DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 22 May 2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 19-35
Withdrawn claims: None
Previously canceled claims: 1-18
Newly canceled claims: None
Amended claims: 19, 27, and 35
New claims: None
Claims currently under consideration: 19-35
Currently rejected claims: 19-35
Allowed claims: None
Claim Interpretation
Presently amended independent claims 19 and 27 recite, “Water for cats that has increased palatability and comprises a flavor composition consisting of…”, and presently amended independent claim 35 recites, “A pet foodstuff that has increased palatability and comprises a flavor composition consisting of…”. The claims use the open language “comprising”, and therefor do not limit the ingredients of the claimed invention to only those recited in the claims. The claims are toward the final products of water comprising the claimed ingredients and a pet foodstuff comprising the claimed ingredients, and not toward the recited flavor composition specifically. In the final products, one would be unable to ascertain whether the claimed ingredients originated from the recited “flavor composition consisting of…” alone or from other compositions of ingredients, which are within the scope of the claimed products. Additionally, the claimed amounts are with respect to the intermediate composition, and the claims are toward the final products. No minimum amount of the intermediate composition is claimed, and as such, it is only required that the claimed ingredients are present in the final product. The claimed concentrations do not carry patentable weight when expressed only in reference to the intermediate. Therefore, prior art disclosing or suggesting water and/or pet foodstuff compositions comprising the claimed ingredients is within the scope of the presently amended claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19-34 are rejected under 35 U.S.C. 103(a) as being unpatentable over Niceron et al. (WO 2013/007639 A1, cited on the IDS filed on 24 October 2022) in view of Ramsay et al. (WO 2009/009879) and Imafidon et al. (US 2005/0142169 A1, cited on the IDS filed on 24 October 2022).
Regarding claims 19 and 27, Niceron teaches a palatability-enhancing composition, which may be liquid (p. 16, line 20), for preparing cat food (p. 1, lines 5-9) comprising:
(a) one or more nucleotides selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof that is present at a concentration between about 0.5 mM and about 10 mM – Niceron discloses that the palatability-enhancing composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition (p. 15, lines 22-23). Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3).
To convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
GMP
363.22
0.01
75
0.28
2065
IMP
348.21
0.01
75
0.29
2154
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
(b) histidine present at a concentration between about 20 mM to about 50 mM – Niceron teaches that the composition comprises about 1-70% free amino acids (p.12, lines 19-20), wherein specific combinations and amounts of free amino acids were found to have a palatability-enhancing effect in cats (p. 12, lines 14-20). The amino acids may comprise histidine (His) at a concentration of 0.1-10% by weight of histidine (p. 13, Table 2). See discussion after (c) below regarding the relationship between the claimed and disclosed ranges.
(c) proline (re: claim 19) or threonine (re: claim 27) present at a concentration between about 20 mM to about 50 mM – With respect to claim 19, Niceron discloses that the amino acids may further comprise proline (Pro, p.12, line 33) at a concentration of 0.05-20% by weight of proline (p. 13, Table 2). With respect to claim 27, in a preferred embodiment, the composition further comprises threonine (Thr) in an amount of about 0.01-25% by weight of the composition (p. 15, lines 1-8). See also Example 2 (p. 25), including Table 7, which discloses an additive composition comprising amino acids including His, Pro, and Thr that is demonstrated to have palatability enhancing properties as indicated in Table 8.
To convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
Histidine
155.16
0.01
10
0.64
644
Proline
115.13
0.05
20
4.34
1737
Threonine
119.12
0.01
25
0.84
2099
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of the free amino acids by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
The Examiner notes that the properties of activating or not activating the cat umami receptor are inherent properties of the claimed histidine and either proline (re: claim 19) or threonine (re: claim 27). See MPEP § 2112.01(I), which states, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”, and MPEP § 2112.01(II), which states, “[I]f the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” The claimed properties, therefore, do not carry patentable weight.
Niceron does not specify that the liquid palatability-enhancing composition is water-based, and does not discuss that the composition also comprises:
(d) furaneol that is present at a concentration between about 1 ppm and about 10 ppm.
