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 .
This office action is in response to the application filed on September 22, 2022. The earliest effective filing date of the application is September 23, 2021.
Status of Application
The amendment filed March 27, 2026 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 2, 4 – 17, 19, 20, and 39
Withdrawn claims: 8, 13 – 17, and 20
Previously cancelled claims: 18, 21 – 38, 40 – 43
Newly cancelled claims: 3
Amended claims: 1, 2, 4, 5, 9 – 12, 19, and 39
Claims currently under examination: 1, 2, 4 – 7, 9 – 12, 19, and 39
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because figures 32 – 36 are illegible. While the Office recognizes a bona fide attempt to improve the visibility of the figures, Figures 32 – 36 still have very small, light colored text that is illegible. Figures 32 – 36 may be improved by enlarging and darkening the smallest text. All of the text in the figures must be legible. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP §608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 2, 5, 9, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (U.S. Patent No. 4,359,481) in view of Merritt (U.S. Patent No. 4,276,312 A) as evidenced by Kjällstrand et al. (Phenolic antioxidants in wood smoke. Science of The Total Environment. Volume 277, Issues 1–3, 28 (September 2001) Pages 69-75) and Gutchess (Common Hardwood Trees in the United States. Gutchess Lumber Co., Inc. Blog. (n.d.) Retrieved from: https://www.gutchess.com/common-hardwood-trees-in-the-united-states/).
Regarding claim 1, Smits teaches a liquid smoke concentrate having a phenolic compounds content of 1.10 g/L (Abstract; col. 4, lines 37 – 46). Smits teaches the liquid smoke is derived from condensed wood smoke of mainly oak and beech wood (col. 4, lines 32 – 35). As evidenced by Kjällstrand, 2,6-dimethoxyphenols, which have especially strong antioxidant effects, are major components of hardwood smoke and are formed by degradation of hardwood lignin (p. 70, paragraph 7). As evidenced by Gutchess, beech and oak are hardwood trees (p. 2, Image; p. 4, paragraph 1). Therefore, the phenolic compounds present in the liquid smoke concentrate of Smits comprises a phenolic extract that has a function of delaying oxidation (i.e., is an antioxidant) or hydrolysis of fats and oils in any food, including in pet food or pet food ingredients.
Smits teaches, in some embodiments, the liquid smoke concentrate according to the present invention is diluted by water (col. 3, lines 11 – 17). Smits teaches a powdered smoke concentrate made by spray drying the liquid smoke concentrate comprising phenolic compounds (col. 6, lines 23 – 53).
Smits does not teach the liquid smoke concentrate comprises an acetylated monoglyceride.
Merritt teaches a free flowing, spray dried particulate product, which is produced by preparing an aqueous solution and spray drying (Abstract). Merritt teaches acetylated monoglycerides are emulsifiers known to be useful for spray drying active ingredients (i.e., phenolic compounds from liquid smoke) and water (col. 5, lines 60 – 68; col. 6, lines 1 – 5).
Smits and Merritt are combinable because they are concerned with the same field of endeavor, namely, spray drying active ingredients and water. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included acetylated monoglycerides in the liquid smoke concentrate of Smits prior to spray drying, as taught by Merritt because acetylated monoglycerides are known to be effective emulsifiers useful for spray drying active ingredients (i.e., phenolic compounds from liquid smoke) and water.
With respect to the preamble, “A natural smoke antioxidant for pet food or a pet food ingredient”, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed composition. Therefore, the preamble does not limit the claim.
Regarding claim 2, the preamble of the claim states “A pet food or pet food ingredient”. MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed composition. Therefore, the preamble does not limit the claim.
Therefore, the modified liquid smoke concentrate of Smits is a pet food ingredient comprising a natural smoke antioxidant comprising a phenolic extract obtained from liquid natural smoke, wherein the phenolic extract is present in the pet food ingredient in an amount sufficient to delay oxidation or hydrolysis of fats and oils in the pet food ingredient.
Regarding claim 5, Smits teaches a liquid smoke concentrate having a phenolic compounds content of 1.10 g/L (Abstract; col. 4, lines 37 – 46). Smits teaches, in some embodiments, the liquid smoke concentrate according to the present invention is diluted by water (col. 3, lines 11 – 17). Therefore, the liquid smoke concentrate of Smits comprises 1100 ppm by weight of phenolic compounds.
Regarding claim 9, Smits teaches the liquid smoke concentrate is produced by destructive distillation (i.e., pyrolysis) of cellulosic or lignin material (col. 3, lines 53 – 61). Smits teaches the liquid smoke produced by the destructive distillation is subjected to fractional condensation (col. 3, lines 62 – 67). Smits teaches the fractional condensation is carried out in such a way that the phenolic compounds content (calculated as phenol) is from 0.90 to 1.60 g/l of liquid smoke concentrate (col. 4, lines 1 – 14).
Claim 9 recites “the liquid smoke is a composition obtained from the pyrolysis of biomass, and the phenolic fraction is separated from the liquid smoke” which is directed toward a method of production of the product of claim 9. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 9 has been considered when assessing the patentability of the product.
