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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 03/02/2026.
Claims 18-21, 23-30 and 32-37 are pending in the application. Claims 18, 23, 33, and 36-37 are currently amended. Claims 22 and 31 are newly cancelled. Rest of claims are previously presented. Claims 18-21, 23-30 and 32-37 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Objections
Claim 34 is objected to because of the following informalities: 6th line below the formula, “proanthyocyanidines or procyanidines” should read “proanthyocyanidines, procyanidines”; line 7-8 below the formula, “caffeic acid or esters thereof” should read “caffeic acid, esters of caffeic acid”. Claims 33, 36 and 37 are objected to for the same reason. Appropriate correction is required.
Claim 34 is objected to because of the following informalities: the status should be “previously presented”. Appropriate correction is required.
Claim 37 is objected to because of the following informalities: 4th line below the formula, a comma should follows “providing said ingestible product to a subject for ingestion”. Appropriate correction is required.
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 21, 23-25, 32, 33 and 35 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 21 recites “the (2S)- and (2R)-enantiomers”. It is unclear what positioning “2” as in “2S” or “2R” denotes or corresponds to. For the purpose of examination,” the (2S)- and (2R)-enantiomers” is construed to mean the (2S)- and (2R)-enantiomers of the flavanone skeleton in Formula (Ia). Claims 33 and 35 are rejected for the same reason. Appropriate correction is required.
Claims 23-25 ultimately depends from claim 21 and therefore necessarily incorporate the indefinite subject matter therein. Appropriate correction is required.
Claim 32 recites that the reduction of the bitter, sour, pungent, or unpleasant taste is at least 10% when compared with a control. However, it is unclear how the reduction of those tastes are quantified, given that bitter, sour, pungent, or unpleasant taste is subjective depending on the taster. Clarification is required.
Claim Rejections - 35 USC § 103
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.
Claims 18-20, 26-29, 32, 36 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda JP2009055905A (English translation relied upon for reference, hereinafter referred to as Fukuda).
Regarding claims 18, 26-29 and 37, Fukuda teaches a method of reducing bitter taste impression in a ingestible product (e.g., a packaged beverage such as a tea beverage, a carbonated beverage, a non-carbonated beverage, a fruit juice beverage, etc., 024), comprising incorporating hesperidin or hesperidin glycoside into the ingestible product and providing said ingestible product to a subject for ingestion (0007-0008; 0020-0021; 0024; 0057). Fukuda teaches that the beverage comprises caffeine that is either naturally present or added (0016) thus meeting claim 26. Fukuda includes an embodiment teaching a beverage that contains 0.001-99.6% a citrus juice (e.g., orange, grapefruit, and lemon) (0044; 0065) thus reading on claim 29.
Hesperidin meets the formula (I). Further, Fukuda teaches hesperidin and hesperidin glycoside in alternative form, thus reading on the limitation that the compound of Formula (I) is not used in combination or as admixture with a hesperidin glycoside.
Fukuda teaches including 10-10,000 ppm or preferably 500-3,000 ppm of hesperidin in the beverage (0022, e.g., 0.001-1% or 0.05-0.3%), which encompassed the range of 10-500 ppm as recited in claims 18 and 37. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
The limitation about masking or reducing the bitter, sour, pungent, or unpleasant taste impression of a substance such as caffeine, limonin and/or nomilin as recited in claims 18 and 37 recites the purpose of the claims, and the recited purpose does not result in a manipulative difference between the claims and prior art because Fukuda teaches adding a compound of formula (I) (e.g., hesperidin) to an ingestible compound that comprises caffeine, limonin and/or nomilin which appears to be the same as the claimed invention, and will necessarily provide the purpose in the preambles of claims 18 and 37.
Regarding claims 19-20, where Fukuda teaches hesperidin without specifying the chirality (see the formula in the original Fukuda document), it would have been obvious to have selected either of the two enantiomers of hesperidin (e.g., 2S- and 2R-) to include in the ingestible product, as one of ordinary skill in the art would have had the reasonable expectation that hesperidin of any chirality would function effectively in the ingestible product. This is merely selecting from a group of suitable options, absent a clear showing of the criticality associated with 2S- and/or 2R- enantiomers.
Further, Fukuda teaches hesperidin is obtained from a citrus fruit (0020), which is known to contain both (2S)-hesperidin to (2R)-hesperidin.
Regarding claim 32, Fukuda teaches 10-10,000 ppm or preferably 500-3000 ppm of hesperidin in the beverage, which encompassed the range of 10-500 ppm as recited in the instant specification (page 22, line 1-2), therefore, it logically follows that prior art encompasses the limitation about the bitterness being reduced at least 10%.
Regarding claim 36, Fukuda as recited above teaches that the ingestible product comprises caffeine, limonin and/or nomilin.
