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 16 June 2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 18-29
Withdrawn claims: None
Previously canceled claims: 1-17
Newly canceled claims: None
Amended claims: 18, 23, and 29
New claims: None
Claims currently under consideration: 18-29
Currently rejected claims: 18-29
Allowed claims: None
Claim Interpretation
Presently amended independent claims 18 and 23 recite, “Water for cats that has increased palatability comprising a flavor composition consisting of…”, and presently amended independent claim 29 recites, “A pet foodstuff that has increased palatability comprising 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 18-22 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 18-20, 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) a first free amino acid that is histidine – 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 (p. 13, Table 2). See discussion after (b) below regarding the relationship between the claimed and disclosed ranges;
(b) a second free amino acid that is proline –Niceron discloses that the amino acids may further comprise proline (Pro, p. 12, line 33) at a concentration of 0.05-20% by weight (p. 13, Table 2). See also Example 2 (p. 25), including Table 7, which discloses an additive composition comprising amino acids including His and Pro 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
The claimed ranges of 20 mM to 50 mM 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 proline. 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 teach that the composition also comprises:
(c) a furanone 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 time the invention was made, modify the palatability-enhancing composition of Niceron such that the palatability-enhancing amino acids 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 furanone of claims 18-20, Imafidon teaches the application of 1-2,000 ppm of 2,5-dimethyl-4-hydroxy-3(2H)-furanone, also known as 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 18-20 are rendered obvious in view of the prior art.
Regarding claim 21, Niceron, Ramsay, and Imafidon teach the water of claim 18.
As indicated in the table presented above regarding claim 18, Niceron discloses a range of histidine from 0.64 mM to 644 mM and a range of proline from 4.34 mM to 1737 mM. The claimed ranges of 20 mM to 30 mM 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. Claim 21 is therefore obvious.
Regarding claim 22, Niceron, Ramsay, and Imafidon teach the water of claim 18.
As indicated regarding claim 18, Niceron does not disclose a furanone in the composition.
However, Imafidon teaches the application of 1-2,000 ppm of 2,5-dimethyl-4-hydroxy-3(2H)-furanone, also known as 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 claim 18 above.
The claimed range of between about 2 ppm and about 5 ppm of furanone 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 furanone by routine experimentation to achieve the desired result of providing a palatability-enhancing composition for cats. Claim 22 is therefore obvious.
Claims 23-28 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).
Regarding claims 23-26, 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 first free amino acid that is histidine (re: 23(a)-24), alanine (re: claims 23(b) and 25) or glycine (re: claims 23(c) and 26) – 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, alanine (Ala) at a concentration of (0.08-30% by weight, and/or glycine (Gly) at a concentration of 0.04-20% by weight (p. 13, Table 2). See discussion below regarding the relationship between the claimed and disclosed ranges;
a second free amino acid that is proline (re: 23(a)-24) or threonine (re: claims 23(b)-(c) and 25-26) – Niceron discloses that the amino acids may further comprise proline (Pro, p.12, line 33) at a concentration of 0.05-20% by weight (p. 13, Table 2). Niceron also discloses that, 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, Thr, Ala, and Gly 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
Alanine
89.094
0.08
30
8.98
3367
Glycine
75.067
0.04
20
5.33
2664
The claimed ranges of 20 mM to 50 mM 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 first free amino acids histidine, alanine, and glycine and the claimed second free amino acids proline 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 specify that the liquid palatability-enhancing composition is water-based.
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 time the invention was made, to modify the palatability-enhancing composition of Niceron such that the palatability enhancing amino acids 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”).
Therefore, claims 23-26 are rendered obvious in view of the prior art.
Regarding claims 27-28, Niceron and Ramsay teach the water of claim 23.
As indicated in the table presented above regarding claim 23, Niceron discloses a range of histidine from 0.64 mM to 644 mM, a range of alanine from 8.98 mM to 3367 mM, a range of glycine from 5.33 mM to 2664 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: claim 27) and the amount of 25 mM (re: claim 28) 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 27-28 are therefore obvious.
Claim 29 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).
Regarding claim 29, 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 first free amino acid that is histidine (re: 23(a)-24), alanine (re: claims 23(b) and 25) or glycine (re: claims 23(c) and 26) – 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, alanine (Ala) at a concentration of (0.08-30% by weight, and/or glycine (Gly) at a concentration of 0.04-20% by weight (p. 13, Table 2). See discussion below regarding the relationship between the claimed and disclosed ranges;
a second free amino acid that is proline (re: 23(a)-24) or threonine (re: claims 23(b)-(c) and 25-26) – Niceron discloses that the amino acids may further comprise proline (Pro, p.12, line 33) at a concentration of 0.05-20% by weight (p. 13, Table 2). Niceron also discloses that, 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, Thr, Ala, and Gly 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
Alanine
89.094
0.08
30
8.98
3367
Glycine
75.067
0.04
20
5.33
2664
The claimed ranges of 20 mM to 50 mM 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 first free amino acids histidine, alanine, and glycine and the claimed second free amino acids proline 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.