However, Ramsay teaches a beverage composition for promoting hydration of non-human animals comprising purified water and an attractant, and may also have a mimetic property that is appealing to the animal ([0025]). In one embodiment, the beverage composition is formulated for cats and dogs ([0038]). Ramsay further discloses that cats have developed taste sensitivity to certain amino acids ([0060]). The palatability enhancer compounds disclosed by Niceron are considered to be attractants or mimetics. Finally, Ramsay discloses that the beverage composition may also be used to increase consumption of a particular food or fluid, wherein the beverage composition is poured onto or mixed with the food or fluid to be consumed ([0040], bottom).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the palatability-enhancing composition of Niceron such that the palatability enhancing amino acids and monophosphates are added to purified water as attractants or mimetics as disclosed by Ramsay. One of ordinary skill in the art would have been motivated to formulate a beverage composition for cats as disclosed by Ramsay using the palatability enhancers as taught by Niceron to expand the application of the palatability-enhancing composition to provide consumers with a product to encourage their cats to consume more water. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Ramsay teaches that cats are often underhydrated ([0005]-[0006]), and a water composition comprising attractants or mimetics encourages cats to consume more water (Figure 1, “Water” vs. “PetQuench”).
Regarding the furaneol, Imafidon teaches the application of 1-2,000 ppm of furaneol as a palatability enhancer for cats ([0029], [0042]). The furaneol may be applied to a food in a liquid form to enhance palatability, or mixed with a commercial liquid palatability enhancer ([0075]). The composition may include other organoleptic substances ([0066]), palatability additives ([0068]), and amino acids ([0075]).
It would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include furaneol as an additional palatability enhancer for cats, as disclosed by Imafidon, in the palatability-enhancing water composition of Niceron as modified by Ramsay. One of ordinary skill in the art would have been motivated to include the furaneol to further increase the palatability of the water composition. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Imafidon teaches that alpha cyclic enolone compounds, such as furaneol ([0029]), enhance the palatability of compositions including foods, supplements, and treats ([0040] for cats at a concentration between 1 and 2000 ppm ([0042]). Furthermore, MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Since Imafidon discloses that the claimed furaneol is a suitable compound for use in a palatability-enhancing composition for cats, it would have been prima facie obvious to select furaneol to improve the palatability-enhancing water composition of Niceron modified by Ramsay.
The claimed range of between about 1 ppm and about 10 ppm of furaneol lies inside the disclosed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of furaneol by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
Therefore, claims 19 and 27 are rendered obvious in view of the prior art.
Regarding claims 20-23 and 28-31, Niceron, Ramsay, and Imafidon teach the water of claims 19 and 27.
Niceron also teaches that the one or more nucleotides may be a combination of GMP and IMP (re: claims 20 and 28) and that the one or more nucleotides is GMP (re: claims 22 and 30) – Niceron discloses that the palatability-enhancing composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition. Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3). Therefore, it would have been obvious for one of ordinary skill in the art to include GMP and IMP in the palatability-enhancing composition together or individually.
As indicated in the table presented above regarding claims 19 and 27, Niceron discloses a range of GMP from 0.28 mM to 2065 mM and a range of IMP from 0.29 mM to 2154 mM. The claimed ranges of 2 mM to 3 mM (re: claims 21, 23, 29, and 31) lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition. Claims 20-23 and 28-31 are therefore obvious.
Regarding claims 24-25 and 32-33, Niceron, Ramsay, and Imafidon teach the water of claims 19 and 27. As indicated in the table presented above regarding claims 19 and 27, Niceron discloses a range of histidine from 0.64 mM to 644 mM, a range of proline from 4.34 mM to 1737 mM, and a range of threonine from 0.84 mM to 2099 mM. The claimed ranges of 20 mM to 30 mM (re: claims 24 and 32) and the amount of 25 mM (re: claims 25 and 33) lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of the free amino acids by routine experimentation to achieve the desired result of providing a palatability-enhancing composition. Claims 24-25 and 32-33 are therefore obvious.
Regarding claims 26 and 34, Niceron, Ramsay, and Imafidon teach the water of claims 19 and 27.
As indicated regarding claims 19 and 27, Niceron does not disclose furaneol in the composition.
However, Imafidon teaches the application of 1-2,000 ppm of furaneol as a palatability enhancer for cats ([0029], [0042]).
Therefore, it would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include furaneol as an additional palatability enhancer for cats, as disclosed by Imafidon, in the palatability-enhancing water composition of Niceron as modified by Ramsay with the same motivation and expectation of success as described regarding claims 19 and 27 above.
The claimed range of between about 2 ppm and about 5 ppm of furaneol lies inside the disclosed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of furaneol by routine experimentation to achieve the desired result of providing a palatability-enhancing composition. Claims 26 and 34 are therefore obvious.
