DETAILED ACTION
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 of the Response and Amendment after Non-Final Office Action filed 07/17/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims: (1) the objections to the claims have been withdrawn; and (2) the 35 U.S.C. §103 rejection of claim 8 over Kawasaki as evidenced by Achilles and Brunning has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 6-7, 12-14, 21, 25-27 (*It is noted that the claims which were referred to as claims 24-26 in the previous Office action are referred to as claims 25-27 in the present Office Action.)
Withdrawn claims: None
Previously cancelled claims: 2-5, 9-11, 15-20, 22-23
Newly cancelled claims: 8, 24
Amended claims: 1, 6-7, 26-27
New claims: None
Claims currently under consideration: 1, 6-7, 12-14, 21, 25-27
Currently rejected claims: 1, 6-7, 12-14, 21, 25-27
Allowed claims: None
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-7, 12-14, 21, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (JP 2006020526A; English translation relied on for citations; previously cited) as evidenced by Achilles (“Understanding Flavor Notes in Coffee: What “Citrus”, “Chocolate”, and “Nutty” Really Mean”, Achilles Coffee Roasters, https://achillescoffeeroasters.com/blogs/specialty-coffee-blog/understanding-flavor-notes-in-coffee-what-citruschocolate-and-nutty-really-mean?srsltid=AfmBOoortHjwS5GGU84pdryxBolVnHUom0MFnBMau2D_irFxjExnmJp4; previously cited) and Brunning (Brunning, A., “The Chemical Compounds Behind the Aroma of Coffee”, 2015, Compound Interest, https://www.compoundchem.com/2015/02/17/coffee-aroma/; previously cited).
Regarding claims 1 and 27, Kawasaki teaches a composition (corresponding to a coffee flavor composition) comprising or consisting essentially of components (A) – (K) (page 2, lines 43-46) and an additional fragrance/flavor imparting/enhancing/improving component (page 6, lines 13-18). Kawasaki teaches that component (K) is sulfur-containing compounds (page 6, line 16) which may comprise prenyl mercaptan, 3-mercaptohexyl acetate, and 3-mercaptohexyl hexanoate (page 15, line 56-page 17, line 11); and that component (K) comprises 0-30 wt.% of the composition (page 3, line 2). Therefore, a composition containing all three of prenyl mercaptan, 3-mercaptohexyl acetate, and 3-mercaptohexyl hexanoate may comprise each of these compounds from an amount greater than 0 wt.% to an amount less than 30 wt.%, which encompasses the claimed concentration of aroma compounds and the claimed concentration of organosulfur compounds recited in present claims 1 and 27.
Kawasaki also discloses that each of compounds (A), (B), (C), (D), (E), (F), (H), and (I) comprises 0-50 wt.% of the composition; that compound (G) comprises 0-40 wt.% of the composition; and that compound (J) may comprise 0-30 wt.% of the composition (page 2, line 52- page 3, line 2). Kawasaki also discloses that the additional fragrance/flavor imparting/enhancing/improving component may be a primary terpene compound selected from the group consisting of limonene, myrcene, α-pinene, β-pinene, and terpinolene (page 6, lines 320-23, 39-48) as recited in present claims 1 and 27. Therefore, the composition containing the additional fragrance/flavor imparting/enhancing/improving component may contain the primary terpene compound(s) from an amount greater than 0 wt.% to an amount less than 100 wt.%, which encompasses the claimed concentrations recited in present claims 1 and 27.
In regard to the encompassing ranges disclosed in the prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present application to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "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 percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
In regard to the number of compounds disclosed in the prior art, “[a] genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990.” MPEP 2131.02.II. Despite Kawasaki disclosing many possible compounds, Kawasaki specifically names the claimed compounds. Therefore, Kawasaki meets the threshold for anticipation regarding the presence of the claimed compounds in the composition, thereby providing motivation for a skilled practitioner to select the claimed compounds from the list of possible choices. However, it is noted that claims 1 and 27 are rejected for obviousness due to Kawasaki not disclosing the concentrations of the claimed compounds with sufficient specificity; and not specifying that the composition has a gassy-citrus aroma.
Kawasaki discloses that its composition is a coffee flavor composition (page 2, line 43). Therefore, Kawasaki teaches that the composition is a food or beverage composition, a flavor composition, and a fragrance composition as recited in present claims 1 and 27. Kawasaki does not mention a cannabinoid. Therefore, its composition does not include a cannabinoid as recited in present claim 1. Also, Kawasaki teaches that the compounds may be synthetic (page 2, line 52).