Therefore, claim 29 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 18-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19, 24, and 26 of copending Application No. 18/046,963.
Regarding claim 18, copending application ‘963 claim 19 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 – ‘963 claim 19, part (b);
(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 – ‘963 claim 19, part (c); and
(c) a furanone that is present at a concentration between about 1 ppm and about 10 ppm – ‘963 claim 19, part (d). Since furaneol is a furanone, ‘963 claim 19(d) teaches the instant claim 18(c);
wherein the first free amino histidine and the second free amino acid is proline.
Regarding claims 19-20, copending application ‘963 claim 19 teaches instant claim 18 as described above. Copending ‘963 claim19(d) claims furaneol that is present at a concentration between about 1 ppm and about 10 ppm. Since furaneol is a furanone, ‘963 claim 19(d) further teaches the limitations of instant claims 19-20.
Regarding claim 21, copending application ‘963 claim 19 teaches instant claim 18 as described above. Copending ‘963 claim 24 teaches that the first free amino acid is present at a concentration between about 20 mM and about 30 mM, and the second free amino acid is present at a concentration between about 20 mM and about 30 mM.
Regarding claim 22, copending application ‘963 claim 19 teaches instant claim 18 as described above. Copending ‘963 claim 26 teaches that the furanone (i.e., furaneol) is present at a concentration between about 2 ppm and about 5 ppm.
This is a provisional nonstatutory double patenting rejection.
Claims 23-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 24-25 of copending Application No. 18/046,963 in view of Niceron et al. (WO 2013/007639 A1, cited on the IDS filed on 24 October 2022).
Regarding claims 23-26, copending application ‘963 claim 19 claims water for cats that has increased palatability comprising 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 – ‘963 claim 19, parts (b) and (c);
wherein the first free amino histidine and the second free amino acid is proline (re: claims 23(a) and 24).
Copending ‘963 claim 19 does not claim that the first free amino acid is alanine and the second free amino acid is threonine (re: claims 23(b) and 25) or that the first free amino acid is glycine and the second free amino acid is threonine (re: claims 23(c) and 26).
However, 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 first free amino acid that is histidine (re: 23(a)-24), alanine (re: claims 23(b) and 25) or glycine (re: claims 23(c) and 26) – 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, alanine (Ala) at a concentration of (0.08-30% by weight, and/or glycine (Gly) at a concentration of 0.04-20% by weight (p. 13, Table 2). See discussion below regarding the relationship between the claimed and disclosed ranges;
a second free amino acid that is proline (re: 23(a)-24) or threonine (re: claims 23(b)-(c) and 25-26) – Niceron discloses that the amino acids may further comprise proline (Pro, p.12, line 33) at a concentration of 0.05-20% by weight (p. 13, Table 2). Niceron also discloses that, 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).
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
Alanine
89.094
0.08
30
8.98
3367
Glycine
75.067
0.04
20
5.33
2664
The claimed ranges of 20 mM to 50 mM 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 23-26 are therefore rendered obvious.
Regarding claims 27-28, copending application ‘963 claim 19 in view of Niceron teaches instant claim 23 as described above. Copending ‘963 claim 24 teaches that the first free amino acid is present at a concentration between about 20 mM and about 30 mM, and the second free amino acid is present at a concentration between about 20 mM and about 30 mM (re: instant claim 27). Copending ‘963 claim 25 teaches that 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 (re: claim 28). The instant claims 27-28 are therefore also rendered obvious for the same reasons as described regarding claim 23 above.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 16 June 2026 have been fully considered, but they are not persuasive.
Applicant has amended independent claims 18 and 23 recite, “Water for cats that has increased palatability and comprises a flavor composition consisting of…”, and presently amended independent claim 29 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. 4, ¶ 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. 5-6, 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. 5, ¶ 2).
Applicant’s arguments have been considered, but they are not persuasive. Presently amended independent claims 18 and 23 recite, “Water for cats that has increased palatability and comprises a flavor composition consisting of…”, and presently amended independent claim 29 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 18-29 under 35 U.S.C. § 103(a) are maintained.
Double Patenting:
Applicant makes no substantive arguments concerning the double patenting rejections (p. 6, ¶ 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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