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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 15, 2026 has been entered.
Claims 1, 3-11, and 18-20 are pending, and claims 12-17 remain withdrawn from consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-9 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bouquerand et al. (2019/0045824 A1).
With respect to Claim 1, Bouquerand et al. teaches an oil-in-water emulsion, wherein the oil is 50% lemon flavor, the water is 25%, and a water-soluble matrix is present at 25%. [0108] The emulsion is applied to a native starch with a moisture content of 4.1% at a ratio of 500:107.7, or 4.64. [0111] The native starch at a moisture content of 4.1%, coincides with a water activity of less than 60%, or 0.6. [Fig. 2] Bouquerand et al. teaches that this process is performed at room temperature, [0049] and the native starch reads on an insoluble food carrier. Therefore, the process taught by Bouquerand et al. anticipates the process of claim 1.
With respect to Claims 3-5, Bouquerand et al. teaches three potential embodiments of the invention described, one with freely dispersed flavor oil (as recited in claim 3), one with encapsulated flavor oil (as recited in claim 5), and one with a mixture of free and encapsulated flavor oil (as recited in claim 4). [0057] MPEP 2131.02 III states, “A reference disclosure can anticipate a claim when the reference describes the limitations but 'd[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination”. Therefore, Bouquerand et al. teaching that the flavor oil can be used in any of the three forms recited in claims 3-5 anticipates those claims.
With respect to Claims 6 and 20, Bouquerand et al. anticipates the invention recited in claim 1, but is silent to the viscosity of the oil-in-water emulsion. MPEP 2112.01 I states, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”.
The composition taught by Bouquerand et al. is identical to the composition recited in claim 1, and would therefore possess the same properties as the recited invention of a viscosity of either 500 or 800mPa.s, wherein the viscosity is measured at 25°C with a shear rate of 100 s-1--. Therefore, Bouquerand et al. anticipates the invention recited in claims 6 and 20.
With respect to Claims 7 and 8, Bouquerand et al. teaches a modified starch for use as a water-soluble matrix, [0108] and the emulsifier recited in claim 1 is optional.
With respect to Claim 9, Bouquerand et al. teaches 50% flavor oil and 25% modified starch. [0108]
With respect to Claim 18, the anticipation of claim 1 teaches all limitations of Claim 19, except the ratio of oil phase:water phase greater than 1, but does teach, generally, that the weight ratio between the oil phase and the aqueous phase can be greater than 1. [0013] MPEP 2131.02 III states, “A reference disclosure can anticipate a claim when the reference describes the limitations but 'd[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination”. One of ordinary skill in the art would have been able to clearly envisage a method according the example 1, wherein the emulsion has a ratio of oil:water phase greater than 1. Therefore, Bouquerand et al. anticipates claim 18.
With respect to Claim 19, the anticipation of claim 1 teaches all limitations of Claim 19, except the water activity of below 0.5. The native starch at a moisture content of 4.1% taught by Bouquerand et al., coincides with a water activity of less than 50%, or 0.5. [Fig. 2]
Claim Rejections - 35 USC § 103
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, 3-5, 7-11, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Looft et al. (US 2015/0230491 A1) in view of Bouquerand et al. (US 2019/0045824).
With respect to Claim 1, Looft et al. teaches a method of creating a flavor composition [0042] comprising a flavor, [0043] a water-soluble matrix, [0044] an insoluble carrier material, [0045] and, optionally, an emulsifier, [0059] wherein the components are about 5-30% flavor and 15-40% matrix. [0050] The method of Looft et al. is performed by adding the flavor oil to the water-soluble matrix [0059] and coating the mixture on to the carrier particles. [0099-101] The weight ratio of oil to matrix overlaps with the ratio recited in claim 1, step a. The step of blending with the carrier reads on the blending in step b, but does not teach blending at room temperature. Additionally, the use of tea leaves as a carrier [0077] is identical to the carrier disclosed in the instant specification, [Pg. 9, Ln. 21-22] and would therefore possess the same property of a water activity below 0.6. In a specific embodiment, Looft et al. teaches a ratio between the carrier and the emulsion of about 1:1. [0136]
Looft et al. is silent to blending at room temperature, a process which is free of any drying step, and a weight ratio between the emulsion and the carrier between 2 and 32.
