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 of the Response and Amendment after Non-Final Office Action filed 5 December 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the specification and claims: (1) the objections to the specification and claims have been withdrawn; (2) the 112(b) rejections have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-7, 9, 11, and 13-21
Withdrawn claims: 1-7, 13, and 15-20
Previously canceled claims: 8
Newly canceled claims: 10 and 12
Amended claims: 9 and 11
New claims: None
Claims currently under consideration: 9, 11, 14, and 21
Currently rejected claims: 9, 11, 14, and 21
Allowed claims: None
Claim Rejections - 35 USC § 102
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 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Issaoui et al. (Issaoui, M., Flamini, G., Hajaij, et al. (2011). Oxidative evolution of virgin and flavored olive oils under thermo‐oxidation processes. Journal of the American Oil Chemists' Society, 88(9), 1339-1350. https://doi.org/10.1007/s11746-011-1800-5).
Regarding claim 9, Issaoui teaches a flavored olive oil composition (olive oil flavored with thyme) comprising 69.0% (i.e., 690,000 ppm) C18:1 (i.e., oleic acid) (p. 1345, Table 4, “60 g kg-1, 4 h at 200 °C”), 7.6% (i.e., 76,000 ppm) (E)-2-decenal (i.e., 2E-decenal), and 0.4% (i.e., 4,000 ppm) 1-dodecene (p. 1346, Table 5, “60 g kg-1, 4 h at 200 °C”). The conversion factor of 1% = 10,000 ppm was used to convert the disclosed percentages to ppm. The olive oil composition, having an aroma, is considered to be an “aroma composition” as claimed.
Therefore, Issaoui teaches an aroma composition comprising:
(a) at least one type(s) of linear or branched, saturated or unsaturated aliphatic C8 to C20 monocarboxylic acids;
(b) at least one type(s) of α,ß-unsaturated C6 to C14 aldehydes; and
(c) at least one type(s) of α,ß-unsaturated C6 to C14 alkenes;
wherein component (a) is capric acid or oleic acid, component (b) is 2E-decenal, and component (c) is 1-dodecene; and
wherein the capric acid is at ≥ 150 ppm; the oleic acid at ≥ 250 ppm; the 2E-decenal at ≥ 30 ppm; and the 1-dodecene at ≥ 50 ppm.
The capric acid of claim 9 is optional. Claim 9 is therefore anticipated by Issaoui.
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 9, 11, 14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kirschning et al. (WO 2019/141357 A1, cited on the IDS filed on 28 March 2023) in view of EFSA (EFSA Panel on Food Contact Materials, Enzymes, Flavourings and Processing Aids (CEF), Silano, V., Bolognesi, C., et al. (2017). Scientific opinion of flavouring group evaluation 502 (FGE. 502): grill flavour ‘Grillin’5078’. EFSA Journal, 15(9), e04973. https://doi.org/10.2903/j.efsa.2017.4973) and as evidenced by Scent.vn (1-Dodecene. (2025, August 29). Scent.vn. Retrieved August 29, 2025 from https://scent.vn/en/pages/compound/1-dodecene-2198.) and Scent.vn-a (Oleic Acid. (2025, August 29). Scent.vn. Retrieved August 29, 2025 from https://scent.vn/en/ pages/compound/oleic-acid-777).
Regarding claim 9, Kirschning teaches an aroma composition ([0074] – [0076], Example 1 – B1) comprising:
(a) at least one type(s) of linear or branched, saturated or unsaturated aliphatic C8 to C20 monocarboxylic acids – capric acid (C10), caprylic acid (C8), and pelargonic acid (C9) ([0076]).
(b) at least one type(s) of α,ß-unsaturated C6 to C14 aldehydes – (E,E)-2,4-decadienal ([0076]).
(c) at least one type(s) of α,ß-unsaturated C6 to C14 alkenes – 1-decene, 1-undecene, 1,3-undecadiene ([0076]).
