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 .
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 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.
DETAILED ACTION
Claims 1-25 are pending in this application. This application is a national stage entry of PCT/US21/39307, filled on 06/28/2021, which claims priority to provisional application 63/046,417, filed on 06/30/2020 and to provisional application 63/089,382, filed on 10/08/2020.
Election/Restrictions
Applicants’ election without traverse of group I, claims 1-15 and 21, and subsequent species election of pyrones in claims 3, 21-23, and 25 among claims 3-10, 21-23, and 25, filed on 08/05/2025 is acknowledged.
Applicants have amended use claims 16-18 and introduced new claims 22-25. Therefore, the election of group I now encompasses claims 1-18, 21-23, and 25.
Claims 4-10, 19, 20, and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim.
Claims 1-3, 11-18, 21-23, and 25 will presently be examined to the extent they read on the elected subject matter of record.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 3 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 introduces new matter as the claim recites the limitation: "pyrones”. There is no support in the specification for this limitation. The limitation of: "pyrones” was not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses maltol and ethyl maltol in original claim 21 but does not describe the instantly claimed limitation "pyrones”. Maltol and ethyl maltol are species of pyrones while the scopes of maltol and ethyl maltol are different the scope of pyrones. There is no guidance in the specification to select “pyrones” and from MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
The species election of “pyrones” is construed as maltol and/or ethyl maltol.
Claim Rejections - 35 USC § 102
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, 11-18, 21-23, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furrer et al. (US 2006/0142177 A1).
Furrer et al. meet all of the limitations of claims 1-3, 11-18, 21-23, and 25. Furrer et al. disclose
a combination of 0.10000% by weight of maltol and 0.05000% by weight of raspberry ketone within a blackberry flavour composition (the instant claims 1-3, 11-15, 21-23, and 25) (paragraph 24) comprising water, i.e., aqueous (the instant claims 13, 14, 16, and 18).
The combination of maltol and raspberry ketone is 0.15000% relative to the total composition (the instant claim 18).
The weight percentages of maltol and raspberry ketone relative to the combination of maltol and raspberry ketone are calculated to be 66.7% and 33.3% by weight, respectively, (0.1/(0.1+0.5)=66.7% and 0.05/(0.1+0.5)=33.3%) (the instant claims 1 and 21).
With respect to the art rejection above, it is noted that the reference does not teach that the combination of maltol and raspberry ketone can be used in the manner instantly claimed, [antimicrobial in the instant claims 1-3, 11-15, 18, 21-23, and 25] and [for killing or inhibiting the growth of Staphylococcus aureus, etc., in the instant claims 11 and 12]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
It is noted that though Furrer et al. do not expressly teach that the combination of maltol and raspberry ketone providing a synergistic effect having a synergistic index (SI) value of greater than 0.1 to less than 1 in the instant claim 15; the very teaching of the identical compounds to those presently claimed must necessarily possess the same effects, even though such properties may not have been appreciated by Furrer et al. at the time of the invention. Please refer to MPEP 2112.I:
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
With respect to the art rejection above, it is noted that the reference does not teach that the composition comprising combination of maltol and raspberry ketone can be used in the manner instantly claimed, [personal care, etc., in the instant claims 16 and 17]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 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, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614