DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of the amendment and response filed 11/28/2025.
Claims 1, 4, 5, 7, 10-12, 14, 17-19, 21, 24, 25, and 27-34 are pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/15/2025 was filed before close of prosecution in the application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1,7,14,21,and dependent claims are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1,7,14,21 recite a composition, adding the composition to food, a food comprising the composition and a method of enhancing mouth coating property. All are directed to a composition comprising components A and C and dependent claims may have compound B as well.
Neither the compositions nor the food compositions are defined in scope. It is unclear how much of the composition is added as the amounts are based on “food to be eaten” broadly interpreted as cooked food. Additionally the presence of the claimed compounds from food components generated in cooked aroma is not precluded. The scope of the claimed invention is unclear.
Further, “enhanced” is a relative term, rendering the claimed invention indefinite.
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 1,4,5,7,10-12,14, 17-19,21,24,25,27-34 are rejected under 35 USC 103 as being unpatentable over Amano et al. (JP 2019050775 A) in view of Shuying (CN108651958A), cited in an IDS.
Amano discloses a mouth coating sensitivity enhancer comprises beta -caryophyllene oxide heated product (oxide) and/or furfuryl alcohol (C) heated product as an active ingredient, its addition to food products and food products comprising the composition. Amano does not specifically disclose a selection from group A as claimed.
However, Shuying discloses (abstract, working examples) the preparation of
flavoring compositions having natural brown sugar flavor that combine selections from A
and C for use in food products.
Motivation for combining is based on the known property of cyclotene, furanones and lactones present in brown sugar aroma to impart creamy (therefore enhanced mouth-coating sensation), sweet and caramel notes to food compositions. Brown sugar flavor is strongly influenced by Maillard -derived compounds such as cyclopentenolone derivatives (e.g. cyclotene) and furanone/lactone compounds that contribute characteristic caramel, maple and burnt-sugar notes and can enhance creamy mouthfeel perception.
Shuying discloses that the natural brown sugar aroma imparts heat resistance and stability to food composition [0158].
Absent evidence to the contrary, the claimed mouth coating enhancement is not unexpected.
It would have been obvious to one of ordinary skill in the art to have combined the disclosures in Amano and Shuying in formulating stable flavoring compositions in food products having an enhanced mouth-coating feel while simultaneously having no off-taste or off-odor with a reasonable expectation of success.
Attention is drawn to MPEP 2144.06 which states that "[I]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose ....[T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846,850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 1,4,5,7,10-12,14, 17-19,21,24,25,27-34 are therefore prima facie obvious in view of the art.
Response to Arguments
Applicant’s arguments have been considered but are not fully persuasive.
The scope of the invention is still unclear.
As discussed in the office action, the claimed combination of compounds for the purpose of flavoring/mouth coating is known from prior art. It would have been obvious to one of ordinary skill in the art to optimize proportions based on a desired taste or mouthfeel profile.
Applicant has not shown unexpected effects of the claimed proportion of components. Furthermore 0.5-1000 or 5000 ppb are very broad ranges.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, motivation stems from known properties of the claimed components in flavor applications.
For these reasons, applicant’s arguments are not persuasive, and the rejection of claims under 35 USC 103 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793
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