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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 4 and 9-15 in the reply filed on 4 August 2025 is acknowledged. Claims 16 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 10 is 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 10 recites “the comestible”. There is insufficient antecedent basis for this limitation in the claims. Neither claim 10, nor claim 1 from which claim 10 depends, positively recite a comestible. It appears claim 10 should recite “the ingestible” in order to be consistent with claim 1 and claim 10 will be interpreted as such for the purpose of examination. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 4, 10 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho USPGPub 20140039044.
Regarding claim 4, Ho teaches a method of introducing into a comestible composition a compound comprising 3'-hydroxy-5,6,7,4'-tetramethoxyflavone. (Table 1, [0080] The method of Ho satisfies the intended uses of the preamble of claim 4 because 3'-hydroxy-5,6,7,4'-tetramethoxyflavone inherently provides the functions recited upon introduction to a comestible and therefore there is no manipulative difference between the method of Ho and the positively recited claim limitations.
Regarding claim 10, Ho teaches adding 3'-hydroxy-5,6,7,4'-tetramethoxyflavone to coffee which necessarily comprises bitter compounds. [0080]
Regarding claims 13-15, Ho teaches adding 3'-hydroxy-5,6,7,4'-tetramethoxyflavone to coffee, tea, fruit juice and soy bean based beverages. [0080] Fruit juice inherently comprises sweetener as recited in claim 15 and soybean based beverages inherently comprise non-animal protein as recited in claim 14.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ho USPGPub 20140039044 as applied to claim 4 above.
Regarding claim 9, Ho teaches the typical dosage for the 3'-hydroxy-5,6,7,4'-tetramethoxyflavone is 1 mg to about 1000 mg per day which can be given as a single once-a-day dose. [0099] 1 mg/kg of food is the same as 1 ppm. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have provided the dosage of 1-1000 mg/day in an appropriate quantity of food, such as a beverage [0080] having a volume less than 1 L to enable the dose to be delivered once per day. As such, the dosing disclosed by Ho encompasses the concentration recited in claim 9. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Regarding claims 11 and 12, Ho teaches fruit juice but is silent regarding citrus juice. The examiner takes official notice that orange juice is universally known in the comestible arts as a popular and organoleptically pleasing fruit juice. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have added the 3'-hydroxy-5,6,7,4'-tetramethoxyflavone disclosed by Ho to orange fruit juice in order to form a pleasing beverage for delivery of the compound. Orange juice inherently comprises limonin. Therefore, the limitations of claims 11 and 12 are rendered obvious by Ho.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Servant USPGPub 20220236254 teaches 4'-hydroxy-5,6,7,3'-tetramethoxyflavone and 4'-hydroxy-3,5,6,7,8,3'- hexamethoxyflavone [0031] as compounds that block bitter taste receptors.[0003] It is noted that applicant can exclude this reference by providing a clear indication on the record that the subject matter therein was co-owned at the time the present application was filed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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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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/Michele L Jacobson/Primary Examiner, Art Unit 1793