyl sulfide content is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of the weight ratio of β-ionone to dimethyl sulfide of the sencha green tea sample based upon the desired degree of aroma of the particular volatile components in the sencha green tea.
Regarding Claim 5, Kawakami discloses at least one aroma component of α-ionone (Peak No. 46 on Page 64).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami “Chapter IV Aroma of shade grown tea” (published 2000) in view of Israni et al. US 2009/0169692 as applied to claim 1 above in view of Kikuchi et al. US 2010/0330243.
A human translation of Kawakami has been attached herein. All citations of Kawakami are with respect to the attached human translation.
Regarding Claims 3-4, Kawakami discloses the solid composition being sencha tea (Kawakami Translation, Page 20. However, Kawakami modified with Israni et al. is silent regarding the solid composition comprising two or more types of dextrins of a linear dextrin and a cyclic dextrin.
Kikuchi et al. discloses a solid composition of a powder composition comprising a tea leaf extract (sencha) comprising dextrins and cyclodextrins (‘243, Paragraphs [0030]) and [0070]).
Both Kawakami and Kikuchi et al. are directed towards the same field of endeavor of powdered tea leaf solid compositions of sencha tea. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the solid composition of Kawakami and incorporate dextrin, e.g. linear dextrin, and a cyclic dextrin as taught by Kikuchi et al. as a drying aid (‘243, Paragraph [0030]) to obtain an extraction solution of the tea leaves (‘243, Paragraph [0035]). Furthermore, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Kikuchi et al. teaches that there was known utility in the food and beverage art to incorporate dextrins and cyclodextrins in processing tea leaves.
Response to Arguments
Applicant's arguments filed December 22, 2025 with respect to the previous obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive.
Applicant argues on Pages 2-3 of the Remarks that Kawakami explains that Gyokuro is a tea leaf that is grown covered (coated tea leaf in the English translation) whereas Sencha is not and that Sencha is grown in the direct sunlight wherein Sencha is known in the art to be a type of tea that is not grown under the same covered conditions as Gyokuro. Applicant continues that the aroma component characteristics of the Gyokuro are a result of the covered growing conditions and Sencha is used as a comparative in the reference because of the distinct growing conditions. Applicant argues that it would not be obvious to apply the aroma components of Gyokuro to Sencha as such are a result of growing conditions that are not applicable.
Examiner first notes that the transitional phrase “comprising” is inclusive or open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). Claim 1 recites a generic solid composition comprising a Sencha tea leaf extract. The claims do not preclude the presence of unrecited elements such as Sencha tea leaf extract mixed with unrecited elements such as gyokuro. The claims encompass an embodiment of a solid composition comprising Sencha tea leaf extract combined with gyokuro. The primary reference discloses embodiments of green tea incorporating Sencha or Gyokuro. The secondary reference of Israni et al. discloses the aqueous tea extract being derived from a green tea source (‘692, Paragraph [0018]) wherein volatile compounds including β-ionone contributes to the aroma of tea (‘692, Paragraph [0019]) wherein the concentrated volatile compounds are added back to tea to prepare aroma enriched tea (‘692, Paragraph [0021]). Simple Loose Leaf “How to Make Your Own Tea Blends: 10 DIY Recipes” <https://simplelooseleaf.com/blogs/news/how-to-make-your-own-tea-blends-10-diy-recipes> (published June 8, 2019) discloses a method of blending your own tea blend to experiment with flavors and create those you enjoy the most wherein you can create numerous blends and enjoy different tea each day wherein changing only one or two ingredients can change a tea from calming to invigorating and blending is good for enhancing the flavor of tea you don’t necessarily enjoy but would like to drink because of the health benefits wherein every blend uses one ingredient as a base of teas or dried herbs that connect all flavors together wherein one particular blend is minty sencha and additional tea blends include mint and green tea. Tea Chat “Blending sencha with gyokuro?” by RussianSoul <https://www.teachat.com/viewtopic.php?t=6041> (posted on August 12, 2008) discloses a blend of Gyokuro with Sencha. The claimed weight ratio of β-ionone content to dimethyl sulfide content of from 0.02 to 0.4 to associated with the broader solid composition and the solid composition itself comprises a Sencha tea leaf extract. The primary reference of Kawakami teaches embodiments of green tea containing Sencha or Gyokuro and a particular embodiment wherein Gyokuro contains the claimed ratio of dimethyl sulfide to β-ionone. The secondary reference of Israni et al. discloses a solid composition made from an aqueous tea extract from any tea sources of fermented and/or substantially unfermented green tea (‘692, Paragraph [0018]) wherein volatile compounds including β-ionone contributes to the aroma of tea (‘692, Paragraph [0019]) wherein the concentrated volatile compounds are added back to tea to prepare aroma enriched tea (‘692, Paragraph [0021]). The claims do not require the Sencha tea leaf extract itself to have the claimed β-ionone content to dimethyl sulfide content. Applicant argues limitations that are not commensurate in scope with the claimed invention. Furthermore, the Office Action states that one of ordinary skill in the art would adjust the concentration of the weight ratio of β-ionone to dimethyl sulfide of the sencha green tea sample based upon the desired degree of aroma of the particular volatile components in the sencha green tea. Therefore, this argument is not found persuasive.
