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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 4, 2026 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-15
Withdrawn claims:
7-12
Previously canceled claims:
None
Newly canceled claims:
None
Amended claims:
1, 5-6
New claims:
None
Claims currently under consideration:
1-6, 13-15
Currently rejected claims:
1-6, 13-15
Allowed claims:
None
Claim Rejections - 35 USC § 101
Claims 1-6 and 13-15 rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
Step 2A, Prong One, asks if a claim recites to a product of nature. In this case, applicant’s claims recite a flavor composition comprising a seaweed concentrate or product derived therefrom, wherein the seaweed concentrate or product derived therefrom contains a concentrate from Fucus serratus. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, the flavor composition and product only comprise a concentrate from Fucus serratus and compounds that are naturally found in Fucus serratus with no additional compounds. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, the claims do not recite any additional elements beyond those that are naturally present in Fucus serratus. Thus, the answer to Step 2A, Prong Two, is No.
The analysis must then move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, there are no additional elements in the claims beyond those found naturally occurring in Fucus serratus. Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
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 2-4 and 14-15 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 2 recites the limitation “adenylate (AMP), cytidylate (CMP), guanylate (GMP), and uridylate (UMP)”. However, AMP is known in the art to be the abbreviation for adenosine monophosphate, which falls within the broad category of adenylate. Likewise, cytidyline monophosphate (CMP) is a cytidylate, guanosine monophosphate (GMP) is a guanylate, and uridine monophosphate (UMP) is a uridylate. It is unclear if the claims are reciting the broader compounds, or the more specific nucleotides. Because the instant specification merely recites AMP, CMP, GMP, and UMP, it is presumed that the claims recite “adenosine monophosphate (AMP), cytidyline monophosphate (CMP), guanosine monophosphate (GMP), and uridine monophosphate (UMP)”.
Claims 3 and 4 are rejected due to dependency on claim 2.
Claim 14 recites the limitation “adenylate (AMP), cytidylate (CMP), guanylate (GMP), and uridylate (UMP)”. However, AMP is known in the art to be the abbreviation for adenosine monophosphate, which falls within the broad category of adenylate. Likewise, cytidyline monophosphate (CMP) is a cytidylate, guanosine monophosphate (GMP) is a guanylate, and uridine monophosphate (UMP) is a uridylate. It is unclear if the claims are reciting the broader compounds, or the more specific nucleotides. Because the instant specification merely recites AMP, CMP, GMP, and UMP, it is presumed that the claims recite “adenosine monophosphate (AMP), cytidyline monophosphate (CMP), guanosine monophosphate (GMP), and uridine monophosphate (UMP)”.
Claim 15 is rejected due to dependency on claim 14.
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 1-6 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heffernan (Heffernan, N., et al. “Phenolic content and antioxidant activity of fractions obtained from selected Irish macroalgae species (Laminaria digitata, Fucus serratus, Gracilaria gracilis and Codium fragile)”, Journal of Applied Phycology, Vol. 27, p. 519-530, published April 4, 2014 [accessed online October 7, 2026]).
Claims 1 and 13 are product-by-process claims. MPEP §2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on 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). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
The structure imparted by the process of claims 1 and 13 is a seaweed concentrate from Fucus serratus that comprises water and has had the Fucus serratus removed.
Regarding claims 1, 5, 6, and 13, Heffernan discloses of extracts from Fucus serratus (Abstract) including cold water and hot water extraction performed by putting the seaweed powder in a flask with the solvent followed by filtration (i.e., removing the Fucus serratus) and freeze-drying (i.e., concentrating)(p. 521, col. 1, ¶ 1).
The preamble recitation “a flavor composition” is interpreted as the intended use of the claimed invention. MPEP §2111.02(II) states if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Because the body of the fully sets forth all limitations of the claimed invention, the preamble recitation does not carry patentable weight.
Additionally, the recitation “having umami and meaty notes” in claim 1 is interpreted as an inherent property of the claimed composition. Evidence to support that the Fucus serratus concentrate of the prior art would inherently have umami and meaty flavors is provided by the instant specification. The instant specification discloses that umami flavor with meaty notes is found in Fucus serratus (p. 6, l. 4-5). MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present.
Regarding claims 2-4 and 14-15, although Heffernan does not teach the composition comprising glutamate or AMP, CMP, GMP, or UMP, these compositions would necessarily be present in the composition. Evidence to support that glutamate, AMP, CMP, GMP, and UMP are necessarily present is provided by the instant specification. The instant specification teaches that glutamate, AMP, CMP, GMP, and UMP are all obtained from Fucus serratus (p. 5, lines 28-30). Thus, the concentrate of Fucus serratus made obvious by Heffernan would necessarily comprise glutamate, AMP, CMP, GMP, and UMP.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,185,742 (hereinafter ‘742). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claims 1, 5, 6, and 13, claim 1 of ‘742 recites a flavor composition containing a seaweed concentrate or product derived from the seaweed concentrate. Although claim 1 of ‘742 does not recite Fucus serratus, the concentrate of the instant application and ‘742 are obvious variants. Although claim 1 of ‘742 also recites the composition comprising glutamate and at least two ribonucleotides of AMP, CMP, GMP, and UMP, these compositions would necessarily be present in the composition. Evidence to support that glutamate, AMP, CMP, GMP, and UMP are necessarily present is provided by the instant specification. The instant specification teaches that glutamate, AMP, CMP, GMP, and UMP are all obtained from Fucus serratus (p. 5, lines 28-30). Thus, the concentrate of ‘742 would not be distinct from the claimed invention.
Regarding claims 2-4, claims 1-3 and 5 of ‘742 recites a flavor composition containing a seaweed concentrate or product derived from the seaweed concentrate comprising glutamate and AMP, CMP, GMP, and UMP.
Regarding claim 14, claim 4 and 6 of ‘742 recites wherein the glutamate and the AMP, CMP, GMP, and UMP are obtained from seaweed.
Regarding claim 15, claim 7 of ‘742 recites wherein the glutamate and the AMP, CMP, GMP, and UMP are obtained from Fucus serratus.
Response to Arguments
Claim Rejections - 35 U.S.C. §112(d): Applicant has overcome the 35 U.S.C. § 112(d) rejections of claims 5 and 6 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(d) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §101 of claims 1-6 and 13-15: Applicant’s arguments filed August 14, 2026 have been fully considered but they are not persuasive.
Applicant argued that claim 1 recites additional elements beyond the judicial exception and that the act of concentrating the Fucus serratus overcomes the judicial exception (Remarks, p. 5, ¶ 8- p. 6, 4).
This argument has been considered but is not persuasive. The claims merely recite a concentrate derived from Fucus serratus and other elements that are inherently found in an extract of Fucus serratus. The claimed concentrate would be patentably indistinct from a naturally occurring water containing Fucus serratus. Thus, the claims do not recite additional elements to overcome the judicial exception. Additionally, it is noted that modifying the concentration of the product/composition is not sufficient to remove the claimed composition from a judicial exception (see, e.g., Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 106 USPQ2d 1972 (2013)).
Claim Rejections – 35 U.S.C. §102 of claims 1-6 and 13-15 over Catarino: Applicant’s arguments with respect to claim(s) 1-6 and 13-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The rejections of claims 1-6 and 13-15 have been maintained herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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