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 .
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 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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/05/2025 was filed after the mailing date of the non-final rejection on 08/26/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
The amendment filed on 11/25/2025 is acknowledged. Claims 3, 21-23, and 25 have been canceled and claims 4-10, 19, 20, and 24 have been withdrawn. Claims 1, 2, and 11-18 are under examination in the instant office action.
As stated in the office action dated 08/26/2025 the species election of “pyrones” is construed as maltol and/or ethyl maltol.
Rejections withdrawn
Applicant’s amendments and arguments filed on 11/25/2025 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 112(a)rejection of claim 3 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejection is modified based on the amendments and for clarity.
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, 2, and 11-18 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, 2, and 11-18. Furrer et al. disclose
a combination of 0.10000% by weight of maltol (the claimed component b) and 0.05000% by weight of raspberry ketone (the claimed component a) within a blackberry flavour composition (the instant claims 1, 2, and 11-15) (paragraph 24) comprising water, i.e., aqueous (the claimed aqueous-based end user composition in 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 claim 1).
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, 2, 11-15, and 18] 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.
Response to Applicants’ arguments:
Applicants argue that the inherent antimicrobial effects must be inherently present in the prior art composition, not just possible or assumed while Furrer focuses on flavor and fragrance compositions, not antimicrobial systems to inhibit microbes.
However, this argument is not deemed persuasive. Furrer et al. teach the exact same composition as claimed in paragraph 24, the composition would necessarily have the claimed properties, whether expressly recognized by Furrer et al. or not. Please refer to MPEP 2112.01.II, MPEP 2112.I, and MPEP 2112.II:
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
“[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.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Applicants argue that there is unexpected synergistic effect demonstrated in table 2a-2c in the instant specification.
However, this argument is not deemed persuasive. This is a 102 rejecting, not 103; evidence of unexpected results is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. Please refer to MPEP 2131.04:
“Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
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.
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
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