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 .
DETAILED ACTION
The Applicant’s reply filed on 10/27/25 is acknowledged. Claims 1, 33-44, and 46-63 are pending. Claims 1, 33-41, and 46-63 have been withdrawn. Claims 42 and 44 have been amended. Claims 42-44 are under consideration.
Objections Withdrawn
The objection of Claim 44 is withdrawn in view of the amended claim.
Rejections Withdrawn
The rejection Claims 42-44 under 35 U.S.C. 102(a)(1) as being anticipated by Tolborg et al. (WO 2018/206590; cited in IDS) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Tolborg et al. (WO 2018/206590; cited in IDS) in view of Onishi et al. (US 6,379,729; 2002).
Tolborg et al. disclose a novel class of natural azaphilone pigments, called atrorosins and compositions thereof (e.g. abstract; Claims 13 and 14).
Tolborg et al. claim a food, a non-food product or a cosmetic (i.e. composition) comprising the pigment of claim 10 (e.g. claim 13), where the pigment of claim 10 is 100% cis (i.e. greater than 80% cis and less than 20% or 15% trans) (e.g. claim 10). Tolborg et al. claim an atrorosin wherein N-R is L-glutamate (i.e. claim 10), which as evidenced by the instant Specification, is Atrorosin-E (e.g. page 9).
Tolborg teach that the composition may be a food colorant (e.g. claims 13 and 14), but do not explicitly recite that the composition comprises less than 10% by weight of proteins, peptides, or carbohydrates. This is made up for by the teachings of Onishi et al.
Onishi et al. disclose a food containing a water-soluble colorant comprising ascorbic acid or its salt in an amount of 0.001 to 0.1% by weight based on food weight, and at least one water-soluble color (e.g. Claim 1). Onishi et al. teach that the pigment may include monascus red and like azaphyllone colors (e.g. column 3, lines 43-49). Onishi et al. exemplify a composition consisting of water, ascorbic acid, pigment, and sodium sulfite or potassium sorbate (i.e. 0% proteins, peptides, or carbohydrates) (e.g. column 5, lines 1-41).
Regarding Claims 42-44, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the pigment of Tolborg et al. with the food dye composition of Onishi et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as Tolborg teach the pigments may be used in food compositions and Onishi et al. teach that the pigment may include monascus red and like azaphyllone colors. The selection of a known material based on its suitability for its intended use is prima facie obvious. When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976).
Response to Arguments
Applicant's arguments filed 10/27/25 have been fully considered but they are not persuasive.
Applicant argues that Tolborg et al. does not teach the claimed purity of wherein at least 80% of the Atrorosin is cis Atrorosin, and less than 20% is trans Atrorosin. Applicant argues that the present Specification tested the methodology of Tolborg and found the resulting composition to contain high amounts of trans Atrorosin.
This is not found persuasive. The claims are directed to a composition and not to a method of making Atrorosin. The claims do not require any method steps. As described sura, Tolborg et al. claim a food, a non-food product or a cosmetic (i.e. composition) comprising the pigment of claim 10 (e.g. claim 13), where the pigment of claim 10 is 100% cis (i.e. greater than 80% cis and less than 20% or 15% trans) (e.g. claim 10). The Examiner notes that obviousness requires a reasonable expectation of success and not absolute predictability. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). The instant arguments are not persuasive to show that there would have been no reasonable expectation of success, nor that the art is inoperable. The data provided in Applicant’s Figure 2 does not appear to be reflective of the data provided in Tolborg Figure 5. Applicant has not provided details of the method steps and states only “prepared by the HPLC method of WO 2018/206590 Al”, therefore the Examiner is unable to compare to the prior art. The Examiner is not persuaded that Tolborg would be unable to attain a purity wherein at least 80 % of the Atrorosin is cis Atrorosin, and less than 20% is trans Atrorosin. Especially given that a goal of Tolborg is to obtain high purity and “essentially pure cis-atrorosin-S” (e.g. page 6, line 17-20; Figure 5I; Examples 2 and 3; and Claim 1).
Applicant further argues that Onishi does not teach or suggest a composition comprising food coloring and ascorbic acid alone.
This is not found persuasive. As described supra, Onishi et al. exemplify a composition consisting of water, ascorbic acid, pigment, and sodium sulfite or potassium sorbate (i.e. 0% proteins, peptides, or carbohydrates) (e.g. column 5, lines 1-41). It would have been obvious to one of ordinary skill in the art at the time of filing to combine the pigment of Tolborg et al. with the food dye composition of Onishi et al. One of ordinary skill in the art would have predicted success as Tolborg teach the pigments may be used in food compositions and Onishi et al. teach that the pigment may include monascus red and like azaphyllone colors. The selection of a known material based on its suitability for its intended use is prima facie obvious.
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619