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 .
Status of Claims
Claims 1, 3-4, 7, 9-18, 20-21, and 23-24 are pending and under examination in this application. Any objections or rejections not repeated below have been withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/29/2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites, “A food or beverage article comprising: one or more compounds selected from the group consisting of licoricidin, 8-(γ,γ-dimethylallyl)-wighteone, glyasperin C, isoangustone A, and licoarylcoumarin, and salt.” It is clear from the specification that the newly amended claim language of “, and salt” is not considered part of the group consisting of licorice polyphenol compounds (see instant specification [0007-0008], [0038]). For matters of form and to clarify that the salt is not part of the group consisting of licorice polyphenol compounds, the comma before “and salt” should be changed to a semicolon. The claim would then read as follows, “…isoangustone A, and licoarylcoumarin; and salt.” Appropriate correction is required.
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, 3-4, 7, 9-18, 20-21, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. US 20090087419 (cited on IDS dated 10/25/2024) in view of Eerdunbayaer et al., Structures of New Phenolics Isolated from Licorice, and the Effectiveness of Licorice Phenolics on Vancomycin-Resistant Enterococci, Molecules (cited on IDS dated 05/13/2024) and Lee et al. US 20130041023.
Please note the rejection below is based off of page numbers added to Eerdunbayaer reference and supplied with the rejection.
Regarding claims 1, 9-13 and 20-21 Sakai teaches a food or beverage article (a licorice polyphenol preparation used in foods and beverages; [0001], claims 12 and 19), as required by claim 1.
Claim 1 recites the food or beverage article comprises “one or more compounds selected from the group consisting of licoricidin, 8-(γ,γ-dimethylallyl)-wighteone, glyasperin C, isoangustone A and licoarylcoumarin.” The instant specification [0032] states that these compounds are contained in licorice extract. It is also noted that these compounds are licorice polyphenol compounds, as shown by Eerdunbayaer (pgs. 8-9 paragraphs 1 and 2 under heading 2.3). Sakai teaches the food or beverage article comprises licorice polyphenol preparations [0001], [0019]. However, Sakai is silent as to the specific phenolic compounds listed in claims 1 and 9-13.
Eerdunbayaer teaches isolating phenolic compounds from licorice, specifically licoricidin, required by claims 1 and 9, 8-(γ,γ-dimethylallyl)-wighteone, required by claims 1 and 10, glyasperin C, required by claims 1 and 11, isoangustone A, required by claims 1 and 12 and licoarylcoumarin, required by claims 1 and 13 (Abstract, pgs. 8-9 paragraphs 1 and 2 under heading 2.3). Eerdunbayaer recognizes licorice has a variety of pharmaceutical functions, such as antiulcer, anti-inflammatory, antiviral, and anticarcinogenic activities and that licorice phenolics have demonstrated various antibacterial effects (pg. 2 paragraph 1 under heading 1. Introduction).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sakai by incorporating the teachings of Eerdunbayaer by having the food or beverage article of Sakai comprise one or more compounds selected from the licorice phenolic compounds of Eerdunbayaer, specifically licoricidin, 8-(γ,γ-dimethylallyl)-wighteone, glyasperin C, isoangustone A and licoarylcoumarin since licorice phenolics have demonstrated various antibacterial effects and licorice has a variety of pharmaceutical functions, such as antiulcer, anti-inflammatory, antiviral, and anticarcinogenic activities, as recognized by Eerdunbayaer (pg. 2 paragraph 1 under heading 1. Introduction).
Sakai teaches the food or beverage article comprises salt (the licorice polyphenol preparation emulsion has an aqueous component, where the aqueous component may comprise water-soluble components such as various salts; [0036]; and also teaches a beverage preparation with the licorice polyphenol preparation emulsion that also comprises trisodium citrate (salt) [0067-0068]).
Sakai discloses wherein a total concentration of the one or more compounds (licorice polyphenol preparation, or the emulsion composition, which contains the licorice polyphenol; [0037], [0042]) are not particularly limited as to the amount they may be present in a food or beverage article (food products; [0042]). Sakai teaches the one or more compounds (polyphenol content) are in the emulsion at 0.24% (pg. 6 Table 1). Since Sakai teaches the one or more compounds, in the form of an emulsion, are not limited as to the amount it may be present in a food or beverage article (food product; [0042]), it would have been obvious to use any amount including 10 ppm or more, as required by claim 1, 25 ppm or more, as required by claim 20, and 50 ppm or more, as required by claim 21.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have added the compound (licorice polyphenol) to the food or beverage article in the amount within the claimed range for claims 1, 20 or 21 since Sakai teaches the compound, in the form of an emulsion, is not limited as to the amount it may be present in a food or beverage article (food product; [0042]).