Claim 35 is rejected under 35 U.S.C. 103(a) as being unpatentable over Niceron et al. (WO 2013/007639 A1, cited on the IDS filed on 24 October 2022) in view Imafidon et al. (US 2005/0142169 A1, cited on the IDS filed on 24 October 2022).
Regarding claim 35, Niceron teaches a palatability-enhancing composition, which may be dry or liquid (p. 16, line 20), for preparing cat food (p. 1, lines 5-9) (i.e., a pet foodstuff) comprising:
(a) one or more nucleotides selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof that is present at a concentration between about 0.5 mM and about 10 mM – Niceron discloses that the palatability-enhancing composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition (p. 15, lines 22-23). Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3).
To convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
GMP
363.22
0.01
75
0.28
2065
IMP
348.21
0.01
75
0.29
2154
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
(b) histidine present at a concentration between about 20 mM to about 50 mM – Niceron teaches that the composition comprises about 1-70% free amino acids (p.12, lines 19-20), wherein specific combinations and amounts of free amino acids were found to have a palatability-enhancing effect in cats (p. 12, lines 14-20). The amino acids may comprise histidine (His) at a concentration of 0.1-10% by weight of histidine (p. 13, Table 2). See discussion after (c) below regarding the relationship between the claimed and disclosed ranges.
(c) threonine present at a concentration between about 20 mM to about 50 mM – In a preferred embodiment, the composition further comprises threonine (Thr) in an amount of about 0.01-25% by weight of the composition (p. 15, lines 1-8). See also Example 2 (p. 25), including Table 7, which discloses an additive composition comprising amino acids including His and Thr that is demonstrated to have palatability enhancing properties as indicated in Table 8.
To convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
Histidine
155.16
0.01
10
0.64
644
Threonine
119.12
0.01
25
0.84
2099
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of the free amino acids by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
The Examiner notes that the properties of activating or not activating the cat umami receptor are inherent properties of the claimed histidine and threonine. See MPEP § 2112.01(I), which states, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”, and MPEP § 2112.01(II), which states, “[I]f the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” The claimed properties, therefore, do not carry patentable weight.
Niceron does not discuss that the composition also comprises:
(d) furaneol that is present at a concentration between about 1 ppm and about 10 ppm.
Regarding the furaneol, Imafidon teaches the application of 1-2,000 ppm of furaneol as a palatability enhancer for cats ([0029], [0042]). The furaneol may be applied to a food in a liquid form to enhance palatability, or mixed with a commercial liquid palatability enhancer ([0075]). The composition may include other organoleptic substances ([0066]), palatability additives ([0068]), and amino acids ([0075]).
It would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include furaneol as an additional palatability enhancer for cats, as disclosed by Imafidon, in the composition of Niceron. One of ordinary skill in the art would have been motivated to include the furaneol to further increase the palatability of the composition. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Imafidon teaches that alpha cyclic enolone compounds, such as furaneol ([0029]), enhance the palatability of compositions including foods, supplements, and treats ([0040] for cats at a concentration between 1 and 2000 ppm ([0042]). Furthermore, MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Since Imafidon discloses that the claimed furaneol is a suitable compound for use in a palatability-enhancing composition for cats, it would have been prima facie obvious to select furaneol to improve the composition of Niceron.
The claimed range of between about 1 ppm and about 10 ppm of furaneol lies inside the disclosed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of furaneol by routine experimentation to achieve the desired result of providing a composition with enhanced palatability.
Therefore, claim 35 is rendered obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-19 and 21-24, and 27-28 of copending Application No. 18/046,980 in view of Imafidon et al. (US 2005/0142169 A1, cited on the IDS filed on 24 October 2022) and Niceron et al. (WO 2013/007639 A1, cited on the IDS filed on 24 October 2022).
Regarding claim 19, copending application ‘980 claim 18 claims water for cats that has increased palatability comprising a flavor composition consisting of:
(a) a first free amino acid that activates a cat umami receptor that is present at a concentration between about 20 mM and about 50 mM;
(b) a second free amino acid that does not activate the cat umami receptor that is present at a concentration between about 20 mM and about 50 mM; and
(c) a furanone that is present at a concentration between about 1 ppm and about 10 ppm; wherein the first free amino histidine and the second free amino acid is proline.