Bouquerand et al. presents a method for preparing an oil-in-water emulsion [0009] containing an oil phase comprising a flavor oil, [0010] an aqueous phase comprising a water-soluble carrier, [0011] and, optionally, an emulsifier. [0012] Additionally, the weight ratio between the oil phase and the aqueous phase is greater than 1 [0013] and the emulsion is blended at room temperature with a desiccant powder [0014] and obtained as a dry powder. [0015] Bouquerand et al. does not teach a specific temperature for the method, but does teach performing at room temperature, as recited in claim 1 step b. In a specific embodiment, the ratio between the desiccant and the emulsion is about 5:1. [0111]
Looft et al. and Bouquerand et al. exist within the same field of endeavor in that they teach the production and use of a flavor composition. Where Looft et al. teaches a method comprising the use of tea leaves and tea dust, Bouquerand et al. teaches a method that occurs at room temperature. Additionally, Bouquerand et al. states that the method presented is preferable to traditional drying methods due to the retention of flavor and reduction of volatile loss as well as the lack of a heating step in the drying process. [0050]
It would have been obvious to one of ordinary skill to substitute the desiccant in Bouquerand et al. with the carrier in Looft et al. due to the identical function of the materials. MPEP 2144.06 II, “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art”. Additionally, MPEP 2144.05 I states, “A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case”. A range created from the example taught in Bouquerand et al. and Looft et al. would comprise a range from about 1-5:1. This range of carrier material overlaps with the range recited in claim 1, and MPEP 2144.05 I 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”.
The process taught by Looft et al., wherein the ratio of carrier to emulsion overlaps with the ratio recited in claim 1 and the blending occurs at room temperature, as taught in Bouquerand et al. teaches a method that is fundamentally identical to the process recited in claim 1. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established”. Therefore, the process that would have resulted from the combination of Looft et al. in view of Bouquerand et al. would have fundamentally identical properties, such as the lack of water loss during the blending step and the water activity of the carrier material.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Looft et al. in view of Bouquerand et al. in order to develop a method for producing a flavor composition comprising the steps of mixing a flavor oil with a water-soluble matrix and blending with an insoluble food carrier at room temperature, specifically between 20-30°C, wherein the food carrier has a water activity less than 0.6, the blending step if free from a drying step, and the weight ratio between the carrier and the emulsion is between 2-32:1, thereby rendering claim 1 obvious.
With respect to Claim 3-5, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, Bouquerand et al. describes three potential embodiments of the invention described, one with freely dispersed flavor oil (as recited in claim 3), one with encapsulated flavor oil (as recited in claim 5), and one with a mixture of free and encapsulated flavor oil (as recited in claim 4). [0057] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have produced the invention described in claim 1 with a freely dispersed oil, an encapsulated oil, or a mixture of freely dispersed and encapsulated oil emulsion by utilizing the process described in Bouquerand et al. and applying it to the medium designed for retaining the emulsion as described in Looft et al.
With respect to Claim 7 and 8, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, Looft et al. teaches that the water-soluble matrix may be maltodextrin [0064] and the emulsifier may be esters of fatty acids. [0070] Therefore, Looft et al. in view of Bouquerand et al. renders claims 7 and 8 obvious.
With respect to Claim 9, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, Looft et al. teaches the components comprise about 5-30% flavor and 15-40% matrix. [0050] These ranges overlap with the ranges recited in claim 9, and MPEP 2144.05 I 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”. Therefore, Looft et al. in view of Bouquerand et al. renders claim 9 obvious.
With respect to Claim 10 and 11, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, Looft et al. teaches the use of tea leaves as a carrier for the emulsion. [0077] Therefore, Looft et al. in view of Bouquerand et al. renders claims 10 and 11 obvious.
With respect to Claim 18, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, the ranges of components in the emulsion are about 5-30% flavor and 15-40% matrix. [0050] The range overlaps with the range recited in claim 18, and MPEP 2144.05 I 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”. Therefore, Looft et al. in view of Bouquerand et al. renders claim 18 obvious.
