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 April 20, 2026 is acknowledged.
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Withdrawn claims: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:
1-15
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
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 and 13-16 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 5 and 6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites the limitation “wherein the flavor composition is a seaweed concentrate or product derived therefrom”. This recitation fails to further limit claim 1, upon which claim 5 depends. Claim 1 already recites that the flavor composition is a seaweed concentrate or product derived therefrom.
Claim 6 recites the limitation “wherein the seaweed concentrate is a concentrate from Fucus serratus”. This recitation fails to further limit claim 1, upon which claim 5 depends. Claim 1 already recites that the seaweed concentrate contains a concentrate from Fucus serratus.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 Catarino (Catarino, Marcelo D., et al. “Phycochemical Constituents and Biological Activities of Fucus spp.”, Marine Drugs, Vol. 16, 249, published July 27, 2018 [accessed online October 8, 2025]).
Regarding claim 1, Catarino teaches of using Fucus seaweeds as functional ingredients in enhanced food (Abstract), including F. serratus (p. 2, ¶ 2). Catarino teaches that the high glutamic acid is responsible for the taste sensation of umami in seaweed (p. 9, ¶ 5). Although Catarino does not explicitly teach a concentrate or product derived therefrom of Fucus serratus, the Fucus serratus as taught by Catarino would not be patentably distinct from a concentrate or product derived from Fucus serratus. Thus, Catarino teaches the claimed composition.
Although Catarino does not disclose the Fucus serratus having a meaty flavor, this is an inherent property of the Fucus serratus. Evidence to support that Fucus serratus inherently has a meaty flavor is provided by the instant specification. The instant specification discloses favorable umami flavour with meaty notes is found in Fucus serratus (p. 6, l. 4-5).
Regarding claims 2-4, although Catarino does not teach the composition comprising glutamate or AMP, CMP, GMP, or UMP, these compositions would necessarily be present in the claimed 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 Catarino would necessarily comprise glutamate, AMP, CMP, GMP, and UMP.
Claims 5 and 6 fail to further limit the subject matter of claim 1 as described above. Thus, claims 5 and 6 are rendered obvious by Catarino for the reasons described above in claim 1.
Claim 13 is a 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.”
Claim 13 recites “a concentrate from Fucus serratus prepared by the process of claim 7”. The structure imparted by the process recited in claim 7 a Fucus serratus concentrate that comprises water.
Regarding claim 13, Catarino teaches of using Fucus seaweeds as functional ingredients in enhanced food (Abstract), including F. serratus (p. 2, ¶ 2). Although Catarino does not explicitly teach a concentrate or product derived therefrom of Fucus serratus, the Fucus serratus as taught by Catarino would not be patentably distinct from a concentrate or product derived from Fucus serratus. Thus, Catarino teaches the claimed composition.
Regarding claims 14 and 15, although the cited prior art does not teach the composition comprising glutamate or AMP, CMP, GMP, or UMP derived from a seaweed, these compositions would necessarily be present in the claimed 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 Catarino 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 2-4, 14-15 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:
The Examiner notes that in the Double Patenting rejection presented in the Non-Final Rejection mailed January 27, 2026, a typographical error was made regarding the claim numbering of ‘742. Claims 2-4 and 14-15 of the instant application were rejected over claims 1-4, 6, 14, and 15 of ‘742. The actual claims of ‘742 used in the double patenting rejection are claims 1-7.
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 Objections: Applicant has overcome the objections to the claims based on amendments in the Claims. Accordingly, the objections have been withdrawn.
Claim Rejections - 35 U.S.C. §101 of claims 1-6 and 13-15: Applicant’s arguments filed April 20, 2026 have been fully considered but they are not persuasive.
Applicant argued that because claim 1 has been amended to further specify that the food ingredient has umami and meaty notes, these features represent markedly different functional characteristics that distinguish from naturally occurring Fucus serratus seaweed (Remarks, p. 5, ¶ 7- p. 6, ¶ 3).
This argument has been considered. However, Fucus serratus inherently has umami flavor and meaty notes as evidenced by the instant specification. The instant specification discloses that umami flavor and meaty notes are found in Fucus serratus (p. 6, l. 4-5). Thus, a Fucus serratus as found in nature would be patentably indistinguishable from that of the claimed invention.
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 14 and 15 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections - 35 U.S.C. §112(d): Applicant’s arguments filed April 20, 2026 have been fully considered but they are not persuasive.
Applicant argued claim 1 is directed to a composition containing a seaweed concentrate, whereas claims 5 and 6 are directed to a composition that is a seaweed concentrate (Remarks, p. 7, ¶ 1-3).
This argument has been considered. However, claims 5 and 6 depend from claim 1, which utilizes the transition phrase “contains”. MPEP §2111.03(I) states “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Because claims 5 and 6 do not recite an additional transition phrase, under broadest reasonable interpretation, the claims are examined as being open ended. Thus, the composition of claims 5 and 6 could comprise additional ingredients that are not recited. The Examiner recommends adding a limited transition phrase such as “constating of” to claims 5 and 6 to further limit the scope of the claims to exclude any ingredients other than what is claimed.
Claim Rejections – 35 U.S.C. §102 of claims 1-6 and 13-15 over Catarino: Applicant’s arguments filed April 20, 2026 have been fully considered but they are not persuasive.
Applicant argued that Catarino fails to disclose a concentrate or product derived from Fucus serratus as required by amended claim 1. Applicant argued that this reasoning improperly conflates raw seaweed with a processed concentrate, which necessarily implies processing steps that transforms the raw material into a different product (Remarks, p. 7, ¶ 6).
This argument has been considered. However, MPEP §2111.01(II) states "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Under broadest reasonable interpretation, a raw seaweed would meet the claim limitations of “a concentrate” because raw seaweed contains the same ingredients as are claimed in claim 1. Absent amendment of the claims to include processing steps combined with evidence that such processing would result in a structural difference to the composition, claim 1 is anticipated by the Fucus serratus of Catarino.
Applicant also argued that Catarino does not anticipate the claimed invention because Catarino is completely silent regarding the seaweed having meaty notes and that absence of disclosure of such meaty notes demonstrates that these characteristics are not inherent to naturally occurring Fucus serratus but are a result of transforming the material as described by the present application (Remarks, p. 7, ¶ 7).
This argument has been considered. Although Catarino does not disclose the Fucus serratus having a meaty flavor, this is an inherent property of the Fucus serratus. Evidence to support that Fucus serratus inherently has a meaty flavor is provided by the instant specification. The instant specification discloses favorable umami flavour with meaty notes is found in Fucus serratus (p. 6, l. 4-5). Thus, the Fucus serratus of Catarino anticipates the claimed invention. Regarding Applicant’s argument that failure of Catarino to disclose the meaty or beefy notes of Fucus serratus demonstrates that these characteristics are not inherent, MPEP §2112(II) states “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.” Thus, Catarino is sufficient to anticipate the claimed invention.
With respect to Applicant’s arguments regarding the dependent claims (Remarks, p. 8, ¶ 2), Applicant's arguments as related to claim 1 were determined to be unpersuasive as detailed previously herein. Examiner further maintains that the dependent claims are properly rejected in light of the cited combinations of prior art as described in the claim rejections.
The rejections of claims 1-6 and 13-15 have been maintained 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.
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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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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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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