Copending ’980 claim 23 claims water for cats that has increased palatability comprising a flavor composition consisting of a first free amino acid that activates a cat umami receptor that is present at a concentration between about 20 mM and about 50 mM, and a second free amino acid that does not activate the cat umami receptor that is present at a concentration between about 20 mM and about 50 mM; wherein (a) the first free amino histidine and the second free amino acid is proline; (b) the first free amino acid is alanine and the second free amino acid is threonine; (c) the first free amino acid is glycine and the second free amino acid is threonine, and copending ‘980 claim 24 claims the water of copending ‘980 claim 23, wherein the first free amino histidine and the second free amino acid is proline.
Copending ‘980 claims 18 and 23-24 do not claim that the furanone is furaneol or one or more nucleotides selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof that is present at a concentration between about 0.5 mM and about 10 mM.
However, regarding the furaneol, Imafidon teaches the application of 1-2,000 ppm of furaneol as a palatability enhancer for cats ([0029], [0042]). The furaneol may be applied to a food in a liquid form to enhance palatability, or mixed with a commercial liquid palatability enhancer ([0075]). The composition may include other organoleptic substances ([0066]), palatability additives ([0068]), and amino acids ([0075]).
It would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include furaneol as an additional palatability enhancer for cats, as disclosed by Imafidon, in the water for cats claimed in copending ‘980. MPEP § 2144.07 states, “The selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination”. Since Imafidon discloses that the claimed furaneol is a suitable compound for use in a palatability-enhancing composition for cats ([0029], [0042]), it would have been prima facie obvious to select furaneol to improve the palatability-enhancing water composition of copending ‘980.
The claimed range of between about 1 ppm and about 10 ppm of furaneol lies inside the disclosed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of furaneol by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
Regarding the GMP and IMP, Niceron teaches a palatability-enhancing composition, which may be liquid (p. 16, line 20), for preparing cat food (p. 1, lines 5-9). Niceron discloses that the composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition. Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3).
It would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include a palatability enhancer in a water for cats as claimed in copending ‘980 and modified by Imafidon, comprising 0.01-75% of GMP and/or IMP, as taught by Niceron, to obtain a water for cats comprising furaneol, 0.01-75% of GMP and/or IMP, histidine, and proline. One of ordinary skill in the art would have been motivated to include GMP and/or IMP as a palatability enhancer because it further enhances the palatability of food products for cats (Niceron, p. 1, lines 5-9).
Regarding the concentrations of GMP and IMP, to convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
GMP
363.22
0.01
75
0.28
2065
IMP
348.21
0.01
75
0.29
2154
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
Claim 19 is therefore rendered obvious.
Regarding claims 20-23, copending ‘980 claims 18 and 23-24 in view of Imafidon and Niceron teach the water of claim 19 as described above.
Niceron also teaches that the one or more nucleotides may be a combination of GMP and IMP (re: claim 20) and that the one or more nucleotides is GMP (re: claim 22) – Niceron discloses that the palatability-enhancing composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition. Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3). Therefore, it would have been obvious for one of ordinary skill in the art to include GMP and IMP in the palatability-enhancing composition together or individually.
As indicated in the table presented above regarding claim 19, Niceron discloses a range of GMP from 0.28 mM to 2065 mM and a range of IMP from 0.29 mM to 2154 mM. The claimed ranges of 2 mM to 3 mM (re: claims 21 and 23) lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition. Claims 20-23 are therefore obvious.
Regarding claim 24, copending ‘980 claims 18 and 23-24 in view of Imafidon and Niceron teach the water of claim 19 as described above.
Copending ‘980 claim 21 claims the water of claim 18, wherein the first free amino acid is present at a concentration of between about 20 mM and about 30 mM, and the second free amino acid is present at a concentration of between about 20 mM and about 30 mM.
Copending ‘980 claim 27 claims the water of claim 23, wherein the first free amino acid is present at a concentration of between about 20 mM and about 30 mM, and the second free amino acid is present at a concentration of between about 20 mM and about 30 mM.
Regarding claim 25, copending ‘980 claims 18 and 23-24 in view of Imafidon and Niceron teach the water of claim 19 as described above.
Copending ‘980 claim 28 claims the water of copending ‘980 claim 27, wherein the first free amino acid is present at a concentration of about 25 mM, and the second free amino acid is present at a concentration of about 25 mM.
Regarding claim 26, copending ‘980 claims 18 and 23-24 in view of Imafidon and Niceron teach the water of claim 19 as described above.
Copending ‘980 claim 22 claims the water of copending ‘980 claim 18, wherein the furanone is present at a concentration between about 2 ppm and about 5 ppm.
