DETAILED ACTION
Background
The amendment dated November 13, 2025 (amendment) amending claims 1 and 16 and canceling claim 10 has been entered. Claims 1-9 and 11-20 as filed with the amendment have been examined. In view of the amendment, all outstanding claim objections have been withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 13, 2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-8 and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 4-6 and 9 of copending Application No. 17/283,065 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of both applications recite a method for the preparation of a flavouring by providing a reaction mixture of the same yeast extract, at least 2 wt.% of the same mineral acid or organic acid, which overlaps the at least 1 wt.% recited in claim 1; at least 10 wt.% of water, which lies within the recited from 0 to 20 wt% in claim 1, and heating at temperatures of 90 to 160 °C, which overlaps the claimed 150 to 220 °C for overlapping periods of time including from 1 to 15 minutes. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. Further, the Office considers any mixing as “shear” and kneading as claim 1 recites shear and kneading, without more.
The process of the copending application would in turn provide the composition of claims 13 and 14 in the instant application.
Regarding claims 2 and 4-5, claim 2 of the reference application corresponds to claim 2, claim 4 of the reference application corresponds to claim 4, claim 5 of the reference application corresponds to claim 5.
Regarding claims 6-7, claim 6 of the reference application reciting 2 wt.% or more of an organic acid lies within the claimed at least 1 wt.% of an organic acid. See MPEP 2144.05.I.
Regarding claim 8, claim 9 of the reference application recites a pH of 4-5 that lies within the claimed pH of 3.5 to 6.0.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-9, 11-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0165304 A1 to Kortes et al. (Kortes), of record, in view of WO 2016/185233 to Cepanec et al. (Cepanec), of record, and US 3,645,753 to Gasser (Gasser).
Unless otherwise stated, all percent units (%) are read as weight percent (wt%), and mass % is read as interchangeable with weight %.
Regarding the instant claims 1-3, 5, 9, 11 and 13, Kortes at Abstract discloses a method to produce a food or feed flavour (“natural flavouring composition”- claim 13) comprising incubating a composition comprising a cysteine and/or glutathione under conditions of temperature and reaction time sufficient for the feed or food flavour to develop (claim 9). In Example 1 at [0025]-[0027] and accompanying Table 1, Kortes discloses a method of extruding (claim 11) a reaction mixture of 20 parts of a yeast extract (“second yeast extract” in claims 2 and 3) containing 15 wt% glutathione (claim 5 as a “thiol containing compound” in claims 1, 2 and 3), based on the dry matter weight of the yeast, and 78 parts of a yeast extract sold as GISTEX LS powder (“first yeast extract”) in a reaction mixture containing 1 wt% water. Kortes discloses extruding (“incubating the reaction mixture wherein shear is applied to the reaction mixture”) for 1 minute at 175°C and 180°C to make a natural flavouring composition as a chicken flavor. the Office considers the claimed incubating the reaction mixture for a time t (minutes) according to the formula: t= 240000۰℮-bT where: 150°C < T < 220°C, and 0.062 < b < 0.072 which converts to incubating for about 0.031 to about 21 minutes to include the 1 minute incubation disclosed in Kortes at Example 1. Moreover, Kortes discloses at [0017] that at higher incubation temperatures the incubation time be shorter in order to obtain the desired food or feed flavour, whereas at lower incubation temperatures of (at [0014]) as low as 140 °C the incubation time may be longer than in Example 1 in order to obtain the desired composition. Further, Example 1 in Kortes does not comprise a step of adding a reducing sugar in addition to the yeast extract.