In regard to the aroma of the coffee flavor composition of Kawasaki, coffee is known in the art to have citrus aromas as evidenced by Achilles (pages 3-5, section 1 labeled “Citrus: Bright, Tangy, and Zesty”) and gassy aromas (corresponding to rotten cabbage, flatulence, and/or catty aromas caused by sulfur-containing compounds) as evidenced by Brunning (page 2, 7th paragraph). Therefore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the present application to have provided a gassy-citrus aroma in the composition of Kawasaki, especially wherein Kawasaki discloses amounts of aroma compounds, terpene compounds, and organosulfur compounds which encompass the claimed concentrations. Therefore, the gassy-citrus aroma recited in present claims 1 and 27 is rendered obvious.
Regarding claims 6 and 7, Kawasaki teaches the invention as described above in claim 1, including the composition further comprises an alcohol as component (B) in an amount of 0-50 wt.% (page 2, lines 52-58). Kawasaki discloses that the alcohol may be linalool (page 3, lines 8-10) as recited in present claims 6 and 7. Therefore, Kawasaki teaches that the composition may further comprise linalool in an amount of 0-50 wt.%, which encompasses the concentration recited in present claim 7. The selection of a value within the encompassing range renders the claimed concentration obvious. MPEP 2144.05.I.
Regarding claims 12, 13, and 14, Kawasaki teaches the invention as described above in claim 1, including the composition is a coffee flavor composition (page 2, line 43). Therefore, Kawasaki teaches that the composition is a food or beverage product, a flavor product, and a fragrance product as recited in present claims 12, 13, and 14. Furthermore, Kawasaki teaches that the beverage may be a soft drink or alcoholic beverage (page 20, lines 46-49). Therefore, Kawasaki teaches that the beverage is an alcohol-containing beverage or a non-alcohol containing beverage as recited in present claim 13.
Regarding claim 21, Kawasaki teaches the invention as described above in claim 1, including the aroma compound is exogenously added to the composition (corresponding to blending the components together) (page 2, lines 23-27). Although Kawasaki discloses this method step, it is noted that claim 21 is a product-by-process claim and “even though product-by-process claims are limited by and defined by the process, determination of patentability is based upon the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.I.
Regarding claim 25, Kawasaki teaches the invention as described above in claim 1, including the aroma compound is 3-mercaptohexyl hexanoate (page 15, line 56-page 17, line 11).
Regarding claim 26, Kawasaki teaches a composition (corresponding to a coffee flavor composition) consisting essentially of components (A) – (K) (page 2, lines 43-46) and an additional fragrance/flavor imparting/enhancing/improving component (page 6, lines 13-18). Kawasaki teaches that component (K) is a sulfur-containing compound (page 6, line 16) which may comprise 3-mercaptohexyl hexanoate (page 15, line 56-page 17, line 11); and that component (K) comprises 0-30 wt.% of the composition (page 3, line 2). Therefore, the composition containing 3-mercaptohexyl hexanoate comprises this compound from an amount greater than 0 wt.% to an amount less than 30 wt.%, which encompasses the claimed concentration of aroma compound. Kawasaki also discloses that each of compounds (A), (B), (C), (D), (E), (F), (H), and (I) comprises 0-50 wt.% of the composition; that compound (G) comprises 0-40 wt.% of the composition; and that compound (J) may comprise 0-30 wt.% of the composition (page 2, line 52- page 3, line 2). Kawasaki also discloses that the additional fragrance/flavor imparting/enhancing/improving component may be a primary terpene compound selected from the group consisting of limonene, myrcene, α-pinene, β-pinene, terpinolene, and valencene (page 6, lines 320-23, 39-48). Therefore, the composition containing the additional fragrance/flavor imparting/enhancing/improving component may contain the primary terpene compound(s) from an amount greater than 0 wt.% to an amount less than 100 wt.%, which encompasses the claimed concentration.
In regard to the encompassing ranges disclosed in the prior art, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "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 percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
In regard to the number of compounds disclosed in the prior art, “[a] genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990.” MPEP 2131.02.II. Despite Kawasaki disclosing many possible compounds, Kawasaki specifically names the claimed compounds. Therefore, Kawasaki meets the threshold for anticipation in regard to the presence of the claimed compounds in the composition, thereby providing motivation for a skilled practitioner to select the claimed compounds from the list of possible choices. However, it is noted that claim 26 is rejected for obviousness due to Kawasaki not disclosing the concentrations of the claimed compounds with sufficient specificity; and not specifying that the composition has a gassy-citrus aroma.