This is a provisional nonstatutory double patenting rejection.
Claims 19-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/046,980 in view of Niceron et al. (WO 2013/007639 A1, cited on the IDS filed on 24 October 2022).
Regarding claim 19, copending application ‘980 claim 18 claims water for cats that has increased palatability comprising a flavor composition consisting of:
(a) a first free amino acid that activates a cat umami receptor that is present at a concentration between about 20 mM and about 50 mM;
(b) a second free amino acid that does not activate the cat umami receptor that is present at a concentration between about 20 mM and about 50 mM; and
(c) a furanone that is present at a concentration between about 1 ppm and about 10 ppm; wherein the first free amino histidine and the second free amino acid is proline.
Copending ’980 claim 20 claims the water of ‘980 claim 19 (which depends from ‘980 claim 18), wherein the furanone is selected from the group consisting of furaneol.
Copending ‘980 claim 20 does not claim one or more nucleotides selected from the group consisting of guanosine monophosphate (GMP), inosine monophosphate (IMP), and a combination thereof that is present at a concentration between about 0.5 mM and about 10 mM.
However, Niceron teaches a palatability-enhancing composition, which may be liquid (p. 16, line 20), for preparing cat food (p. 1, lines 5-9). Niceron discloses that the composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition. Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3).
It would have been obvious for one of ordinary skill in the art, before the time the invention was made, to include a palatability enhancer in a water for cats as claimed in copending ‘980 and modified by Imafidon, comprising 0.01-75% of GMP and/or IMP, as taught by Niceron, to obtain a water for cats comprising furaneol, 0.01-75% of GMP and/or IMP, histidine, and proline. One of ordinary skill in the art would have been motivated to include GMP and/or IMP as a palatability enhancer because it further enhances the palatability of food products for cats (Niceron, p. 1, lines 5-9).
Regarding the concentrations of GMP and IMP, to convert the disclosed weight percentages to units of mM, the following formula is used:
Concentration (mM) = (weight percent of the liquid composition (g/100 mL) x 1000 mL/L) / molar mass (g/mol) x 1000 mmol/mol = mmol/L = mM
Therefore, Niceron discloses:
Niceron et al.
g/mol
wt. % low
wt. % high
mM low
mM high
Histidine
155.16
0.01
10
0.64
644
Proline
115.13
0.05
20
4.34
1737
Threonine
119.12
0.01
25
0.84
2099
The claimed ranges lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition.
Claim 20 is therefore rendered obvious.
Regarding claims 20-23, copending ‘980 claim 20 in view of Niceron teaches the water of claim 19 as described above.
Niceron also teaches that the one or more nucleotides may be a combination of GMP and IMP (re: claim 20) and that the one or more nucleotides is GMP (re: claim 22) – Niceron discloses that the palatability-enhancing composition advantageously comprises at least one inorganic phosphate, preferably a monophosphate (p. 15, lines 9-13), in an amount of about 0.01-75% by weight of the composition. Niceron provides guanosine monophosphate (GMP) and inosine monophosphate (IMP) as examples of monophosphates (p. 9, lines 1-3). Therefore, it would have been obvious for one of ordinary skill in the art to include GMP and IMP in the palatability-enhancing composition together or individually with the same motivation and expectation of success as described regarding claim 19 above.
As indicated in the table presented above regarding claim 19, Niceron discloses a range of GMP from 0.28 mM to 2065 mM and a range of IMP from 0.29 mM to 2154 mM. The claimed ranges of 2 mM to 3 mM (re: claims 21 and 23) lie inside the disclosed ranges. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). MPEP § 2144.05(II)(A) states, “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Therefore, it would have been obvious for one of ordinary skill in the art to optimize the amount of GMP and/or IMP by routine experimentation to achieve the desired result of providing a palatability-enhancing composition. Claims 20-23 are therefore obvious.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 22 May 2026 have been fully considered, but they are not persuasive.
Applicant has amended independent claims 19 and 27 recite, “Water for cats that has increased palatability and comprises a flavor composition consisting of…”, and presently amended independent claim 35 recites, “A pet foodstuff that has increased palatability and comprises a flavor composition consisting of…”. Applicant contends that the Examiner has failed to establish a prima facie case of obviousness of the instant claims (p. 5, ¶ 3).
