DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 03/13/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment and/or persuasive remarks: (1) the 35 U.S.C. §112(a) rejections of claims 1, 3-4,7-8, 16, and 19-20 have been withdrawn; and (2) the 35 U.S.C. §112(b) rejections of claims 1, 3-4, 7-8, 16, and 19-20 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3-4, 7-8, 11-16, 19-20
Withdrawn claims: 11-15
Previously cancelled claims: 2, 5-6, 9-10, 17-18
Newly cancelled claims: None
Amended claims: 1
New claims: None
Claims currently under consideration: 1, 3-4, 7-8, 16, 19-20
Currently rejected claims: 1, 3-4, 7-8, 16, 19-20
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/13/2026 has been entered.
Claim Rejections - 35 USC § 102
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 1, 4, 7-8, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Putter (US 2013/0136836; IDS citation).
Regarding claims 1, 4, 7, 8, and 19, Putter teaches a flavor composition (corresponding to composition X) comprising: (i) 2-hydroxy-4-methoxybenzaldehyde (corresponding to 4-methoxy salicylaldehyde) along with 4-hydroxy-3,5-dimethoxy-benzaldehyde (corresponding to syringaldehyde); massoia bark extracts (corresponding to massoia lactone); and whisky extract (corresponding to whiskey lactone) [0066]-[0070]; [0268]-[0270]. Putter teaches that the composition further comprises 15-55 wt.% naringin such as 30-40 wt.% naringin; and that the composition comprises a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde of 10,000:1 to 40,000:1 [0072], [0300], [0308]. From the disclosure of a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde and the disclosure of a naringin concentration of 30-40 wt.%, Putter teaches that the concentration of component (i) in the composition may be from 7.5 ppm (i.e., 40,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 30 wt.% naringin) to 40 ppm (i.e., 10,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 40 wt.% naringin), which falls within the claimed concentration range recited in present claim 1.
Since Putter teaches the inclusion of 4-hydroxy-3,5-dimethoxy-benzaldehyde in a composition, Putter teaches that the composition comprises (ii) at least one ingredient capable of imparting a characteristic flavor note associated with (a) a phenolic note from the recited group as required by present claim 1. Since Putter teaches the inclusion of massoia bark extracts in its composition, Putter teaches that the composition comprises (ii) at least one ingredient capable of imparting a characteristic flavor note associated with (c) brown flavors note as required by present claims 1 and 4. Since Putter teaches the inclusion of whiskey extract in its composition, Putter teaches that the composition comprises (ii) at least one ingredient capable of imparting a characteristic flavor note associated with (d) alcoholic beverages note from the recited group as required by present claims 1 and 7.
Also, since Putter teaches the inclusion of a combination of (a) phenolic note; (c) brown flavors note; and (d) alcoholic beverages note, Putter teaches that the composition comprises at least one ingredient capable of imparting a characteristic flavor note associated with phenolic note and at least one ingredient capable of imparting characteristic flavor note associated with brown flavors note and alcoholic beverages note as required by present claims 8 and 19.
Regarding claim 20, Putter teaches the invention as described above in claim 1, including the composition further comprises a sweetener [0085], trigeminal sensates, and taste modulators (these last two components correspond to naringin) [0066].
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by John (US 2007/0160730; IDS citation).
Regarding claims 1 and 3, John teaches a flavor composition (corresponding to foodstuff) comprising (i) 2-hydroxy-4-methoxybenzaldehyde, wherein the concentration of 2-hydroxy-4-methoxybenzaldehyde in the composition may be greater than about 0.1 ppm, such as from about 1 ppm to about 5 ppm ([0010], [0017], claims 1 and 2). The disclosed concentration of about 1 ppm to about 5 ppm falls within the claimed concentration recited in present claim 1. John teaches that the foodstuff may be milk, yogurt, ice cream, and other dairy products ([0020], [0028], [0040], claims 1, 2, and 4). Milk, yogurt, ice cream, and other dairy products are encompassed by the category of “dairy extracts and processed dairy products” as recited in present claim 3. Since John discloses that the composition may be milk, yogurt, ice cream, and other dairy products, John teaches that the composition comprises (ii) at least one ingredient capable of imparting a characteristic flavor note associated with (b) dairy and meaty notes selected from the recited group as required by present claims 1 and 3.
Claim Rejections - 35 USC § 103
Claims 1, 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over by Putter (US 2013/0136836; IDS citation).