Applicant argues on Page 3 of the Remarks that β-ionone is disclosed in Israni but is merely listed as one or many volatile compounds and Paragraph [0019] in Israni only describe tea and it is not understandable whether the tea is green tea and that it is unclear whether the β-ionone disclosed therein contributes to the aroma of green tea. Applicant points to the example of Israni disclosing 2-methypropanal and linalool rather than β-ionone used as model compounds and the use of β-ionone per se specifically is not suggested. Applicant concludes that there is no reason to select and use β-ionone in Israni and if β-ionone could still be used this can be considered hindsight based on the structure of the subject invention.
Examiner argues Israni et al. explicitly discloses the tea extract can be from green tea (‘692, Paragraph [0018]), which contradicts applicant’s allegation that it is not understandable whether the tea is green tea. Israni et al. also discloses many volatile compounds contribute to the aroma of the tea including b-ionone (‘692, Paragraph [0019]) and that the concentration of volatile compounds are added back to the tea to prepare aroma enriched tea (‘692, Paragraph [0021]). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art in view of Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP § 2123.I.). Israni et al. teaches that green teas contain aroma compounds such as β-ionone. Furthermore, Tan et al. Food Science and Technology. Volume 108. July 2019. “Characterisation of key odourants in Japanese green tea using gas chromatography-olfactometry and gas chromatography mass spectrometry” discloses Japanese green tea can be broadly classified into unshaded and steam green tea (e.g. Sencha) or shaded and steamed green tea (e.g. Gyokuro) wherein the aroma profiles vary among the different categories so understanding their aroma profiles is important as they influence consumers’ liking of the tea wherein Sencha has a green and floral aroma profile and Gyokuro is a high grade green tea having a vegetable like aroma profile (Tan et al., Page 221) wherein Gyokuro contains β-ionone (Tan et al., Page 222) and Sencha also contains β-ionone (Tan et al., Page 223), i.e. Sencha and Gyokuro both contain β-ionone (Compound No. 159 on Table 1 of Tan et al., Page 227). Tan et al. explicitly discloses that Sencha and Gyokuro both contain β-ionone compounds. Kawakami teaches a particular embodiment wherein gyokuro contains the claimed ratio of β-ionone to dimethyl sulfide. The Office Action states that one of ordinary skill in the art would adjust the concentration of the weight ratio of β-ionone to dimethyl sulfide of the sencha green tea sample based upon the desired degree of aroma of the particular volatile components in the sencha green tea. Therefore, these arguments are not found persuasive.
Applicant argues on Pages 3-4 of the Remarks that Kawakami does not suggest adjusting the β-ionone/dimethyl sulfide ratio, i.e. the weight ratio of β-ionone content to dimethyl sulfide content to 0.02-0.04 when using Sencha samples.
Examiner argues the primary reference of Kawakami discloses the claimed weight ratio of β-ionone to dimethyl sulfide content in the gyokuro sample of 0.3/12.1 or 0.3/8.0 (β-ionone Peak No. 48 on Page 64, Dimethylsulfide Peak No. 1 on Page 63), which converts to a weight ratio of β-ionone to dimethyl sulfide of 0.0248 to 0.0375, which falls within the claimed weight ratio of β-ionone to dimethyl sulfide content of 0.02 to 0.4. Where the claimed weight ratio of β-ionone content to dimethyl sulfide content of the powdered tea leaf extract composition encompasses the weight ratio of β-ionone to dimethyl sulfide content ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.) Kawakami also discloses sencha green tea embodiments. The secondary reference of Israni et al. discloses the tea extract can be from green tea (‘692, Paragraph [0018]) and that many volatile compounds contribute to the aroma of the tea including b-ionone (‘692, Paragraph [0019]) and that the concentration of volatile compounds are added back to the tea to prepare aroma enriched tea (‘692, Paragraph [0021]). Claim 1 does not recite that the sencha tea itself has the claimed β-ionone to dimethyl sulfide ratio. Claim 1 only requires that the generic solid composition comprises the weight ratio of β-ionone to dimethyl sulfide content of from 0.02 to 0.4. Applicant argues limitations that are not commensurate in scope with the claimed invention. Furthermore, In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). transitional phrase “comprising” is inclusive or open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). Claim 1 recites a generic solid composition comprising a Sencha tea leaf extract. The claims do not preclude the presence of unrecited elements such as Sencha tea leaf extract mixed with unrecited elements such as gyokuro. The claims encompass an embodiment of a solid composition comprising Sencha tea leaf extract combined with gyokuro. The primary reference discloses embodiments of green tea incorporating Sencha or Gyokuro. The secondary reference of Israni et al. discloses the aqueous tea extract being derived from a green tea source (‘692, Paragraph [0018]) wherein volatile compounds including β-ionone contributes to the aroma of tea (‘692, Paragraph [0019]) wherein the concentrated volatile compounds are added back to tea to prepare aroma enriched tea (‘692, Paragraph [0021]). Simple Loose Leaf “How to Make Your Own Tea Blends: 10 DIY Recipes” <https://simplelooseleaf.com/blogs/news/how-to-make-your-own-tea-blends-10-diy-recipes> (published June 8, 2019) discloses a method of blending your own tea blend to experiment with flavors and create those you enjoy the most wherein you can create numerous blends and enjoy different tea each day wherein changing only one or two ingredients can change a tea from calming to invigorating and blending is good for enhancing the flavor of tea you don’t necessarily enjoy but would like to drink because of the health benefits wherein every blend uses one ingredient as a base of teas or dried herbs that connect all flavors together wherein one particular blend is minty sencha and additional tea blends include mint and green tea. Tea Chat “Blending sencha with gyokuro?” by RussianSoul <https://www.teachat.com/viewtopic.php?t=6041> (posted on August 12, 2008) discloses a blend of Gyokuro with Sencha. The claimed weight ratio of β-ionone content to dimethyl sulfide content of from 0.02 to 0.4 to associated with the broader solid composition and the solid composition itself comprises a Sencha tea leaf extract. The primary reference of Kawakami teaches embodiments of green tea containing Sencha or Gyokuro. The secondary reference of Israni et al. discloses a solid composition made from an aqueous tea extract from any tea sources of fermented and/or substantially unfermented green tea (‘692, Paragraph [0018]) wherein volatile compounds including β-ionone contributes to the aroma of tea (‘692, Paragraph [0019]) wherein the concentrated volatile compounds are added back to tea to prepare aroma enriched tea (‘692, Paragraph [0021]). The claims do not require the Sencha tea leaf extract itself to have the claimed β-ionone content to dimethyl sulfide content. Nevertheless, the Office Action states that one of ordinary skill in the art would adjust the concentration of the weight ratio of β-ionone to dimethyl sulfide of the sencha green tea sample based upon the desired degree of aroma of the particular volatile components in the sencha green tea. Therefore, these arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tan et al. Food Science and Technology. Volume 108. July 2019. “Characterisation of key odourants in Japanese green tea using gas chromatography-olfactometry and gas chromatography mass spectrometry” discloses Japanese green tea can be broadly classified into unshaded and steam green tea (e.g. Sencha) or shaded and steamed green tea (e.g. Gyokuro) wherein the aroma profiles vary among the different categories so understanding their aroma profiles is important as they influence consumers’ liking of the tea wherein Sencha has a green and floral aroma profile and Gyokuro is a high grade green tea having a vegetable like aroma profile (Tan et al., Page 221) wherein Gyokuro contains β-ionone (Tan et al., Page 222) and Sencha also contains β-ionone (Tan et al., Page 223), i.e. Sencha and Gyokuro both contain β-ionone (Compound No. 159 on Table 1 of Tan et al., Page 227).
Kawabata et al. “Determination of Dimethylsulfide in the Head Space Vapor of Green Tea by Gas Chromatography” (1977) discloses shaded tea of Gyokuro and some Sencha has an odor of dimethyl sulfide which is known to be a decomposition product of S-methyl methionine sulfonium salt (Kawabata et al., Pages 2285-2286).
Tea Chat “Blending sencha with gyokuro?” <https://www.teachat.com/viewtopic.php?t=6041> (posted on August 12, 2008) discloses a blend of Gyokuro with Sencha (Comment by “RussianSoul” on August 12, 2008 at 12:02, Page 2).
Simple Loose Leaf “How to Make Your Own Tea Blends: 10 DIY Recipes” <https://simplelooseleaf.com/blogs/news/how-to-make-your-own-tea-blends-10-diy-recipes> (published June 8, 2019) discloses a method of blending your own tea blend to experiment with flavors and create those you enjoy the most wherein you can create numerous blends and enjoy different tea each day wherein changing only one or two ingredients can change a tea from calming to invigorating and blending is good for enhancing the flavor of tea you don’t necessarily enjoy but would like to drink because of the health benefits wherein every blend uses one ingredient as a base of teas or dried herbs that connect all flavors together wherein one particular blend is minty sencha and additional tea blends include mint and green tea.
Colliver et al. US 2009/0186125 discloses a method for purifying aroma compounds from tea (‘125, Paragraph [0001]) comprising the step of fractionating a mixture of tea compounds and recovering at least one fraction enriched in at least one tea compound that contributes to aroma wherein the at least one tea compound is theanine and/or an aroma compound or amino acid or a volatile aroma compound of dimethyl sulfide (‘125, Paragraphs [0044]-[0048]) wherein the tea compound contains at least one concentrated and/or dried fraction (‘125, Paragraphs [0055]-[0056]) wherein the tea is a green tea (‘125, Paragraph [0041]).
The prior art made of record in a previous Information Disclosure Statement and not relied upon is considered pertinent to applicant's disclosure.
Yamaguchi et al. US 5,538,750 discloses an instantly soluble powder of green tea whose taste and flavor is improved by the addition of dimethyl sulfide (‘750, Column 8, lines 15-21).
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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792