Applicant first argued that the Examiner has provided insufficient evidentiary basis explaining why, out of the enormous number of possibilities encompassed within the lists and ranges of Niceron, a skilled artisan would have made the particular selections and modifications that would be required to arrive at the ranges recited in the pending claims (pp. 6-7, bridging ¶). Applicant argued that the mere fact that one might arrive at the claimed food products from the broad list of amino acids and broad ranges disclosed in the references is insufficient to establish obviousness, and Niceron, alone or in combination with Ramsay and Imafidon, forms an insufficient basis for an obviousness rejection under 35 U.S.C. § 103 (Id.). Applicant asserted that the present case is similar to that of In re Baird, “[a] disclosure of millions of compounds does not render obvious a claim to three compounds.” (p. 6, ¶ 2).
Applicant’s arguments have been considered, but they are not persuasive. Presently amended independent claims 19 and 27 recite, “Water for cats that has increased palatability and comprises a flavor composition consisting of…”, and presently amended independent claim 35 recites, “A pet foodstuff that has increased palatability and comprises a flavor composition consisting of…”. The claims use the open language “comprising”, and therefor do not limit the ingredients of the claimed invention to only those recited in the claims. The claims are toward the final products of water comprising the claimed ingredients and a pet foodstuff comprising the claimed ingredients, and not toward the recited flavor composition specifically. In the final products, one would be unable to ascertain whether the claimed ingredients originated from the recited “flavor composition consisting of…” alone or from other compositions of ingredients, which are within the scope of the claimed products. Additionally, the claimed amounts are with respect to the intermediate composition, and the claims are toward the final products. No minimum amount of the intermediate composition is claimed, and as such, it is only required that the claimed ingredients are present in the final product. The claimed concentrations do not carry patentable weight when expressed only in reference to the intermediate. Therefore, prior art disclosing or suggesting water and/or pet foodstuff compositions comprising the claimed ingredients is within the scope of the presently amended claims.
As described in the Office Action, Niceron already teaches the combination of the claimed amino acids in amounts that would have been prima facie obvious to one of ordinary skill in the art. Niceron teaches the combination of the claimed amino acids (p. 12, lines 14-20, 25-26, 32-33 and p. 15, lines 1-6, p. 25, Table 7) and nucleotides (p. 15, lines 9-13; see also p. 9 lines 1-3) as described in the rejection. Applicant argued that Niceron provides no guidance on which amino acids to select from, e.g., List III (p. 12, lines 25-26, 32-33) and List IV (p. 15, lines 1-4). However, in Example 2 (p. 25), Table 7 clearly shows a selection of amino acids from List III and List IV, which includes the His, Pro, and Thr of the instant claims. Niceron uses these amino acids in an additive composition that is demonstrated to have palatability enhancing properties as indicated in Table 8. As indicated above, an amino acid composition comprising amino acids in addition to the claimed histidine and proline or histidine and threonine, as in Niceron, when added to water or a pet foodstuff, still falls within the scope of the claimed invention; the claims use the open language “comprising”, and therefore do not limit the ingredients of the claimed invention (i.e., water or pet foodstuff) to only those recited in the claims. Thus, the disclosure of the combination of several amino acids by Nieron, which fall within the scope of the clamed invention, does not amount to a situation as in Baird of disclosure of millions of compounds not representing obviousness of a claim to three compounds. Additionally, where the concentration ranges of Niceron are broad, the claimed ranges lie inside the disclosed ranges, and thus a prima facie case of obviousness exists per MPEP § 2144.05(I). The alleged necessity to perform a large number of optimization experiments does not fall outside the realm of routine experimentation. Moreover, the claimed amounts are with respect to the intermediate composition, and the claims are toward the final products. No minimum amount of the intermediate composition is claimed, and as such, it is only required that the claimed ingredients are present in the final product. The claimed concentrations do not carry patentable weight when expressed only in reference to the intermediate.
The secondary references, Ramsay and Imafidon, are cited to provide the combination of amino acids and nucleotides disclosed by Niceron to plain water and to add furaneol as an additional palatability enhancer. The motivations to combine these elements to arrive at the claimed invention are provided in the rejection of the independent claims. It is maintained that the motivations for doing so described in the rejections are valid and would be apparent to one of ordinary skill in the art.
For at least these reasons, Applicant’s arguments are not found to be persuasive, and the rejections of claims 19-35 under 35 U.S.C. § 103(a) are maintained.
Double Patenting:
Applicant makes no substantive arguments concerning the double patenting rejections (p. 7, ¶ 2-3). Applicant’s request to hold in abeyance the outstanding non-statutory double patenting rejections of the pending claims is granted.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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