Sakai does not particularly limit the amount of salt in the composition as long as it does not influence the emulsification [0036]. However, Sakai does not specifically state the amount of salt within the claimed range. Lee teaches a composition comprising licorice extract, fractions thereof or compounds separated therefrom used in a food composition such as soups, beverages and other types of food compositions that are not particularly limited (Abstract, [0001], [0009], [0012], [0051], Claim 20). Lee teaches in a specific embodiment a composition to prepare health beverages that comprises licorice extract and 0.5 wt% salt [0143]. Lee teaches the composition, with the claimed amount of salt, is used to prevent or treat rotavirus infection [0001], [0009]. This is within the claimed range of salt between 0.2% or more and 12% or less, as required by claim 1.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sakai in view of Eerdunbayaer by incorporating the teachings of Lee by having the food or beverage article of Sakai comprise salt within the claimed range since the composition with the claimed amount of salt can prevent or treat rotavirus infection, as recognized by Lee (Abstract, [0001], [0009]).
Regarding claims 3 and 4, Sakai teaches the food or beverage article is liquid seasoning, as required by claim 3, where the liquid seasoning is sauce or dressing [0041], as required by claim 4.
Regarding claims 7, 14-18 and 23-24 Sakai a method of adjusting a total concentration of compounds (adding to food products an amount that is not particularly limited; [0042]), as required by claim 7.
It is noted the compounds being adjusted in claim 7 are licorice polyphenol compounds, as shown by Eerdunbayaer (pgs. 8-9 paragraphs 1 and 2 under heading 2.3). Sakai teaches the compound(s) adjusted in the food or beverage article comprises licorice polyphenol preparations [0001], [0019]. However, Sakai is silent as to the specific phenolic compounds listed in claims 7 and 14-18.
Eerdunbayaer teaches isolating phenolic compounds from licorice, specifically licoricidin, required by claims 7 and 14, 8-(γ,γ-dimethylallyl)-wighteone, required by claims 7 and 15, glyasperin C, required by claims 7 and 16, isoangustone A, required by claims 7 and 17 and licoarylcoumarin, required by claims 7 and 18 (Abstract, pgs. 8-9 paragraphs 1 and 2 under heading 2.3). Eerdunbayaer recognizes licorice has a variety of pharmaceutical functions, such as antiulcer, anti-inflammatory, antiviral, and anticarcinogenic activities and that licorice phenolics have demonstrated various antibacterial effects (pg. 2 paragraph 1 under heading 1. Introduction).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sakai by incorporating the teachings of Eerdunbayaer by having the food or beverage article of Sakai comprise one or more compounds selected from the licorice phenolic compounds of Eerdunbayaer, specifically licoricidin, 8-(γ,γ-dimethylallyl)-wighteone, glyasperin C, isoangustone A and licoarylcoumarin since licorice phenolics have demonstrated various antibacterial effects and licorice has a variety of pharmaceutical functions, such as antiulcer, anti-inflammatory, antiviral, and anticarcinogenic activities, as recognized by Eerdunbayaer (pg. 2 paragraph 1 under heading 1. Introduction).
Sakai discloses the one or more compounds (licorice polyphenol preparation, or the emulsion composition, which contains the licorice polyphenol; [0037], [0042]) are not particularly limited as to the amount it may be present in a food or beverage article (food products; [0042]). Sakai teaches the one or more compounds (polyphenol content) are in the emulsion at 0.24% (pg. 6 Table 1). Since Sakai teaches the one or more compounds, in the form of an emulsion, are not limited as to the amount it may be present in a food or beverage article (food product; [0042]), it would have been obvious to use any amount including 10 ppm or more, as required by claim 7, 25 ppm or more, as required by claim 23 and 50 ppm or more, as required by claim 24.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have added the compound (licorice polyphenol) to the food or beverage article in the amount within the claimed range for claims 7, 23 or 24 since Sakai teaches the compound, in the form of an emulsion, is not limited as to the amount it may be present in a food or beverage article (food product; [0042]).