With respect to Claim 19, Looft et al. in view of Bouquerand et al. teaches the invention recited in claim 1. Additionally, Looft et al. teaches the use of tea leaves as a carrier for the emulsion, [0077] which is identical to the carrier disclosed in the instant specification, [Pg. 9, Ln. 21-22] and would therefore possess the same property of a water activity below 0.5. Therefore, Looft et al. in view of Bouquerand et al. renders claim 19 obvious.
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Looft et al. (US 2015/0230491 A1) in view of Bouquerand et al. (2019/0045824) as applied to claim 1 above, and further in view of Bayarri et al. (The Role of Fat in Flavor Perception: Effect of Partition and Viscosity in Model Emulsions).
With respect to Claims 6 and 20, Looft et al. with Bouquerand et al. teaches the invention recited in claim 1. All references are silent to the viscosity of the emulsion.
Bayarri et al. presents a study analyzing the connection between viscosity and aroma in oil-in-water emulsions, and how they relate to flavor perception. [Page 8863, Col. 1, Par. 1] Bayarri et al. uses an emulsion with 1% by weight of an emulsifier [Page 8863, Col. 1, Par. 3] and the viscosity is measured at 22°C at shear rates between 1 and 100 s-1. [Page 8863, Col. 1, Par. 5] The results are presented in a graph that show emulsions with a value of greater than 800mPa at a shear rate of 100 s-1. A range that overlaps with the limitation recited in claims 6 and 20. [Figure 1] Additionally, Bayarri et al. states that aroma is constant for different viscosities, but flavor can be controlled to a desired outcome. [Page 8867, Col. 1, Par. 3]
Bouquerand et al., Looft et al. and Bayarri et al. are in the same field of endeavor in that Bayarri et al. is a study that analyzes the properties of oil-in-water emulsions as they relate to flavor. Bayarri et al. presents a motivation for controlling the viscosity in order to modify the flavor release of the invention while maintaining the aroma release. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the process and materials presented by Looft et al. and Bouquerand et al. in order to produce the invention in claim 1 and the knowledge of the relationship between viscosity and rheological flavors presented in Bayarri et al. to create an emulsion with a viscosity measured above either 500 mPa or 800 mPa at a shear rate of 100 s-1 at 25°C, thereby rendering obvious claims 6 and 20.
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bouquerand et al. (2019/0045824) as applied to claim 1 above, and further in view of Bayarri et al. (The Role of Fat in Flavor Perception: Effect of Partition and Viscosity in Model Emulsions).
With respect to Claims 6 and 20, Bouquerand et al. teaches the invention as recited in claim 1, but is silent to the viscosity of the emulsion.
Bayarri et al. presents a study analyzing the connection between viscosity and aroma in oil-in-water emulsions, and how they relate to flavor perception. [Page 8863, Col. 1, Par. 1] Bayarri et al. uses an emulsion with 1% by weight of an emulsifier [Page 8863, Col. 1, Par. 3] and the viscosity is measured at 22°C at shear rates between 1 and 100 s-1. [Page 8863, Col. 1, Par. 5] The results are presented in a graph that show emulsions with a value of greater than 800mPa at a shear rate of 100 s-1. A range that overlaps with the limitation recited in claims 6 and 20. [Figure 1] Additionally, Bayarri et al. states that aroma is constant for different viscosities, but flavor can be controlled to a desired outcome. [Page 8867, Col. 1, Par. 3]
Bouquerand et al. and Bayarri et al. are in the same field of endeavor in that Bayarri et al. is a study that analyzes the properties of oil-in-water emulsions as they relate to flavor. Bayarri et al. presents a motivation for controlling the viscosity in order to modify the flavor release of the invention while maintaining the aroma release. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the process and materials presented Bouquerand et al. in order to produce the invention in claim 1 and the knowledge of the relationship between viscosity and rheological flavors presented in Bayarri et al. to create an emulsion with a viscosity measured above either 500 mPa or 800 mPa at a shear rate of 100 s-1 at 25°C, thereby rendering obvious claims 6 and 20.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-11, and 18-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791