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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 7-9, and 16-21 in the reply filed on 9/29/25 is acknowledged. Claims 23 and 29-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
On page 26 of the specification, applicants stated “one was able to decarboxylate only caffeic acid and one was able to dicarboxylic only p-coumaric acid” in lines 22-23. The examiner believes this should read: “one was able to decarboxylate only caffeic acid and one was able to decarboxylate only p-coumaric acid”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 7-9, and 16-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the one or more pyranoanthocyanins of Formula IV" in the last line of the claims. There is insufficient antecedent basis for this limitation in the claim as there is no previous recitation of “the one or more pyranoanthocyanins of Formula IV”. The examiner notes that changing the phrase to “the one or more pyranoanthocyanins of Formula I” would overcome this rejection, and the claim is interpreted in this manner as the examiner believes applicants intended to make the compound of Formula I as set forth in the preamble.
All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
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.
Claim(s) 1, 7-9, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Morata et al. (International Journal of Food Microbiology, 2007, vol. 116, pp 144-152) in view of Rosimin et al. (Food Research International, vol. 78, 2015, pp 231-237).
The claims of the present application are drawn to methods of preparing the pyranoanthocyanins of Formula I comprising reacting one or more compounds of formula II with a bacterium expressing a phenolic acid decarboxylase to form decarboxylated compounds of formula III and reacting the compounds of formula III with the anthocyanins of formula IV at a temperature from about 35-45 degrees Celsius to form the pyranoanthocyanins of formula I. Dependent claims limit the groups on the pyranoanthocyanin and the bacterium to various lactic acid bacterium.
Morata disclose a method of preparing the pyranoanthocyanins of Formula I comprising reacting one or more compounds of formula II with a bacterium expressing a phenolic acid decarboxylase to form decarboxylated compounds of formula III and reacting the compounds of formula III with the anthocyanins of formula IV to form the pyranoanthocyanins of formula I. See Figure 1 for example:
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These compounds would read on the present compounds where R2 is H; R3 is OH; R4 is H and R5 is glucose. Morata notes these microorganisms having hydroxycinnamate decarboxylase activity turn the hydroxycinnamic acids into vinyl phenols (as in formula II into III herein) which readily condense with malvidin-3-O-glycoside or other anthocyanins to form vinylphenolic pyranoanthocyanins. This enzyme activity is taught to be found in various wine yeasts as well as in many bacteria and molds. Likewise, the reaction is shown to not form the pyranoanthocyanins when yeast strains without this decarboxylase activity are used - see page 145, 1st paragraph in right column.
What is not taught is the temperature being about 35-45 degrees Celsius; the differing O-acyl or O-glycosides at R5 as in claims 16-18 and 20; nor the specific lactic acid bacterium of claim 21.
Rosimin teaches that Lactobacillus sp. have phenolic acid decarboxylase – see abstract.
It would have been obvious to use differing decarboxylase containing microorganisms of claim 21 such as Lactobacillus sp. as Morata note the significance of the microorganisms used is in their having decarboxylase activity and Rosimin state that Lactobacillus sp. have this phenolic acid decarboxylase activity. Morata notes these microorganisms having hydroxycinnamate decarboxylase activity turn the hydroxycinnamic acids into vinyl phenols (as in formula II into III herein) which readily condense with malvidin-3-O-glycoside or other anthocyanins to form vinylphenolic pyranoanthocyanins. This enzyme activity is taught to be found in various wine yeasts as well as in many bacteria and molds. Likewise, the reaction is shown to not form the pyranoanthocyanins when yeast strains without this activity are used, thus showing the significance of using microorganisms having this phenolic decarboxylase activity - see page 145, 1st paragraph in right column. Likewise, as noted above, Morata states these methods can be practiced on the malvidin-3-O-glycosides used therein or other anthocyanins to form vinylphenolic pyranoanthocyanins. As such, modifying the R5-groups herein to provide differing anthocyanins, such as those having the various groups as set forth in present claims 16-18 and 20, would be prima facia obvious as Morata states other anthocyanins are able to be modified in the same manner done therein. Regarding the temperature change of from 26 degrees Celsius as set forth in Morata and a temperature in the range of about 35-45 degrees Celsius set forth herein, this changing of the temperature is seen to be routine optimization. Modifying reaction conditions such as temperature would be obvious to a skilled artisan looking to optimize the methods disclosed in the art. Case law makes clear that merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality. See In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
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TRAVISS C. MCINTOSH III
Primary Examiner
Art Unit 1693
/TRAVISS C MCINTOSH III/ Primary Examiner, Art Unit 1693