Further and regarding instant claims 4, 6-8 and 16-17, Kortes does not disclose a method for preparing a flavouring wherein the reaction mixture comprises at least 1 wt.% of a mineral acid or organic acid (claims 1 and 7), by weight of the reaction mixture; further, Kortes does not disclose that its first yeast extract comprises at least 0.5 wt.% of glycosylamine as in claims 1 and 2 or that it comprises at least 5 wt.% glycosylamine as in claim 3; still further, Kortes does not disclose that its compositions comprise a glycosylamine and/or derivatives thereof comprising a ribose moiety as in claim 4; yet still further, Kortes does not disclose a reaction mixture comprising at least 1 wt.% of an organic acid, wherein the organic acid has a first dissociation constant (pKa) at 25°C in water of 4.35 or less as in claim 6; yet even still further, Kortes does not disclose an incubated reaction mixture that has a pH wherein a 1 wt.% solution of said composition in water also comprising 0.5 wt.% of sodium chloride has a pH in the range of 3.5 to 6 at 20 °C as in claim 8. And Kortes does not disclose a reaction mixture comprising an organic acid taken from the group consisting of lactic acid, citric acid, malic acid, tartaric acid, succinic acid and ascorbic acid as in claim 16.
In addition, Kortes does not disclose a yeast extract that comprises at least 20 mg/g of ribonucleotides, at least 20 mg/g of organic acids, and at least 0.1 mg/g of glutathione, and to have a pH wherein a 1 wt.% solution of said composition in water also comprising 0.5 wt.% of sodium chloride has a pH in the range of 3.5 to 6 at 20 °C as in claim 14; and, Kortes does not disclose a method wherein the glycosylamine or its derivatives are selected from a ribonucleotide, a ribonucleoside or combinations thereof as in claim 17.
Cepanec at the Abstract on page 1 discloses an umami and kokumi flavor enhancer comprising one or more yeast extracts and/or hydrolyzed vegetable protein as source of natural glutamic acid, one or more yeast extracts as source of natural 5'-ribonucleotides, and a yeast extract as source of natural glutathione, wherein at Table 5 on page 23, Cepanec discloses a yeast extract based on ribonucleotides. The Office considers the claimed yeast extract comprising at least 0.5 wt.% of glycosylamine in claims 1 and 2, and the yeast extract comprising at least 5 wt.% glycosylamine in claim 3 as including the yeast extract containing ribonucleotides disclosed in Cepanec.
Gasser at Abstract discloses a meat-flavored composition made by heating together a yeast autolysate (“yeast extract”) and lactic acid with vegetable protein hydrolysate. At col. 1, lines 13-28, Gasser discloses a method of heating a reaction mixture of 40-50 parts by weight (pbw) of the yeast extract, 30 to 40 parts of the vegetable protein hydrolysate and 0.9 to 2.7 pbw of the lactic acid in about 10 to 30 pbw of water in a total mixture, which the claimed at least 1 wt% of a mineral acid or organic acid in the reaction mixture overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Gasser would have found it obvious to use the claimed amount of lactic acid to make its meat flavouring because Gasser discloses that the claimed amount of lactic acid provides a desirable flavouring composition when heated in water with a yeast extract.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Cepanec for Kortes to include in its reaction mixture a yeast extract comprising at least 0.5 wt.% glycosylamine and at least 5 wt.% glycosylamine as in claims 1-3, wherein the glycosylamine contains a ribose moiety in claim 4, and wherein the glycosylamine is a ribonucleotide, a ribonucleoside or their combination as in claim 17. Both references disclose methods for preparing a flavouring comprising mixing a reaction mixture comprising a yeast extract comprising glutathione and a second yeast extract. The ordinary skilled artisan working in Kortes would have desired to include a yeast extract comprising at 0.5 wt.% and at least 5 wt.% of a ribonucleotide as in Cepanec in addition to its yeast extract having glycosylamine and ribonucleotides to form a flavoring composition having improved umami and kokumi flavor.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Gasser for Kortes to include the claimed amount of at least 1 wt% of lactic acid or an organic acid in its reaction mixture. Both references disclose natural flavouring compositions and methods of making them from yeast extracts by reacting them in water with hydrolyzed compositions comprising amino acids. The ordinary skilled artisan in Kortes would have desired to include the lactic acid of Gasser to hydrolyze its yeast extract in incubation to improve the meat like flavor of its natural flavouring composition.