Regarding claims 1, 8 and 16, Putter teaches a second flavor composition (corresponding to a consumable product composition) comprising a first flavor composition (corresponding to composition X) [0158]. Putter teaches that the first flavor composition comprises: (i) 2-hydroxy-4-methoxybenzaldehyde (corresponding to 4-methoxy salicylaldehyde) and 4-hydroxy-3,5-dimethoxy-benzaldehyde (corresponding to syringaldehyde) [0066]-[0070]; [0268]-[0270]. Putter teaches that the composition further comprises 15-55 wt.% naringin; and that the composition comprises a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde is 50:1 to 200,000:1 [0072], [0076]. From these disclosures, Putter teaches that the concentration of component (i) 2-hydroxy-4-methoxybenzaldehyde in the first composition may be from 0.75 ppm (i.e., 200,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 15 wt.% naringin) to 11,000 ppm (i.e., 50:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 55 wt.% naringin).
Putter teaches that the first flavor composition may be added to yogurt and strawberries [0135]-[0137], [0618] to form the second flavor composition; and that the second flavor composition comprises the first flavor composition in a concentration of 0.01 wppm to 50 wppm [0158]. Since the first flavor composition may comprise component (i) in an amount of from 0.75 ppm to 11,000 ppm as described above; and the second flavor composition may comprise the first flavor composition in a concentration of 0.01 wppm to 50 wppm, the second flavor composition may comprise component (i) in an amount from 7.5x10-11 ppm (i.e., a second composition containing 0.01 ppm of the first composition wherein the first composition contains 0.75 ppm of 2-hydroxy-4-methoxybenzaldehyde) to 0.5 ppm (i.e., a second composition containing 50 ppm of the first composition wherein the first composition contains 11,000 ppm of 2-hydroxy-4-methoxybenzaldehyde). This concentration range overlaps the concentration range of 2-hydroxy-4-methoxybenzaldehyde recited in present claim 1.
It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
The yogurt disclosed in [0618] of Putter is encompassed by the category of “dairy extracts and processed dairy products” as recited in present claim 16. Since Putter teaches the inclusion of 4-hydroxy-3,5-dimethoxy-benzaldehyde along with the yogurt and strawberries in the second flavor composition, Putter teaches a flavor composition comprising at least one ingredient capable of imparting a characteristic flavor note associated with fruits notes (corresponding to strawberries), (a) phenolic notes (corresponding to 4-hydroxy-3,5-dimethoxy-benzaldehyde), and (b) dairy and meaty notes (corresponding to yogurt) selected from the recited group as required by present claims 8 and 16.
Double Patenting
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of co-pending Application No. 19/281,486 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 requires the features of co-pending claims 1 and 5-7. The flavor composition of instant claim 1 comprises 2-hydroxy-4-methoxybenzaldehyde and an ingredient capable of imparting a characteristic flavor note associated with a phenolic note selected from a list comprising phenol, 2-methoxyphenol, 2-methoxy-4-vinyl-phenol, 4-methyl-phenol, 2-methoxy-4-(2-propen-1-yl)phenol, 2-methoxy-4-(1-propen-1-yl)phenol, 2-methoxy-4-methyl-phenol, 2-ethoxy-5-(1-propenyl)phenol, 4-ethenylphenol, 4- methoxybenzaldehyde, 4-methoxy-benzoic acid, 1,3-benzodioxole-5- carbaldehyde, and a combination thereof . The flavoring/perfuming composition of co-pending claims 1 and 6-7 also requires a combination of 2-hydroxy-4-methoxybenzaldehyde and an ingredient selected from a list comprising phenol, 2-methoxyphenol, 2-methoxy-4-vinyl-phenol, 4-methyl-phenol, 2-methoxy-4-(2-propen-1-yl)phenol, 2-methoxy-4-(1-propen-1-yl)phenol, 2-methoxy-4-methyl-phenol, 2-ethoxy-5-(1-propenyl)phenol, 4-ethenylphenol, 4- methoxybenzaldehyde, 4-methoxy-benzoic acid, 1,3-benzodioxole-5- carbaldehyde, and a combination thereof. Therefore, the composition of co-pending claims 1 and 6-7 requires the same features as the composition of instant claim 1 with the exclusion of a 2-hydroxy-4-methoxybenzaldehyde concentration of at least 0.01 ppm.
