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 1-6 and 13-15 in the reply filed on October 10, 2025 is acknowledged.
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected process, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 10, 2025.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-15
Withdrawn claims:
7-12
Claims currently under consideration:
1-6, 13-15
Currently rejected claims:
1-6, 13-15
Allowed claims:
None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-6, 13-15 are objected to because of the following informalities:
In claims 1-6, 13-15, “flavour” should be “flavor”;
In claims 1, 6, and 13-15, “Fucus serratus” should be “Fucus serratus”.
In claim 2, the acronyms “AMP, CMP, GMP, and UMP” should be provided in the non-abbreviated form the first occurrence.
Appropriate correction is required.
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 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.
Claims 14 and 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 14 recites the limitation “wherein glutamate and at least two of AMP, CMP, GMP, and UMP are derived from a seaweed”. This recitation renders the claim indefinite because it is unclear if flavor composition comprises glutamate and at least two of AMP, CMP, GMP, and UMP or if those are byproducts of the claimed product. For the purposes of examination, it is presumed that the claim recites “wherein the composition further contains glutamate and at least two of AMP, CMP, GMP, and UMP”.
Claim 15 is rejected due to dependency on claim 14.
Regarding claims 14 and 15, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP §2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
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
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.
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). 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 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 1-4, 6, 14, and 15 of U.S. Patent No. 12185742 (hereinafter ‘742).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘742 are both directed to a flavor composition containing a seaweed concentrate or product derived from the seaweed concentrate comprising glutamate and at least two of AMP, CMP, GMP, and UMP. Because ‘742 is broader than the instant application, the instant application is obvious in view of ‘742.
Conclusion
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793