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 . Claims included in the prosecution are claims 1-7.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/2026 has been entered.
Applicants' arguments, filed 01/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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, 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mankoo (CA 2,232,351 A1, Sep. 18, 1998) (of record) in view of Kindel et al. (US 2007/0280892, Dec. 6, 2007) (hereinafter Kindel), as evidenced by Morgan, III et al. (US 2022/0015402, priority date May 1, 2020) (hereinafter Morgan, III).
Mankoo discloses a methyl salicylate replacement composition. The methyl salicylate replacement composition is a flavor composition that mimic the organoleptic qualities of methyl salicylate without employing salicylic acid or salicylic esters. The composition comprises ethyl benzoate, menthol, carvone, and peppermint oil (abstract). The composition may further comprise eugenol in an amount from about 0.5 to about 5 ppm and thymol (claim 7). The methyl salicylate replacement composition may be used in hygienic products such as toothpastes, dental lotions, mouthwashes and chewing gums (page 18, lines 30-32). The term “organoleptic” refers to compounds which stimulate the sense of smell or taste, and are thus perceived as having a characteristic odor and/or flavor (page 8, lines last two lines-page 9, line 1). Methyl salicylate is a compound that provides the characteristic flavor impact of wintergreen in confectionery products and chewing gums (page 1, lines 38-40-page 2, line 1). The gum composition may include flavoring agents (page 28, line 27). Flavoring agents include flavoring aromatics (page 29, line 8). The amount of flavoring agent employed is normally a matter of preference subject to factors as the type of final chewing gum composition, the individual flavor, the gum base employed, and the strength of flavor desired. Thus, the amount of flavoring may be varied in order to obtain the result desired in the final product and such variation are within the capabilities of those skilled in the art without the need for undue experimentation (page 31, lines 5-10),
Mankoo differs from the instant claims insofar as not disclosing wherein the composition comprises methyl benzoate.
However, Kindel discloses a flavoring composition comprising a mixture of compounds having the sensory properties of winter-green (abstract). The composition may comprise methyl benzoate as an aromatic and araliphatic carboxylic acid and ester thereof (¶ [0098]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Mankoo discloses wherein the composition may comprise flavoring aromatics. Accordingly, it would have been obvious to one of ordinary skill in the art to have incorporated methyl benzoate into the composition of Mankoo since it is a known and effective flavoring aromatic for a wintergreen flavored composition as taught by Kindel.
In regards to instant claim 1 reciting a flavor composition for simulating a wintergreen taste, since the composition of Mankoo mimics the organoleptic qualities of methyl salicylate and methyl salicylate provides a wintergreen taste, the composition of Mankoo simulates a wintergreen taste.
In regards to instant claim 1 reciting 32.4 wt. % to 70 wt. % methyl benzoate, as discussed above, it would have been obvious to one of ordinary skill in the art to have incorporated methyl benzoate into the composition of Mankoo as a flavoring agent. Mankoo discloses that the amount of flavoring agent employed is normally a matter of preference, such as the strength of flavor desired. Therefore, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount of methyl benzoate depending on their preference, such as strength of flavor desired.
In regards to instant claims 4 and 6 reciting (-)-menthol, as evidenced by Morgan, III, the term “menthol” is the sum of (+)- and (-)-menthol (¶ [0053]). Accordingly, the menthol of Mankoo has (-)-menthol, thus meeting the claim limitation. Additionally, as evidenced by Morgan, III, natural menthol primarily exists as the (1R,28,5R)-stereoisomer form, also known as (-)-menthol, accounting for perhaps 35-50 % of the aroma chemicals present in natural peppermint oil (¶ [0096]. Therefore, since the composition of Mankoo comprises peppermint oil, the composition of Mankoo comprises (-)-menthol, thus meeting the claim limitation.
In regards to instant claim 4 reciting a wintergreen-flavored product, since the composition of Mankoo mimics the wintergreen flavor of methyl salicylate, the hygienic products comprising the composition of Mankoo is a wintergreen-flavored product.
Response to Arguments
Applicant argues that as shown in Table 14 and 16 in Example 3 of Applicant’s specification, test example E3 in Table 14 and test example E9 exhibited the highest number of times that each of the test samples was in the top 3 (9 for E3 and 11 for E9) in performance testing based on overall aroma intensity, Test examples E3 and E9 both contained Flavor 3. While Flavor 4 contained the same ingredients, it did not perform as well as Flavor 3, which differed from Flavor 4 in the amounts of eugenol and methyl benzoate.
The Examiner does not find Applicant’s argument of unexpected results to be persuasive. One of ordinary skill in the art would have reasonably expected test examples comprising Flavor 3 to be ranked closer to the control sample with methyl salicylate than test examples comprising Flavor 4. As discussed in the rejection, methyl salicylate provides a wintergreen flavor. As evidenced by JP 7721778 B1, methyl benzoate has a dry, fruity scent with a wintergreen aroma (page 2 of translation). As evidenced by Scott et al. (US 2012/0014883, Jan. 19, 2012), eugenol has an extremely strong spicy flavor and aroma (¶ [0003]). Table 4 of the instant specification shows wherein Flavor 3 comprises a higher amount of methyl benzoate and a lower amount of eugenol compared to Flavor 4. Therefore, one of ordinary skill in the art would have reasonably expected test examples comprising Flavor 3 to be ranked closer to the control sample with methyl salicylate than test examples comprising Flavor 4 since Flavor 3 would be closer to a wintergreen flavor than Flavor 4 since Flavor 3 comprises more of a flavoring agent that provides a wintergreen aroma and less of a flavoring agent that does not provide a wintergreen aroma. As such, Applicant’s argument is unpersuasive.
Furthermore, as stated in MPEP 716.02, any difference between the claimed invention and the prior art may be expected to result in some difference in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. According to MPEP 716.02(b), the evidence relied upon should establish that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. Table 14 shows wherein E3 comprising Flavor 3 was in the top 3 9 times, while E4 comprising Flavor 4 was in the top 3 4 times. Table 16 shows wherein E9 comprising Flavor 3 was in the top 3 11 times, while E10 comprising Flavor 4 was in the top 3 7 times. It is unclear how a difference of 4 or 5 individuals not ranking test examples comprising Flavor 4 in the top 3 makes test examples comprising Flavor 3 unexpected. The results could change when tested on more individuals since the results are subjective to a particular individual. In other words, it is unclear how a difference of 4 or 5 individuals makes the result of statical and practical significance. As such, Applicant’s argument is unpersuasive.
Moreover, even if Applicant’s showing was probative of unexpected results, the claims are not commensurate in scope with the showing. Claim 1 recites wherein the composition comprises 32.4 wt. % to 70 wt. % methyl benzoate and 0.5 ppm to 2.9 wt. % eugenol. Table 4 shows wherein Flavor 3 and 4 differ in methyl benzoate by 2.1 wt. % and differ in eugenol by 1.1%. If such a small change in amount causes an unexpected result, one of ordinary skill in the art would not reasonably expect the entire large claimed range to be unexpected. Also, Flavor 3 and the test examples comprise other flavoring agents not claimed. Since flavoring agents contribute to the overall aroma of the composition, one of ordinary skill in the art would not reasonably expect the same aroma intensity results as the showing with a composition with different flavoring agents. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1-7 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY LIU whose telephone number is (571)270-5115. The examiner can normally be reached Mon-Fri 9 am - 5 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 at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRACY LIU/Primary Examiner, Art Unit 1614