Co-pending claims 1 and 6-7 do not recite a concentration of 2-hydroxy-4-methoxybenzaldehyde in the composition. However, co-pending claim 5 recites a concentration of 2-hydroxy-4-methoxybenzaldehyde which overlaps the concentration recited in present claim. In light of the 2-hydroxy-4-methoxybenzaldehyde concentration in co-pending claim 5 and in the absence of a 2-hydroxy-4-methoxybenzaldehyde concentration recited in co-pending claims 1, 6, and 7, the co-pending claims are considered to render the presently claimed 2-hydroxy-4-methoxybenzaldehyde concentration obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Claim Rejections – 35 U.S.C. §112(a) of claims 1, 3-4, 7-8, 16, and 19-20: Applicant amended the claims to fully address the rejections. Therefore, the rejections are withdrawn.
Claim Rejections – 35 U.S.C. §112(b) of claims 1, 3-4, 7-8, 16, and 19-20: Applicant stated that “ppm” recited in present claim 1 refers to ppm based on weight per page 2, lines 23-24 of the present specification.
The rejections are withdrawn with the understanding that “ppm” refers to ppm based on the total weight of the flavor composition.
Claim Rejections – 35 U.S.C. §102(a)(1) of claims 1, 4, 7-8, and 19-20 over Putter: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the anticipation rejections over Putter.
Applicant amended claim 1 to recite that the concentration of 2-hydroxy-4-methoxybenzaldehyde in the composition is 0.0.01-50 ppm based on the total weight of the composition. Applicant then argued that Putter does not teach or suggest a concentration within this claimed range as Putter merely teaches a weight ratio, and thus a relationship, between 2-hydroxy-4-methoxybenzaldehyde and naringin. Applicant argued that a skilled practitioner would not have selected, optimized, or controlled the absolute ppm concentration of 2-hydroxy-4-methoxybenzaldehyde from the teachings of Putter. Applicant then argued that Putter does not teach the claimed concentration of 2-hydroxy-4-methoxybenzaldehyde as a result-effective variable. Applicant argued that the Office’s back-calculation of an amount of 2-hydroxy-4-methoxybenzaldehyde demonstrates that Putter does not suggest independently selecting a concentration of 2-hydroxy-4-methoxybenzaldehyde; and that the Office’s back-calculation is insufficient per MPEP 2144.05(II)(B) (Applicant’s Remarks, page 9, 1st paragraph under section (i) – page 10, 1st paragraph; page 10, 4th paragraph , page 11, 3rd paragraph).
However, the Examiner points out that, not only does Putter disclose that the composition comprises a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde of 10,000:1 to 40,000:1, but Putter also discloses that the concentration of naringin in the composition is 30-40 wt.% [0072], [0300], [0308]. From the disclosure of a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde and the disclosure of a naringin concentration of 30-40 wt.%, a skilled practitioner would readily recognize that the concentration of 2-hydroxy-4-methoxybenzaldehyde in the composition may be from 7.5 ppm (i.e., 40,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 30 wt.% naringin) to 40 ppm (i.e., 10,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 40 wt.% naringin), especially since such a calculation based on the weight ratio and naringin concentration disclosed in Putter was provided by the Examiner. This concentration of 7.5-40 ppm 2-hydroxy-4-methoxybenzaldehyde falls within the claimed concentration as now recited by amended claim 1.
In response to Applicant’s assertion that Putter does not teach the claimed concentration of 2-hydroxy-4-methoxybenzaldehyde as a result-effective variable, the present rejections describe the claimed concentration of 2-hydroxy-4-methoxybenzaldehyde as being anticipated by Putter and do not mention the concentration of 2-hydroxy-4-methoxybenzaldehyde being a result-effective variable at all. Therefore, Applicant’s arguments directed to such a position are unpersuasive.
In response to Applicant’s assertion that the Office’s back-calculation of an amount of 2-hydroxy-4-methoxybenzaldehyde demonstrates that Putter does not suggest independently selecting a concentration of 2-hydroxy-4-methoxybenzaldehyde, there is no reason why the concentration of 2-hydroxy-4-methoxybenzaldehyde needs to be selected independently of the concentration of naringin or any other compound. Therefore, Applicant’s arguments directed to such a position are unpersuasive.
