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 Jan. 21, 2026 has been entered. Claims 1-11 and 13-20 are pending. Claim 12 has been cancelled. Claims 17-19 are withdrawn as being directed to a non-elected method.
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 1-11, 13-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Korycinska et al. (“Antioxidant activity of rye bran alkylresorcinols and extracts from whole-grain cereal products”, Food Chemistry 116, 2009, pages 1013-1018; Retrieved from Internet URL: https://www.sciencedirect.com/science/article/pii/S0308814609003653?via%3Dihub) in view of Barden et al. (“Lipid Oxidation in Low-moisture Food: A Review”, Critical Reviews in Food Science and Nutrition, 56:2467-2482, 2016; Retrieved from Internet URL: https://pubmed.ncbi.nlm.nih.gov/24279497/).
Regarding claims 1 and 20, Korycinska discloses an antioxidant composition comprising at least one compound of Formula (I), wherein n can be 14-24 (See Fig. 1, pg 1014).
Korycinska further teaches using the antioxidant composition in a food product (Abstract, page 1018), but fails to specifically teach a low-moisture food having a water activity equal to or less than 0.85.
Barden discloses the use of antioxidants in low-moisture food in order to prevent lipid oxidation. Barden teaches that low-moisture food having a water activity below 0.5 present the problem of having a shelf life limited by lipid oxidation and non-enzymatic browning (Introduction, page 2467). Barden goes on the state that antioxidant addition to low-moisture foods aids in preventing oxidation, thereby prolonging the shelf-life, wherein natural antioxidants are preferred (pages 2474-2475).
It would have been obvious to one of ordinary skill in the art to have the antioxidant composition of Korycinska further comprise a low-moisture food as taught by Barden as Korycinska teaches that the claimed antioxidant compound is useful as natural antioxidant in food and Barden recognizes the importance need of natural antioxidants in low-moisture foods. Therefore, the combination of Korycinska with Barden yields the predictable result of effectively prevent oxidation in low-moisture foods by combining a natural antioxidant with a low-moisture food product.
Regarding claims 2 and 10, Barden teaches that the low-moisture food can be crackers, chips, cereal, etc. (page 2474), which are all manufactured food products.
Regarding claim 3, Korycinska teaches that the compound of Formula (I) is isolated/extracted (page 1014, Section 2.1).
Regarding claim 4, as stated above, Korycinski teaches the compound of Formula (I) that is isolated/extracted from rye bran.
Korycinska fails to specifically teach that the compound of Formula (I) is obtained by a winterization process, however, the examiner notes that applicant has presented a process limitation in a product claim. The compound of Korycinska is the same as claimed and therefore the method by which it is obtained is not given patentable weight absent a showing that the method produces a new or unexpected product over the prior art (See MPEP 2113: 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.).
Regarding claim 5, Korycinska discloses the compound of Formula (I) as described above and further teaches that it is extracted from rye bran. Korycinska teaches that whole-rye has a total level of alkylresorcinols of about 840 mg/kg dry matter, which is 0.085% dry matter (page 1018), thus falling within the claimed range of 0.004 to 0.32%.
While Korycinska fails to teach that this exact concentration refers to the compound of Formula (I), the examiner notes that Formula (I) is extract from rye and therefore would be expected to have a similar alkylresorcinol concentration as stated above.
Further, it would have been obvious to one of ordinary skill in the art to use a different source or grain variety to result in a desired concentration as Korycinska teaches that different types of grains have different concentrations of alkylresorcinols.
Regarding claims 6 and 9, as stated above, Korycinska discloses an antioxidant composition comprising at least one compound of Formula (I), wherein n can be 14-24 (See Fig. 1, pg 1014).
Regarding claims 7-8, Barden teaches that it is well known in the art to use a mixture of antioxidant compounds with a low-moisture food (page 2475).
Therefore, it would have been obvious to use a mixture of compounds of Formula (I), wherein n is any number between 14-24 as taught by Korycinska.