The structure implied by claim 9 is interpreted to be a composition comprising an antioxidant phenolic compound.
The modified liquid smoke concentrate of Smits is encompassed by claim 9. Therefore, the product of claim 9 is rendered obvious by Smits.
Regarding claim 12, the liquid smoke concentrate of Smits does not require BHA, BHT, TBHQ, propyl gallate, ascorbyl palmitate, ethoxyquin, rosemary extract, sage extract, green tea extract, acerola extract, lemon balm extract, grapeseed extract, sage extract, or mixed tocopherols.
Regarding claim 19, Smits teaches a powdered smoke concentrate made by spray drying the liquid smoke concentrate comprising phenolic compounds (col. 6, lines 23 – 53).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (U.S. Patent No. 4,359,481) in view of Merrit (U.S. Patent No. 4,276,312 A) as evidenced by Kjällstrand et al. (Phenolic antioxidants in wood smoke. Science of The Total Environment. Volume 277, Issues 1–3, 28 (September 2001) Pages 69-75) as applied to claim 1 above, and further evidenced by FAOUN (4-Propenyl-2,6-dimethoxyphenol In: Online Edition: "Specifications for Flavourings". Food and Agriculture Organization of the United Nations. (n.d.) Retrieved from: https://www.fao.org/food/food-safety-quality/scientific-advice/jecfa/jecfa-flav/details/en/c/1274/).
Regarding claim 10, as evidenced by Kjällstrand, one of the most abundant 2,6-dimethoxyphenols in hardwood smoke is 2,6-Dimethoxy-4-(E)-1-propenylphenol (p. 71, Table 1, Row 10). As evidenced by FAOUN, 2,6-Dimethoxy-4-(E)-1-propenylphenol is soluble in fat (p. 1, Solubility).
Claims 1, 2, 6, 7, 9 – 12, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Hollenbeck et al. (U.S. Patent No. 3,480,446) in view of Bommareddy (WO 2016055905 A1) as evidenced by Kjällstrand et al. (Phenolic antioxidants in wood smoke. Science of The Total Environment. Volume 277, Issues 1–3, 28 (September 2001) Pages 69-75).
Regarding claim 1, Hollenbeck teaches an smoke-flavored edible oil comprising dimethoxyphenol (Abstract). As evidenced by Kjällstrand, dimethoxyphenol is a phenolic antioxidant present in wood smoke (p. 70, paragraph 7). Therefore, the phenolic compounds present in the smoke-flavored edible oil of Hollenbeck comprises a phenolic extract that has a function of delaying oxidation (i.e., is an antioxidant) or hydrolysis of fats and oils in any food, including pet food or pet food ingredients.
Hollenbeck does not teach the smoke-flavored edible oil comprises an acetylate monoglyceride.
Bommareddy teaches an animal fat based food comprising edible animal fat, food grade surfactant, a food grade solvent, and flavoring agents (Abstract). Bommareddy teaches the animla fat based food comprises a surfactant to reduce the tendency of food to adhere to cooking utensils and to provide browning ([0019]). Bommareddy teaches the surfactants are acetylated monoglycerides ([0020]).
Hollenbeck and Bommareddy are combinable because they are concerned with the same field of endeavor, namely, edible oils comprising flavorings. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included acetylated monoglycerides in the smoke-flavored edible oil of Hollenbeck, as taught by Bommareddy because acetylated monoglycerides are known to be effective surfactants usable in edible flavored oils which impart the additional benefits of added browning and a reduced tendency of food to adhere to cooking utensils.
With respect to the preamble, “A natural smoke antioxidant for pet food or a pet food ingredient”, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed composition. Therefore, the preamble does not limit the claim.
Regarding the limitation “a phenolic extract obtained from liquid natural smoke”. The limitation is interpreted broadly to be a phenolic compound that may be found in smoke, regardless of source, but does not need to be in smoke. While a phenolic compound that may be found in smoke may be prepared by a certain method, or obtained from a certain source, in product claims, the protein itself it considered, regardless of how it is made or where it is from. There is no material difference between a phenolic extract obtained from liquid natural smoke as described by the instant disclosure and a phenolic compound that may be found in smoke.
Therefore, the natural smoke antioxidant of claim 1 is rendered obvious by Hollenbeck and Bommareddy.
Regarding claims 2, the preamble of the claim states “A pet food or pet food ingredient”. MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed composition. Therefore, the preamble does not limit the claim.
Therefore, the modified smoke-flavored edible oil of Hollenbeck is a pet food ingredient comprising a natural smoke antioxidant comprising a phenolic extract obtained from liquid natural smoke, wherein the phenolic extract is present in the pet food ingredient in an amount sufficient to delay oxidation or hydrolysis of fats and oils in the pet food ingredient.
Regarding claim 6, Hollenbeck teaches a smoke-flavored edible oil comprising corn oil (i.e., vegetable oil – col. 4 – 5, Example 1).