Kirschning also teaches that: component (a) is capric acid or oleic acid, component (b) is 2E-decenal, and component (c) is 1-dodecene – While not all of the claimed molecules are explicitly disclosed in the WO 2019/141357 A1 document, the instant specification performs a comparative study with the Kirschning method and provides the details of the aroma composition in Table 4 (pp. 41-50). According to Table 4, Kirschning discloses an aroma composition comprising:
56.541 ppm capric acid and 140.090 ppm oleic acid
4.420 ppm 2E-decenal
6.808 ppm 1-dodecene
Kirschning does not teach that the capric acid is at ≥ 150 ppm, the oleic acid is at ≥ 250 ppm, the 2E-decenal is at ≥ 30 ppm, and the 1-dodecene is at ≥ 50 ppm.
However, Kirschning also teaches that the flavoring substance compositions according to the invention have a harmonious and balanced grill-like flavor profile, characterized in that they produce and/or enhance woody and/or bacon-like and/or waxy and/or fried flavor notes while suppressing ashy and/or charcoal-like and/or tarry flavor notes ([0017]). The flavoring composition contains (a) at least five linear or branched, saturated C5-C16 monocarboxylic acids and (b) at least two α,ß-unsaturated C10 aldehydes ([0019]). Kirschning teaches that the combination of components (a) and (b) according to the invention is capable of removing petroleum, tarry, and tart aroma notes ([0029]). Kirschning teaches that the flavor composition comprises capric acid, caproic acid, caprylic acid, enanthic acid, and pelargonic acid as C5-C16 monocarboxylic acids, and 2E,4E-decadienal as an α,ß-unsaturated C10 aldehyde ([0076], Example 1 – B1). Via Table 4 of the instant specification (pp. 41-50), Kirschning discloses that the flavor composition comprises 2E-decenal (p. 48) as an α,ß-unsaturated C10 aldehyde. Table 4 also shows that the flavor composition of Kirschning comprises 1-dodecene (p.45) and oleic acid (p. 50). As evidenced by Scent.vn, 1-dodecene has a waxy odor (p. 1, “Odor profile”). As evidenced by Scent.vn-a, oleic acid has high fatty, waxy, and oily odor components (p. 1, “Odor profile”). Kirschning indicates that increased waxy and fried flavor notes are desirable in the flavor composition ([0017]).
EFSA teaches a food flavor composition (Grillin’ 5078) with a charbroiled or grilled aroma (Abstract) comprising 2E-decenal as a major volatile component (p 6, § 3.1.4, ¶ 3; p. 7, Table 3) “2-decenal” as listed in EFSA refers to 2E-decenal (p. 18, Table A1, “Chemical structure”). Hence, 2E-decenal is a flavor compound known to provide a charbroiled or grilled flavor/aroma perception.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to increase the amount of 2E-decenal in the composition of Kirschning as taught by EFSA in order to increase the charbroiled/grilled flavor/aroma of the composition because Kirschning teaches that the object of the invention was to provide flavoring compositions with novel grill-like flavor profiles that have a harmonious and balanced flavor profile ([0012]). One of ordinary skill in the art would have had a reasonable expectation of success in doing so because, via Table 4 of the instant specification (pp. 41-50), Kirschning discloses that the flavor composition comprises 2E-decenal (p. 48), and EFSA teaches that 2E-decenal is a major volatile component that contributes to a charbroiled or grilled aroma.
It is noted that the disclosed linear, saturated C5-C16 monocarboxylic acids (e.g., capric acid), oleic acid, α,ß-unsaturated C10 aldehydes (e.g., 2E-decenal), and 1-dodecene are known result effective variables. Increasing the amounts of these compounds increases positive grill-like flavors (i.e., woody, bacon-like, waxy, and/or fried) and decreases the undesirable petroleum, tarry, and tart aroma notes.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide a flavor composition comprising increased amounts of the desirable flavor compounds disclosed by Kirschning and EFSA, including capric acid at ≥ 150 ppm or oleic acid at ≥ 250 ppm, 2E-decenal at ≥ 30 ppm, and 1-dodecene at ≥ 50 ppm as claimed, through routine experimentation, to impart to the product more concentrated desirable grill-like flavors (i.e., woody, bacon-like, waxy, and/or fried) and to decrease the undesirable petroleum, tarry, and tart aroma notes of the product.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered a point-in-fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Therefore, absent a proper showing of coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function and that the claimed amounts are critical to such relationship, claim 9 is rendered obvious.