Kawasaki discloses that its composition is a coffee flavor composition (page 2, line 43); therefore, Kawasaki teaches that the composition is a food or beverage composition, a flavor composition, and a fragrance composition as presently claimed.
In regard to the aroma of the coffee flavor composition of Kawasaki, coffee is known in the art to have citrus aromas as evidenced by Achilles (pages 3-5, section 1 labeled “Citrus: Bright, Tangy, and Zesty”) and gassy aromas (corresponding to rotten cabbage, flatulence, and/or catty aromas caused by sulfur-containing compounds) as evidenced by Brunning (page 2, 7th paragraph). Therefore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the present application to have provided a gassy-citrus aroma in the composition of Kawasaki, especially wherein Kawasaki discloses amounts of aroma compounds, terpene compounds, and organosulfur compounds which overlap the claimed concentrations. Therefore, the gassy-citrus aroma recited in present claim 26 is rendered obvious.
Response to Arguments
Claim Objections: Applicant amended the claims to fully address the objections. Therefore, the objections are withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1, 6-8, 12-14, 21, and 24-26 over Kawasaki as evidenced by Achilles and Brunning: Applicant’s arguments and amendments have been fully considered and are not considered to overcome the rejections.
Applicant canceled claim 8, thereby mooting its rejection. Applicant argued that the Achilles reference is not prior art due to Achilles have an effective date which postdates the filing date of the present invention (Applicant’s Remarks, page 5, 1st-2nd paragraphs under heading beginning “Rejections”).
However, the Examiner points out that Achilles is cited as an evidentiary reference, not as prior art. “[R]eferences cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism.” MPEP 2124. Since Achilles is cited as evidence showing that coffee has a citrus aroma, Achilles need not antedate the present application.
Applicant then argued that the gassy-citrus aroma in the composition of Kawasaki relies on selecting from lists and ranges rather than a single disclosed working embodiment in Kawasaki (Applicant’s Remarks, page 6, 1st paragraph).
However, “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123.II. Kawasaki broadly discloses compounds and ranges of those compounds which would result in a gassy-citrus aroma in a composition. Since the rejections based on Kawasaki are obviousness rejections, and not anticipation rejections, there need not be a single embodiment which discloses the claimed composition. The obviousness rejections based on Kawasaki are allowed to involve selecting from lists and ranges since the present claims do not omit any other aroma from being present in the composition; and a practitioner would have a reasonable expectation of success in obtaining a coffee flavor composition from blending the ingredients disclosed by Kawasaki in amounts also disclosed by Kawasaki.
Applicant then argued that Achilles and Brunning do not remedy the deficiencies of Kawasaki. Applicant argued that nothing in the cited references teaches or reasonably predicts that the claimed combination of components at the claimed concentrations achieve the claimed aroma so that the aroma achieved by the claimed composition is unexpected. Applicant argued that the unexpected results are sufficiently demonstrated for the scope of the claims (Applicant’s Remarks, page 6, 2nd paragraph – page 8, 1st paragraph).
However, it is unclear how the combination of the claimed compounds providing a gassy-citrus aroma is unexpected. It is known in the art that sulfur-containing compounds such as prenyl mercaptan have a gassy aroma as stated in [0092] of the present specification. The claimed aroma compounds 3-mercaptohexyl butyrate, 3-mercaptohexyl hexanoate, 3-mercaptohexyl acetate, 3-mercaptohexanol are known in the art to contribute to citrus aroma as stated in [0013] and Fig. 1 of the present specification. Therefore, the addition of the claimed 3-mercaptohexyl butyrate, 3-mercaptohexyl hexanoate, 3-mercaptohexyl acetate, and/or 3-mercaptohexanol and the addition of the claimed organosulfur compounds to a composition comprising the claimed terpene compounds recited in the independent claims to provide a gassy, citrus aroma in the composition is not considered to be surprising or unexpected, especially wherein the claimed terpene compounds already have a citrus aroma. As such, Applicant’s arguments regarding unexpected results are not supported.
Since the prior art is shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
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.
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/K.P.K./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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