Regarding claim 7, Hollenbeck teaches a smoke-flavored edible oil comprising lard oil (i.e., pork oil – col. 6, Example 6).
Regarding claim 9, while Hollenbeck does not teach a phenolic fraction is separated from liquid smoke to produce the phenolic extract, this recitation is directed toward a method of production of the product of claim 9. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 9 has been considered when assessing the patentability of the product.
The structure implied by claim 9 is interpreted to be a composition comprising an antioxidant phenolic compound.
The modified smoke-flavored edible oil of Hollenbeck, is encompassed by claim 9. Therefore, the product of claim 9 is rendered obvious by Hollenbeck.
Regarding claim 10, Hollenbeck teaches a smoke-flavored edible oil comprising corn oil wherein the corn oil is used to extract dimethylphenol from an aqueous solution by shaking and allowing the aqueous and organic phases to settle (col. 4 – 5, Example 1). Because the corn oil is able to pull dimethylphenol from an aqueous phase into an organic phase (i.e., corn oil), dimethylphenol is oil soluble.
Regarding claim 11, Hollenbeck teaches a smoke-flavored edible oil comprising corn oil (i.e., vegetable oil – col. 4 – 5, Example 1).
Regarding claim 12, the smoke-flavored edible oil of Hollenbeck does not require BHA, BHT, TBHQ, propyl gallate, ascorbyl palmitate, ethoxyquin, rosemary extract, sage extract, green tea extract, acerola extract, lemon balm extract, grapeseed extract, sage extract, or mixed tocopherols.
Regarding claim 39, Hollenbeck teaches a smoke-flavored edible oil comprising 23.0 mg/mL dimethylphenol (i.e., phenolic extract – col. 4 – 5, Example 1, Table, After two extractions (with salt), 20 °C, Oil).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hollenbeck et al. (U.S. Patent No. 3,480,446) in view of Bommareddy (WO 2016055905 A1) as evidenced by Kjällstrand et al. (Phenolic antioxidants in wood smoke. Science of The Total Environment. Volume 277, Issues 1–3, 28 (September 2001) Pages 69-75) and Aceite de Las Valdesas (Which is the density of oil? Aceite de Las Valdesas. (n.d.) Retrieved from: https://www.aceitedelasvaldesas.com/en/faq/varios/densidad-del-aceite/).
Regarding claim 4, Hollenbeck teaches a smoke-flavored edible oil comprising 11.2 mg/mL dimethylphenol (i.e., phenolic extract) in corn oil (col. 4 – 5, Example 1, Table, After two extractions (without salt), 20 °C, Oil). As evidenced by Aceite de Las Valdesas, corn oil has a density of 0.917 – 0.925 g/cm3 (i.e., 0.917 – 0.925 g/mL – p. 2, Relative densities of some vegetable oils, Corn Oil). Therefore, the smoke-flavored edible oil of Hollenbeck comprises 1.21 – 1.22 wt% dimethylphenol (i.e., phenolic extract).
Regarding claim 5, Hollenbeck teaches a smoke-flavored edible oil comprising 2.6 mg/mL phenols (i.e., phenolic extract) in corn oil (col. 5, Example 3, Extraction 1). As evidenced by Aceite de Las Valdesas, corn oil has a density of 0.917 – 0.925 g/cm3 (i.e., 0.917 – 0.925 g/mL – p. 2, Relative densities of some vegetable oils, Corn Oil). Therefore, the smoke-flavored edible oil of Hollenbeck comprises 2811 – 2835 ppm by weight of phenols (i.e., phenolic extract).
Response to Arguments
Applicant's arguments filed March 27, 2026 have been fully considered but they are not persuasive.
Applicant argues the claims, as amended, include a counterpart that does not occur in nature, acetylated monoglyceride, therefore the previous rejection under 35 U.S.C. § 101 should be withdrawn (p. 11, paragraph 8).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the rejection under 35 U.S.C. § 101 of claims 1 – 7, 9 – 12, 19, and 39 has been withdrawn.
Applicant argues the claims, as amended, include a counterpart that does not occur in nature, acetylated monoglyceride, therefore the previous rejection under 35 U.S.C. § 102(a)(1) over wildfire smoke should be withdrawn (p. 13, paragraph 5).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the rejection under 35 U.S.C. § 102(a)(1) of claims 1, 2, 3, 9, and 12 over wildfire smoke has been withdrawn.
Applicant argues Smits does not teach the liquid smoke concentrate comprises an acetylated monoglyceride (p. 14, paragraph 5).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the rejection under 35 U.S.C. § 102(a)(1) of claims 1 – 3, 5, 9, 12, and 19 over Smits has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 U.S.C. § 103 is made in view of Smits.
Applicant argues Hollenbeck does not teach the smoke-flavored edible oil comprises an acetylate monoglyceride (p. 15, paragraph 2).
Applicant’s argument has been fully considered and it is persuasive. Therefore, the rejection under 35 U.S.C. § 102(a)(1) of claims 1 – 7, 9 – 12, and 39 over Hollenbeck has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 U.S.C. § 103 is made in view of Hollenbeck.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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