Regarding claim 11, Kirschning and EFSA teach the aroma composition according to claim 9.
Kirschning does not teach that components (a) and (b) and (c) are present in a weight ratio of 4.5 to 6.5 : 6.5 to 8.5 : 4.5 to 6.5.
However, as described regarding claim 9, the disclosed linear, saturated C5-C16 monocarboxylic acids (e.g., capric acid), oleic acid, α,ß-unsaturated C10 aldehydes (e.g., 2E-decenal), and 1-dodecene are known result effective variables. Increasing the amounts of these compounds increases positive grill-like flavors (i.e., woody, bacon-like, waxy, and/or fried) and decreases the undesirable petroleum, tarry, and tart aroma notes.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to determine the optimal proportions of these flavor compounds, including the claimed (a) capric acid or oleic acid, (b) 2E-decenal, and (c) 1-dodecene, as disclosed by Kirschning and EFSA, through routine experimentation, to confer desirable grill-like flavors (i.e., woody, bacon-like, waxy, and/or fried) and decrease the undesirable petroleum, tarry, and tart aroma notes, including wherein the components (a) and (b) and (c) are present in a weight ratio of 4.5 to 6.5 : 6.5 to 8.5 : 4.5 to 6.5 as claimed.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered a point-in-fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Therefore, absent a proper showing of coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function and that the claimed ratios are critical to such relationship, claim 11 is rendered obvious.
Regarding claim 14, Kirschning teaches the aroma composition according to claim 9.
Kirschning also teaches a foodstuff, food supplement or animal feed comprising the aroma composition – “Furthermore, the invention relates to foodstuffs comprising the flavoring substance compositions according to the invention.” ([0067]).
Claim 14 is therefore anticipated by Kirschning.
Regarding claim 21, Kirschning teaches the aroma composition according to claim 9.
Kirschning also teaches the aroma composition further comprising a solid or liquid carrier and/or other suitable food additives – “Additionally, the products of the present invention can be used in a spray-dried form associated with a suitable carrier such as maltodextrin, starch, or other carrier known to those skilled in the art.” ([0070]).
Claim 21 is therefore anticipated by Kirschning.
Response to Arguments
Specification Objections:
Applicant has overcome the objection to the abstract by amendment. Accordingly, the objection has been withdrawn.
Claim Objections:
Applicant has overcome the objection to claim 9 by amendment. Accordingly, the objection has been withdrawn.
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 12 and 21 based on amendment to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. § 102:
Applicant made no substantive arguments concerning the 35 U.S.C. § 102 rejections of claims 9-10, 14, and 21 (p. 8, ¶¶ 1-3). Applicant’s amendment to claim 9 filed on 8 December 2025 is sufficient to overcome the rejections under 35 U.S.C. § 102. Accordingly, those 35 U.S.C. § 102 rejections have been withdrawn. However, upon consideration of the amendments, the new ground of rejection under 35 U.S.C. § 102 presented in this Office action is made.
Claim Rejections – 35 U.S.C. § 103:
Applicant’s arguments filed on 8 December 2025 have been fully considered, but they are not persuasive.
Applicant first argued that one of ordinary skill in the art would not be led by the teachings of Kirshning to undertake an optimization of the flavor compounds to decrease the undesirable notes and increase positive grill-like flavors to achieve a composition with the recited weight ratios of claim 11 or the recited levels of components of former claim 12, now recited in amended claim 9 (p. 8, ¶ 4 – p. 9, ¶ 2). Applicant argued that because Kirschning emphasizes that the invention disclosed therein is directed to compositions that, inter alia, enhance waxy notes, and the aroma compositions as presently claimed aim to provide a smoky, roasted, and animalic flavor while simultaneously suppressing or reducing a waxy flavor, Kirschning actually teaches away from the claimed invention (citing claim 20), and as such a prima facie case of obviousness cannot be established (p. 9, ¶ 4).
Applicant’s argument has been considered, but it is not persuasive. The feature of providing a smoky, roasted, and animalic flavor while simultaneously suppressing or reducing a waxy flavor is not recited in the rejected claims (claim 20 is withdrawn). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As such, Kirschning does not teach away from the claimed invention.