Further regarding instant claims 6 and 8, the Office considers the claimed reaction mixture at the incubation temperature of 150 to 220 °C and comprising at least 1.0 wt.% of an organic acid as including the extruded or incubated reaction mixture of Kortes as modified by Gasser and Cepanec. Absent a clear showing as to how the organic acid in the flavouring composition of the art the differs from that of the flavouring composition as claimed, the Office considers the flavouring composition of Kortes Example 1 as modified by Gasser at Abstract and Cepanec at Table 5 on page 23 containing at least 1.0 wt.% lactic acid to comprise an organic acid having a first dissociation constant (pKa) at 25°C in water of 4.35 or less as in claim 6, and to have the claimed pH wherein a 1 wt.% solution of said composition in water also comprising 0.5 wt.% of sodium chloride has a pH in the range of 3.5 to 6 at 20 °C as in claim 8. See MPEP 2112.01.I.
Regarding instant claims 12 and 15, the Office considers the reaction mixture to be plasticized as claimed in claim 12 and the natural flavouring composition product to be in a glassy state as claimed in claim 15 when the yeast extract containing reaction mixture as in Example 1 of Kortes is subject to heated extrusion and kneading.
Regarding instant claim 14, the reaction mixture of Kortes in Example 1 as modified by Gasser at Abstract to include the lactic acid and the yeast extract comprising a ribonucleotide of Table 5 of Cepanec to be substantially the same thing as the reaction mixture of claim 1 and, further, considers the incubating in Example 1 of Kortes and the method as claimed in claim 1 as being substantially the same method. Accordingly, absent a clear showing as to how the pH and the contents of the natural flavouring composition of the art the differs from that of the natural flavouring composition as claimed, the Office considers the natural flavouring composition of Kortes (Example 1) as modified by Cepanec to comprise a yeast extract that comprises at least 20 mg/g of ribonucleotides, at least 20 mg/g of organic acids, and at least 0.1 mg/g of glutathione, and to have a pH wherein a 1 wt.% solution of said composition in water also comprising 0.5 wt.% of sodium chloride has a pH in the range of 3.5 to 6 at 20 °C. See MPEP 2112.01.I.
Regarding instant claims 19 and 20, the Example 1 composition of Kortes and the reaction mixture of Example 1 of Kortes as modified by Cepanec to include lactic acid does not include any reducing sugars. Accordingly, the Office considers the claimed method wherein substantially no Maillard reactions occur during the incubating of step (ii) as in claim 19 and the method wherein the reaction mixture is substantially free from Maillard precursors that are capable of undergoing a Maillard reaction with the thiol containing compounds as in claim 20 to include the reaction mixture of Kortes as modified by Cepanec.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0165304 A1 to Kortes et al. (Kortes) in view of WO 2016/185233 to Cepanec et al. (Cepanec) and US 3,645,753 to Gasser (Gasser), as applied to claim 14 above, as evidenced by JP 38161277 B2 to Nishimura et al. (Nishimura), of record.
As applied to claim 14, Kortes at Example 1 as modified by Gasser (Abstract and col. 1, lines 13-30) and Cepanec at Table 5 on page 23 discloses a natural flavoring composition made by a method of shearing and kneading a reaction mixture of a yeast extract comprising glutathione or thiol compounds and glycosylamine, the flavouring composition comprising a ribonucleotide, organic acids and.
Kortes as modified by Gasser does not disclose a natural flavoring composition wherein a yeast extract comprises at least 1 mg/g of a pyroglutamate and at least 1 mg/g of cyclo-cysteinyl-glycine.
Nishimura at [0001] on page 1 discloses a natural food material made by subjecting a yeast extract containing glutathione to heat treatment. At [0011] on page 3, Nishimura discloses that glutathione is N- (N-γ-L-glutamyl-L-cysteinyl) glycine; and, at [0016] on the bottom of page 3 and the top of page 4, Nishimura discloses that in heating a glutathione containing composition at a pH of 1 to 7 and 50 to 120 ° C. in water decomposes the γ-glutamyl peptide bond to form cysteinyl glycine. Moreover, as disclosed at [0020] on page 4 of Nishimura, the cysteinyl glycine produced by the heat treatment is partially cyclized to cyclocysteinyl glycine (“cyclo-cysteinyl-glycine”).
Further, the Office considers the natural flavoring of Example 1 of Kortes made of a reaction mixture comprising an extrusion incubated yeast extract comprising a glutathione to be substantially the same thing as the natural flavoring comprising at least 1 mg/g of pyroglutamate.