Sakai teaches the food or beverage article comprises salt (the licorice polyphenol preparation emulsion has an aqueous component, where the aqueous component may comprise water-soluble components such as various salts; [0036]; and also teaches a beverage preparation with the licorice polyphenol preparation emulsion that also comprises trisodium citrate (salt) [0067-0068]). Sakai does not particularly limit the concentration of salt in the food or beverage article as long as it does not influence the emulsification [0036]. However, Sakai does not specifically state the concentration that the salt is adjusted to.
Lee teaches a composition comprising licorice extract, fractions thereof or compounds separated therefrom used in a food composition such as soups, beverages and other types of food compositions that are not particularly limited (Abstract, [0001], [0009], [0012], [0051], Claim 20). Lee teaches in a specific embodiment a composition to prepare health beverages that comprises licorice extract and salt, where the salt is adjusted to a concentration of 0.5 wt% [0143]. Lee teaches the beverage article, with the claimed amount of salt, is used to prevent or treat rotavirus infection [0001], [0009]. This is within the claimed range of salt between 0.2% or more and 12% or less, as required by claim 7.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Sakai in view of Eerdunbayaer by incorporating the teachings of Lee by having the food or beverage article of Sakai comprise salt within the claimed concentration range since the composition with the claimed amount of salt can prevent or treat rotavirus infection, as recognized by Lee (Abstract, [0001], [0009]).
Sakai in view of Eerdunbayaer and Lee teaches a substantially identical food or beverage article, as shown by the above rejection. Therefore, since the composition of Sakai in view of Eerdunbayaer and Lee is substantially identical to the claimed composition, it is considered to possess the property of suppressing proliferation of lactic acid bacteria and/or flat sour bacteria in a food or beverage article, as stated in claim 7, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 5-6 of their remarks, that neither Sakai nor Eerdunbayaer disclose the newly added amendments in claims 1 and 7 of a salt concentration of 0.2% (w/v) or more and 12% (w/v) or less, and do not disclose a total concentration of the one or more compounds at 10 ppm or more. Applicant states that an unexpectedly superior property of the claimed composition is that it produces unexpectedly superior results of suppressing deterioration due to lactic acid bacteria and/or flat sour bacteria contamination. Applicant explains this result is unexpected in view of the cited references because neither reference discloses the newly amended claim language of salt concentration.
Applicant’s arguments regarding salt concentration of 0.2% to 12% are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in this argument. Additionally, it is noted that the range of salt concentration is very broad. While it may enhance the antimicrobial activity to lactic acid bacteria and/or flat sour bacteria, as stated in [0038] in Applicant’s specification, “…the salt concentration of the food/beverage article… is not particularly limited” and may be 0% or unsalted.
As shown in the rejection above, Sakai does makes obvious using a total concentration of the one or more compounds at 10 ppm or more. Sakai discloses wherein a total concentration of the one or more compounds (licorice polyphenol preparation, or the emulsion composition, which contains the licorice polyphenol; [0037], [0042]) are not particularly limited as to the amount they may be present in a food or beverage article (food products; [0042]). Sakai teaches the one or more compounds (polyphenol content) are in the emulsion at 0.24% (pg. 6 Table 1). Since Sakai teaches the one or more compounds, in the form of an emulsion, are not limited as to the amount it may be present in a food or beverage article (food product; [0042]), it would have been obvious to use any amount including 10 ppm or more.
Applicant argues, on pg. 5, that a person of ordinary skill in the art would not have been motivated to combine Sakai and Eerdunbayaer. Applicant states that compounds isolated using the column chromatography method of Eerdunbayaer is not a simple process, and that Sakai is intended to provide a licorice polyphenol preparation via a simple process. Applicant argues that this conflict between Sakai and Eerdunbayaer, where one reference uses a simple process and the other uses a more complex process, would not have led someone to combine the two references and would instead have discouraged the combination. However, the Office disagrees far the fallowing reasons.
ln response to Applicant's argument that there is no motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See ln re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), ln re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Ine., 550 U.S. 398, 82 USPQ2d 1385 (2007). ln this case, it would have been obvious for one of ordinary skill in the art to have modified Sakai by incorporating the teachings of Eerdunbayaer, by having the food or beverage article of Sakai comprise one or more compounds of Eerdunbayaer, since the compounds (licorice phenolics) have demonstrated various antibacterial effects and licorice has a variety of pharmaceutical functions, such as anti-ulcer, anti-inflammatory, antiviral, and anti-carcinogenic activities, as recognized by Eerdunbayaer (pg. 2 paragraph 1 under heading 1. Introduction).
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759