Applicant next argued that there is no guidance within Kirschning as to what attributes to modify, and to what extent, to arrive at the presently claimed compositions – which reduces/suppresses a waxy flavor – and certainly no reasonable expectation of success in doing so. Applicant argued that one of skill in the art would be left to try random variations of the composition of Kirschning to see which might yield a grill-like aroma composition that reduces/suppresses a waxy flavor, with no reasonable expectation of success, in view of Kirschning’s focus on enhancing waxy notes (pp. 9-10, bridging ¶).
Applicant’s argument has been considered, but it is not persuasive. As mentioned above, the feature of suppressing or reducing waxy notes is not recited in the rejected claims.
MPEP § 2143.02(I) states, “Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success" in combining or modifying prior art disclosures to meet the limitations of the claimed invention. See Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375, 2023 USPQ2d 1100 (Fed. Cir. 2023) and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367, 119 USPQ2d 1171, 1176 (Fed. Cir. 2016).”
Additionally, MPEP § 2144(IV) provides, “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.")”.
Therefore, the motivation to modify the composition of Kirschning by increasing the amounts of known components with waxy and grill-like aroma attributes is appropriate, and one of ordinary skill in the art would have known that capric acid, oleic acid, and 1-dodecene contribute to waxy aromas based on Kirschning and the scent.vn references, and that 2E-decenal contributes to grilled aromas based on EFSA. As such, the selection of compounds to optimize is not based on random variations, and there is a reasonable expectation of success in arriving at the claimed invention.
Applicant asserted that the present invention offers unexpected results that could not have been predicted from Kirschning alone or in combination with the cited secondary references (p. 10, ¶ 2). Applicant asserted that one of ordinary skill in the art seeking to develop compositions that suppress or reduce waxy flavor notes would not consider adding oleic acid and 1-dodecene in higher amounts than those disclosed in Kirschning based on their known waxy aroma profile, and surprisingly, the present inventors have found that the specific combination of components as claimed allows for providing or enhancing a fatty/oily and/or smoky and/or roasted and/or burnt and/or animalic flavor while simultaneously suppressing and/or reducing a waxy flavor (Id.) Applicant asserted that this effect is unexpected in view of the cited prior art and could not have been predicted from the prior art (Id.). Applicant references summarized data from Table 4 of the instant specification showing comparative data from Kirschning and the instant application Figure 8 of the instant application (p. 10, ¶ 3 – p. 11).
Applicant’s assertion of unexpected results is acknowledged. Applicant is reminded that “[w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, the asserted unexpected result is demonstrated for a composition comprising 259.44 ppm of capric acid, 290.821 ppm of oleic acid, 439.499 ppm of 2E-decenal, and 146.998 ppm of 1-dodecene. The claims recite capric acid is at ≥ 150 ppm; the oleic acid at ≥ 250 ppm; the 2E-decenal at ≥ 30 ppm; and the 1-dodecene at ≥ 50 ppm. While the data in Table 4 are inside the claimed ranges, the unexpected result is not reasonably demonstrated over the entirety of the claimed ranges; there is no upper limit to the claimed ranges. Therefore, the data are not commensurate with the claimed invention. Additionally, it is expected that the addition of at least oleic acid and/or 1-dodecene, which Applicant recognizes have at least about 50% waxy notes (p. 10, ¶ 2), in high amounts will again impart a waxy aroma to the composition.
For at least these reasons, Applicant’s arguments are not persuasive, and claims 9, 11, 14, and 21 are rejected under 35 U.S.C. § 103 as presented hereinabove.
To advance prosecution, it is noted that amendment of the claims to include sensory aspects, such as reduced or suppressed waxy notes, will be regarded as recognition of a latent property of the composition where the claimed components of the composition are already present in the recited amounts, as is the case of Issaoui et al. It is suggested that Applicant amends the claims to recite an upper limit to the amounts of the claimed components (a), (b), and (c), and to provide a range that is commensurate in scope with the data provided in the specification and/or new data to provide a proper showing of unexpected results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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