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 09/08/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: the objection to claim 26 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 6-8, 10, 12-15, 17, 20-21, 25-27
Withdrawn claims: None
Previously cancelled claims: 2-5, 9, 11, 16, 18-19, 22-23
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 1, 6-8, 10, 12-15, 17, 20-21, 25-27
Currently rejected claims: 1, 6-8, 10, 12-15, 17, 20-21, 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, 6-8, 10, 12-15, 17, 20-21, 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).
Regarding claims 1 and 27, Kawasaki teaches a composition (corresponding to a coffee flavor composition) comprising 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) comprising thiogeraniol, 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 thiogeraniol, 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. 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 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 a large number possible compounds, Kawasaki specifically names the claimed compounds. Therefore, Kawasaki actually 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 claims 1 and 27 are rejected for obviousness merely due to Kawasaki not disclosing the concentrations of the claimed compounds with sufficient specificity.
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. Kawasaki does not mention a cannabinoid; therefore, its composition does not include a cannabinoid. Also, Kawasaki teaches that the compounds may be synthetic (page 2, line 52); therefore, Kawasaki at least suggests combinations of aroma compounds, primary terpenes, and organosulfur compounds that are not found in nature.
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 geraniol (page 6, lines 50-56). Therefore, Kawasaki teaches that the composition further comprises the secondary terpene compound geraniol in an amount of 0-50 wt.%, which encompasses the claimed concentration. The selection of a value within the encompassing range renders the claimed concentration obvious. MPEP 2144.05.I.
Regarding claim 8, Kawasaki teaches the invention as described above in claim 1, including the organosulfur compound is thiogeraniol (page 15, line 56 – page 16, line 60).
Regarding claim 10, Kawasaki teaches the invention as described above in claim 1, including the composition further comprising a natural fragrance as component (A) (page 3, lines 4-6) in an amount of 0-50 wt.% (page 2, line 58). Therefore, Kawasaki teaches that the composition further comprises a second flavoring or fragrance agent in an amount that overlaps the claimed concentration. The selection of a value within the overlapping 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 presently claimed. 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 presently claimed.
Regarding claim 15, Kawasaki teaches the invention as described above in claim 1, including that its method comprises adding the composition of claim 1 to component (A) (corresponding to blending the components) (page 2, lines 23-27), wherein component (A) is a natural fragrance from grapefruit, orange, or lemon (page 2, line 52- page 3, line 6). Since grapefruit, orange, and lemon fragrances are citrus aromas, Kawasaki discloses a process for augmenting or enhancing the citrus aroma or taste of a product.
Regarding claim 17, Kawasaki teaches the invention as described above in claim 15, including the composition comprising component (K) which is sulfur-containing compounds (page 6, line 16) comprising 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 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.
Regarding claim 20, Kawasaki teaches the invention as described above in claim 15, including the 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.
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 claims 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) comprising 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) comprising 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 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 a large number possible compounds, Kawasaki specifically names the claimed compounds. Therefore, Kawasaki actually 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 merely due to Kawasaki not disclosing the concentrations of the claimed compounds with sufficient specificity.
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. Also, Kawasaki teaches that the compounds may be synthetic (page 2, line 52); therefore, Kawasaki at least suggests combinations of aroma compounds and primary terpenes that are not found in nature.
Response to Arguments
Claim Objections: Applicant amended claim 26 to fully address the objection; therefore, the objection is withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1, 6-8, 10, 12-15, 17, 20-21, and 25-27 over Kawasaki: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant stated that the presently claimed invention is based upon the surprising finding that combining 3-mercaptohexyl butyrate, 3-mercaptohexyl hexanoate, 3-mercaptohexyl acetate, 3-mercaptohexanol, or combinations thereof with the recited terpenes and organosulfur compounds generates or imparts a potent gassy, petroleum-citrus aroma that can be used in a wide variety of consumer products. Applicant argued that Kawasaki discloses a several large lists of potential compounds in its coffee flavor compositions without providing any motivation to select the claimed compounds from these disclosed lists and to combine them into one composition as presently claimed. Applicant argued that the Examiner’s reasoning for motivation to select the claimed compounds from the disclosure of Kawasaki is misplaced because the Examiner’s reasoning is based on cases which dealt with anticipation, not obviousness. Applicant argued that in the absence of motivation to select the claimed compounds from the disclosure of Kawasaki, the rationale applied by the Examiner becomes “obvious to try” in order to arrive at the claimed composition. For these reasons, Applicant argued that the Examiner arrived at the presently claimed invention by impermissible hindsight (Applicant’s Remarks, page 7, 1st paragraph under “Rejections Under 35 U.S.C. §103” – page 12, 1st paragraph).
However, as described above in the rejections of claims 1, 26, and 27, 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 a large number possible compounds, Kawasaki specifically names the claimed compounds as ingredients in a composition. Therefore, Kawasaki actually meets the threshold for anticipation in regard to the presence of the claimed compounds in a single composition, thereby providing motivation for a skilled practitioner to select the claimed compounds from the list of possible choices. Claims 1, 26, and 27 are rejected for obviousness merely due to Kawasaki not disclosing the claimed concentrations of these compounds with sufficient specificity.
In regard to Applicant’s assertion that the presently claimed invention is based upon the surprising finding that combining 3-mercaptohexyl butyrate, 3-mercaptohexyl hexanoate, 3-mercaptohexyl acetate, 3-mercaptohexanol, or combinations thereof with the recited terpenes and organosulfur compounds generates or imparts a potent gassy, petroleum-citrus aroma, the present specification does not disclose any such finding because the examples of the present specification do not include the claimed combination of volatile sulfur compounds, primary terpenes, and organosulfur compounds at all. Furthermore, the claims do not require the composition to have any particular aroma, let alone the potent gassy, petroleum-citrus aroma asserted by the Applicant. The claims do not exclude any compound from being included in the composition. As such, the composition may have any aroma and may contain any number of additional compounds, including any and all of the additional compounds disclosed by Kawasaki.
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For these reasons, Applicant’s arguments regarding the absence of motivation to select the claimed compounds from the “laundry list” of potential compounds in Kawasaki are not persuasive.
Applicant then argued that Kawasaki does not teach add the claimed amounts of aroma compounds, primary terpene compounds, and organosulfur compounds in its composition as the ranges disclosed or suggested by Kawasaki are too broad to arrive at the claimed concentrations. Applicant argued that even if the concentrations of compounds were considered to be result-effect variables as alleged by the Examiner, the surprising and unexpected unique petroleum-citrus aroma provided by the claimed compounds without having to add a grapefruit, orange, or lemon fragrance as noted in Kawasaki rebuts any prima facie case of obviousness (Applicant’s Remarks, page 12, 2nd – 3rd paragraphs).
However, the Examiner did not describe the concentrations of aroma compounds, primary terpene compounds, and organosulfur compounds as being result-effective variables; therefore, Applicant’s arguments to such reasonings are moot. The Examiner also points out that the present specification has not demonstrated criticality of the claimed concentrations of compounds in the composition as none of the examples in the present specification actually use the claimed combination of compounds. Furthermore, the claims do not exclude grapefruit, orange, or lemon fragrance from the composition; and the claims do not require the composition to have any particular aroma, let alone the asserted petroleum-citrus aroma. For these reasons, Applicant’s arguments regarding the concentration ranges of the compounds disclosed in Kawasaki being too broad are not persuasive; and Applicant’s arguments regarding the unexpected and unique properties of the claimed composition are not persuasive. Since Kawasaki is shown to render the present claims obvious and Applicant’s arguments are 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