Accordingly, Nishimura discloses that the natural flavouring composition of Kortes as modified by Gasser and made by heat treating a yeast extract containing glutathione in water at a pH of 1 to 7 gives cyclo-cysteinyl-glycine in substantially the same composition as the composition claimed. And, absent a clear showing as to how the pH and the contents of the natural flavouring composition of the art the differs from that of the natural flavouring composition as claimed, the Office considers the natural flavouring composition of Kortes (Example 1) as modified by Cepanec at Table 5 on page 23 and Gasser (Abstract) to have the claimed at least 1 mg/g of pyroglutamate and at least 1 mg/g of cyclo-cysteinyl-glycine. See MPEP 2112.01.I.
Response to Arguments
Regarding the position taken in the remarks accompanying the amendment dated November 13, 2025 (Reply) with respect to claims 1-20, the remarks have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply at page 7 that the kneading period covered by the incubation time formula of claim 1 does not include the 1 minute of Example 1 of Kortes and that nothing in Kortes leads one to vary time or temperature of incubation, respectfully this is not found to be the case. The minimum incubation time is at 220°C given by 240000۰℮-bT where: 150°C < T < 220°C, and 0.062 < b < 0.072 and equals 240000۰℮-0.72 220 or 240000۰℮-15.84 which is t= 0.031 minutes. Further, Kortes clearly discloses at [0017] that at higher incubation temperatures the incubation time be shorter in order to obtain the desired food or feed flavour, whereas at lower incubation temperatures the incubation time may be longer in order to obtain the desired food or feed; and at [0014] discloses temperatures of as low as 140 °C, including 150°C. From this disclosure, the ordinary skilled artisan would have found it obvious in Kortes to vary incubation times to lengthen them within the claimed temperature range.
Regarding the allegation that Tables 2 and 3 in the instant specification distinguish over Kortes, example 1 of which is the closest art respectfully the closest comparative in Tables 2 and 3 is comparative Exp F. The Office finds the comparison in Exp F lacking because kneading is not defined or in any way limited and Example 1 of Kortes has 1 wt.% water and not 2 wt% as in Exp F; the remaining comparatives Exp B, C and D also have 2 wt% water and knead for 2 minutes, without defining kneading. Perhaps more importantly, one cannot reasonably equate an example with just one yeast extract to Example 1 of Kortes. None of the comparatives includes a GISTEXTM yeast extract as in Kortes and Kortes says it gets a chicken flavor.
Regarding the position taken in the Reply at pages 8 and 9 that Cepanec is concerned with raw materials or formulations and does not make up for the alleged deficiencies of Kortes, respectfully “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). In the instant case Cepanec at Table 7 discloses the improvement in umami and kokami flavor intensity given by the combination of a thiol containing yeast extract and an glycosylamine containing yeast extract as claimed just as Kortes at [0027] seeks an improvement in flavoring compositions and motivates the ordinary skilled artisan to use the claimed combination of yeast extracts to improve flavor in Kortes. No further reasons are given to attack the combination of Kortes and Cepanec.
Regarding the position taken in the Reply at page 10 that Nishimura does not remedy the deficiencies of Kortes and Cepanec, respectfully none of these positions addresses the position taken in the rejection regarding Nishimura. Nishimura merely discloses the effect of heat treating a glutathione as in the art to form cyclocysteinyl glycine; and so Nishimura merely provides evidence that Example 1 of Kortes produces cyclocysteinyl glycine from the heating of the glutathione therein. No reason or any evidence is presented to show how Example 1 of Kortes fails to form cyclocysteinyl glycine, for which evidence is shown by Nishimura.
Regarding the position taken in the Reply at page 11 and double patenting, no terminal disclaimer overcoming the rejection has been filed and the Reply provides no reason for why the rejection should be withdrawn. Be advised that the filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection and should be accompanied by a reply requesting reconsideration of the prior Office action. See MPEP § 804, subsection I.B.1 and 37 CFR 1.111(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/ANDREW E MERRIAM/ Examiner, Art Unit 1791