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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 1-4 and 17) in the reply filed on 12/4/2025 is acknowledged.
Claims 9-13, 19, 21-23, 30-33, 35-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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 1-4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to Ley (US 20020188019), hereinafter Ley, in view of Thomsen (US 20180216152), hereinafter Thomsen.
Regarding claim 1 and 3-4, Ley teaches a method of reducing or blocking the bitter taste (para discloses "for masking or reducing bitter and/or metallic taste impression") of an orally consumable composition (such as "oral pharmaceutical preparations" disclosed in para 1) comprising one or more bitter tastants (para 3), the method comprising adding to the orally consumable composition an effective amount of a bitter blocker such as hydroxyflavanones (para 37), which can be found in nature bound as glycoside (para 38) or isolated components such as homoeriodictyol and eriodictyol (para 38), but does not teach specific claimed eriodictyol or homoeriodictyol; i.e. does not teach that the bitter blocker is selected from "the group consisting of eriodjctyol-8-C-ß-glucoside, homoeriodictyol 4'-O-glucoside, and homoeriodictyol 7-0-glucoside".
`Thomsen teaches that it is known that hydrogenation derivatives of a number of flavanone glycosides such as naringin, hesperidin and narirutin were useful to mask bitter taste of citrus juices (para 2), and that such known flavanone glycosides include "homoeriodictyol glycosides" such as "homoerjodictyol-7-O-glucoside" (para 49). It would have been obvious to one of ordinary skills in the art before the effective filing of the claimed invention to modify Ley to use a specific known homoeriodictyol such as homoeriodictyoi-7O-glucoside. The ordinary artisan would have been motivated to modify Ley for at least the purpose of using a known homoeriodictyol that is known especially to mask bitter taste in citrus flavor orally consumable compositions (see para 2 and 49 of Thomsen).
Further, Ley does not specifically state that the bitter taste of the orally consumable composition is reduced by "at least 50%" (as recited in claim 1), or by "at least 50%, 60%, or 80%" (as recited in claim 4); OR that the orally consumable composition comprises (as recited in claim 3) "at least 100 mg/L" of the one or more bitter tastants. However, Ley teaches that amount of bitter blocker may be varied (para 39) and also that reduction in bitterness can be quantified (para 52) by using a sample with fixed amount of bitter tastant (such as "500-ppm containing caffeine solution" described in para 52) and subjecting it to differing amounts of bitter blocker (para 52) and then comparing bitterness with respect to bitter tastant (in this case, caffeine) in water solutions of different ppm (para 53-54; also see Figure 1).
Thus, Ley discloses that the bitterness increases as ppm of bitter tastant (such as caffeine) increases, and that the reduction in bitterness reduces with increasing bitter blocker at least up to a limit for a given bitter blocker (see Figure 1 and para 54), and that the reduction in bitterness varies depending on hydroxyflavanone used (see para 55-56 and Figure 2). Given that reduction in the bitter taste of the orally consumable composition, the amount of bitter tastant in the orally consumable composition are a known results effective variable and its dependence on amount and type of bitter blocker is also known (as explained above), varying the reduction in the bitter taste or amount of bitter tastant of the orally consumable composition would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior an, it is not inventive to discover the optimum or workable ranges by routine experimentation. " In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill before effective filing of the claimed invention to modify Ley so that bitter taste of the orally consumable composition is reduced by a target percent, such as "at least 50%" (as recited in claim 1), or by "at least 50%, 60%, or 80%" (as recited in claim 4); OR that the orally consumable composition comprises (as recited in claim 3) a specific amount of bitter tastant, such as "at least 100 mg/L" of the one or more bitter tastants. The ordinary artisan would have been motivated to modify Ley at least for the purpose of reducing the bitter taste to a specific amount for a given minimum amount of bitter tastant, so as not to exceed the bitterness that is acceptable to consumers.
Regarding claim 2, Ley (US 20020188019) teaches the method of claim 1, wherein the one or more bitter tastants are selected from at least caffeine or guaifenesin (para 37).
Regarding claim 17, Ley (US 20020188019) teaches the method or use of claim 1 , wherein the one or more bitter tastants are in a orally consumable composition (such as "oral pharmaceutical preparations" disclosed in para 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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, Nikki Dees can be reached on 571-270-3435. 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.
/JYOTI CHAWLA/Primary Examiner, Art Unit 1791