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, as the prior art teaches the use of a mixture of antioxidants, and Korycinska teaches the use of compounds Formula (I), wherein n is any number between 14-24, it would have been obvious to use a mixture of compounds of Formula (I) as they would predictably provide natural antioxidation to food.
Regarding claim 11, as stated above, Barden teaches that low-moisture food having a water activity below 0.5 (Introduction, page 2467).
Regarding claim 13, Korycinska discloses the compound of Formula (I), wherein n can be 14-24 (See Fig. 1, pg 1014) and therefore the alkyl chain can be C15-25.
Regarding claim 14, as stated above with respect to claims 7-8, it would have been obvious to add a second type of antioxidant as it is well known in the art to use a combination of antioxidants as taught by Barden.
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, as the prior art teaches the use of a mixture of antioxidants, it would have been obvious to use a second type of antioxidant.
Regarding claim 15, it would have been obvious to further substitute the alkyl chain in Korycinska with a further alky, or methyl group, as Korycinska teaches that longer chains provide better oxidation benefits (page 1014).
Regarding claim 16, the prior art teaches the composition as described above with respect to claim 1. Barden further teaches that antioxidants preserve food (page 2478). Therefore, the combination of the prior art teaches that the composition of claim 1 is a preservative.
Response to Arguments
Applicant's arguments with respect to the 103 rejection have been fully considered but they are not persuasive.
Applicant argues on pages 6-8 that the cited art references have not been considered in their entireties. Applicant states that Korycinska teaches that the antioxidant activity demonstrated by tocopherol was more stable and longer lasting than the antioxidant activity demonstrated by alkylresorcinol homologues and therefore one of ordinary skill in the art would have had no reasons to use the alkylresorcinol homologues over the tocopherol controls in the low moisture food of Barden.
This is not found persuasive because, as a whole, Korycinska still suggests that alkylresorcinol homologues are useful as antioxidants. As stated in MPEP 2123: The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983)
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).
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)
Therefore, even though Korycinska teaches that tocopherols perform better, Korycinska still teaches that alkylresorcinol homologues have antioxidant properties in food and therefore suggests the use of the claimed composition as an antioxidant in food.
Regarding applicant’s argument on pages 8-9 that Korycinska teaches away from use alkylresorcinol homologues, the examiner notes that 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). Therefore, as Korycinska teaches alkylresorcinol homologues as antioxidants, this argument is not found persuasive.
Applicant further argues on pages 9-10 that Korycinska does not characterize the whole-grain cereal samples as low-moisture foods having a water activity equal to or less than 0.85 and further that Barden fails to disclose that whole-grain cereal samples in Korycinska are low moisture food. This is not found persuasive as the examiner is not relying up the use of the whole-grain cereal samples as the low moisture food, but merely to show that alkylresorcinol homologues are well known in the art to be combined with a food product and provide antioxidant properties. Therefore, as low-moisture food antioxidant activity is a well known problem as taught by Barden, it would have been obvious to have the antioxidant composition of Korycinska further comprise a low-moisture food as taught by Barden as Korycinska teaches that the claimed antioxidant compound is useful as natural antioxidant in food and Barden recognizes the importance need of natural antioxidants in low-moisture foods. Therefore, the combination of Korycinska with Barden yields the predictable result of effectively prevent oxidation in low-moisture foods by combining a natural antioxidant with a low-moisture food product.
Regarding applicant’s argument on pages 10-11 that it would not have been expected that alkylresorcinol homologues could successfully protect low-moisture foods as claimed, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Korycinska clearly teaches that alkylresorcinol homologues have antioxidant properties in food and therefore suggest their use in any food product, including low-moisture food.
In response to applicant's argument on pages 11-13 that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., antioxidant efficiency for an extended period of time, suppressing hydroperoxide formation for up to 100 days, protect against oxidation for up to 160 days) 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). Further, the examiner notes that the antioxidant efficiency is dependent on how much is added to the food product, which is also not claimed.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791