In response to Applicant’s assertion that the Office’s back-calculation is insufficient per MPEP 2144.05(II)(B), MPEP 2144.05(II)(B) refers to “routine optimization” being used as a basis of rejection. The present rejections describe the claimed concentration of 2-hydroxy-4-methoxybenzaldehyde as being anticipated by Putter based on disclosures of a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde and of a concentration of naringin disclosed by Putter. Therefore, Applicant’s arguments directed to routine optimization are unpersuasive.
Applicant then argued that Putter does not treat 2-hydroxy-4-methoxybenzaldehyde as being an essential component of its composition as Putter teaches a preferred embodiment that does not comprise 2-hydroxy-4-methoxybenzaldehyde in [0071]. Applicant stated that the preferred teachings of Putter further underscore that Putter neither teaches nor suggests the claimed use of -hydroxy-4-methoxybenzaldehyde in a concentration of 0.01-50 ppm (Applicant’s Remarks, page 10, 2nd paragraph).
However, “[d]isclosed 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) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” MPEP 2123.II. Putter expressly discloses embodiments comprising 2-hydroxy-4-methoxybenzaldehyde [0066]-[0070], [0308]; and Putter does not criticize, discredit, or otherwise discourage the use of 2-hydroxy-4-methoxybenzaldehyde in its composition. Therefore, Putter provides sufficient teaching regarding the incorporation of 2-hydroxy-4-methoxybenzaldehyde in its composition. Putter is shown to also provide sufficient teaching regarding a concentration of 2-hydroxy-4-methoxybenzaldehyde as described in the rejection of amended claim 1 and the response to Applicant’s arguments above.
Applicant then argued that Putter discloses extremely broad possibilities of 2-hydroxy-4-methoxybenzaldehyde concentrations, including concentrations which far exceed the maximum 50 ppm recited in present claim 1. Applicant argued that an overlapping or touching range disclosed by prior art only anticipates the claimed range if the overlapping or touching range is disclosed in the prior art with sufficient specificity; and that Putter does not disclose the claimed range with this sufficient specificity (Applicant’s Remarks, page 10, 3rd paragraph).
However, as described above in the anticipation rejection of amended claim 1 over Putter and the response to Applicant’s arguments above, Putter is shown to disclose a concentration of 2-hydroxy-4-methoxybenzaldehyde in its composition of 7.5-40 ppm. This concentration of 7.5-40 ppm 2-hydroxy-4-methoxybenzaldehyde falls within the claimed concentration as now recited by amended claim 1. Therefore, Applicant’s arguments directed toward sufficient specificity are unpersuasive.
Since the prior art has been shown to teach the features of the claims and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §102(a)(1) of claims 1 and 3 over John: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the rejections over John.
Applicant argued that John does not disclose a concentration of 2-hydroxy-4-methoxybenzaldehyde of 0.01-50 ppm as now recited by amended claim 1. Applicant argued that John teaches significantly different values that are greater than 0.1 ppm, including about 1 to about 5 ppm. Applicant argued that an overlapping or touching range disclosed by prior art only anticipates the claimed range if the overlapping or touching range is disclosed in the prior art with sufficient specificity; and that John does not disclose the claimed range with this sufficient specificity (Applicant’s Remarks, page 11, 1st paragraph under section (ii) – page 12, 1st paragraph).
However, as described above in the rejection of amended claim 1 over John, John teaches a flavor composition comprising (i) 2-hydroxy-4-methoxybenzaldehyde, wherein the concentration of 2-hydroxy-4-methoxybenzaldehyde in the composition may be greater than about 0.1 ppm, such as from about 1 to about 5 ppm ([0010], [0017], claims 1 and 2). This concentration of about 1 ppm to about 5 ppm disclosed by John falls within the claimed concentration recited in present claim 1. Since the concentration disclosed by the prior art falls within the claimed concentration, Applicant’s argument regarding sufficient specificity is unpersuasive.
Applicant then argued that the Office has not cited John as teaching any specific ingredients capable of imparting a characteristic flavor note associated with components (a)-(d) of present claim 1 as the Office merely cited John for teaching foodstuff that may be milk, yogurt, ice cream, or other dairy products (Applicant’s Remarks, page 12, 2nd-3rd paragraphs).
However, present claim 3 recites that the ingredients capable of imparting a characteristic flavor note associated with dairy and meaty notes include “dairy extracts and processed dairy products”. The milk, yogurt, ice cream, or other dairy products disclosed in John are dairy products and thus contain “dairy extracts” and/or are “processed dairy products”. Furthermore, lines 17-19 on page 6 of the present specification specifically state that milk and yogurt impart dairy flavor. As such, milk, yogurt, ice cream, or other dairy products meet the requirements of claims 1 and 3 regarding dairy and meaty flavor notes.
Since the prior art has been shown to teach the features of the claims and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claims 1, 8, and 16 over Putter: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the rejections over Putter.
Applicant argued that Putter prefers very low amounts of 2-hydroxy-4-methoxybenzaldehyde such as 0.0001-0.001 ppm as demonstrated by [0541] and the working examples of Putter. Applicant argued that nothing in Putter suggests increasing the concentration of 2-hydroxy-4-methoxybenzaldehyde by one or more orders of magnitude to reach the claimed concentration range (Applicant’s Remarks, page 12, 1st paragraph under section (i)- page 13, 1st paragraph).
However, “[d]isclosed 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). As described above in the rejection of claim 1 over Putter, Putter teaches a second flavor composition (corresponding to a consumable product composition) comprising a first flavor composition (corresponding to composition X) [0158]. Putter teaches that the first flavor composition comprises: (i) 2-hydroxy-4-methoxybenzaldehyde (corresponding to 4-methoxy salicylaldehyde) and 4-hydroxy-3,5-dimethoxy-benzaldehyde (corresponding to syringaldehyde) [0066]-[0070]; [0268]-[0270]. Putter teaches that the composition further comprises 15-55 wt.% naringin; and that the composition comprises a weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde of 50:1 to 200,000:1 [0072], [0076]. From these disclosures, Putter teaches that the concentration of component (i) 2-hydroxy-4-methoxybenzaldehyde in the first composition may be from 0.75 ppm (i.e., 200,000:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 15 wt.% naringin) to 11,000 ppm (i.e., 50:1 weight ratio of naringin to 2-hydroxy-4-methoxybenzaldehyde with 55 wt.% naringin).
Putter teaches that the first flavor composition may be added to yogurt and strawberries [0135]-[0137], [0618] to form the second flavor composition; and that the second flavor composition comprises the first flavor composition in a concentration of 0.01 wppm to 50 wppm [0158]. Since the first flavor composition may comprise component (i) in an amount of from 0.75 ppm to 11,000 ppm as described above; and the second flavor composition may comprise the first flavor composition in a concentration of 0.01 wppm to 50 wppm, the second flavor composition may comprise component (i) in an amount from 7.5x10-11 ppm (i.e., a second composition containing 0.01 ppm of the first composition wherein the first composition contains 0.75 ppm of 2-hydroxy-4-methoxybenzaldehyde) to 0.5 ppm (i.e., a second composition containing 50 ppm of the first composition wherein the first composition contains 11,000 ppm of 2-hydroxy-4-methoxybenzaldehyde). This concentration range overlaps the concentration range of 2-hydroxy-4-methoxybenzaldehyde recited in present claim 1. Therefore, Putter provides sufficient reasoning and motivation to obtain the claimed concentration of 2-hydroxy-4-methoxybenzaldehyde.
Applicant then argued that Putter is concerned with modifying, masking, reducing, and/or suppressing unpleasant off-taste, aftertaste, or lingering sweetness of a sweetener while the present invention is directed to building complex flavor accords and enhancing fullness, roundness, and aromatic complexity in consumable products. Applicant stated that skilled practitioner would not have been motivated to modify the concentration of 2-hydroxy-4-methoxybenzaldehyde to arrive at the presently claimed concentration without impermissible hindsight (Applicant’s Remarks, page 12, 2nd-3rd paragraphs).
However, it is noted that the features upon which applicant relies (i.e., the claimed composition builds complex flavor accords and enhances fullness, roundness, and aromatic complexity) 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).
Putter is shown to render the features of present claim 1, including disclosing a 2-hydroxy-4-methoxybenzaldehyde concentration that overlaps the claimed concentration. The purpose of modifying, masking, reducing, and/or suppressing unpleasant off-taste, aftertaste, or lingering sweetness of a sweetener disclosed by Putter is considered to encompass the asserted building complex flavor accords and enhancing fullness, roundness, and aromatic complexity. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Since the prior art has been shown to teach the features of the claims and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Double Patenting Rejection: Applicant requested withdrawal of the rejections due to the present response (Applicant’s Remarks, page 13, section VI).
The double patenting rejection is maintained as written herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KELLY P KERSHAW/Examiner, Art Unit 1791