Claims 21, 23-25 and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda as applied to claims 18-20 above, and evidenced by Aturki, “Separation of Flavanone-7-O-glycoside Diastereomers and Analysis in Citrus Juices by Multidimensional Liquid Chromatography Coupled with Mass Spectrometry”, J, of Agric. Food Chem., 2004, 52, pages 5303-5308 (hereinafter referred to as Aturki).
Regarding claims 21 and 35, where Fukuda teaches hesperidin without specifying the chirality (see the formula in the original Fukuda document), it would have been obvious to have selected either of the two enantiomers of hesperidin (e.g., 2S- and 2R-), or both of the two hesperidin enantiomers at any ratios to include in the ingestible product, as one of ordinary skill in the art would have had the reasonable expectation that hesperidin of any chirality would function effectively in the ingestible product. This is merely selecting from a group of suitable options, absent a clear showing of the criticality associated with 2S-/2R- enantiomers or ratios thereof.
Additionally, Fukuda teaches hesperidin is obtained from a citrus product, which necessarily contains both (2S)-hesperidin and (2R)-hesperidin. Further, where Fukuda teaches that citrus contains hesperidin, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have chosen any citrus juice such as orange juice since orange is a good source of hesperidin. Orange juice is known to contain (2S)-hesperidin to (2R)-hesperidin at a ratio that falls within the ratio range of claim 21 or 35(see Aturki, page 5307, left hand column, 2nd para. from the bottom, which shows that the hesperidin in orange juice has a ratio of 2S isomer/2R isomer 10.4 or 6.4).
Regarding claims 23-25, Fukuda teaches that the beverage comprises caffeine that is either naturally present or added (0016) thus meeting claim 23. Fukuda includes an embodiment teaching a beverage that contains 0.001-99.6% a citrus juice (e.g., orange, grapefruit, and lemon) (0044; 0065). A citrus juice from both healthy citrus plant and one suffering from Greening disease is known to contain limonin and nomilin thus meeting claims 24-25.
Regarding claims 33-34, Fukuda as recited above teaches including 10-10,000 ppm or preferably 500-3000 ppm hesperidin in an ingestible product that comprises caffeine, limonin and/or nomilin, which is incorporated herein by reference. Further, where Fukuda teaches hesperidin without specifying the chirality (see the formula in the original Fukuda document), it would have been obvious to have selected either of the two enantiomers of hesperidin (e.g., 2S- and 2R-), or both of the two hesperidin enantiomers at any ratios to include in the ingestible product, as one of ordinary skill in the art would have had the reasonable expectation that hesperidin of any chirality would function effectively in the ingestible product. This is merely selecting from a group of suitable options, absent a clear showing of the criticality associated with 2S-/2R- enantiomers or ratios thereof.
Additionally, Fukuda teaches hesperidin is obtained from a citrus product, which necessarily contains both (2S)-hesperidin and (2R)-hesperidin. Further, where Fukuda teaches that citrus contains hesperidin, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have chosen any citrus juice such as orange juice since orange is a good source of hesperidin. Orange juice is known to contain (2S)-hesperidin to (2R)-hesperidin at a ratio that falls within the ratio range of claim 34 (see Aturki, page 5307, left hand column, 2nd para. from the bottom, which shows that the hesperidin in orange juice has a ratio of 2S isomer/2R isomer 10.4 or 6.4).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda as applied to claims 18 and 27-29 above, and further in view of Raithore, “Effect of blending Huanglongbing (HLB) disease affected orange juice with juice from healthy orange on flavor quality”, LOT-Food Science and Technology, 2015, 62, pages 868-874 (hereinafter referred to as Raithore) and Dala-Paula, “Effect of Huanglongbing or Greening Disease on Orange Juice Quality, a Review”, Frontiers in Plant Science, 2019, 9, pages 1-19 (hereinafter referred to as Dala-Paula).
Regarding claim 30, Fukuda as recited above teaches a fruit juice such as orange juice, but is silent regarding the orange juice being produced from an orange plant suffering from Greening disease.
Raithore teaches that although HLB (e.g., Greening disease) is associated with bitter off-flavor for orange juice, human consumption of HLB juice is harmless (Abstract; page 868, right hand column, first para.). Raithore teaches adding orange juice from healthy orange to HLB- orange juice to make a juice blend at a blending ratio of up to 25% to reduce the off-flavor (Abstract; page 869, right hand column, section 2.2 Orange juice).
Dala-Paula teaches that fruit from orange trees infected with HLB can be symptomatic or asymptomatic (Abstract). Dala-Paula further teaches that even though most of these symptomatic fruit do not make it to processing due to premature drop or elimination by sizing equipment, more are entering the processing stream as there is not enough normal sized fruit. The weight and juice content of symptomatic oranges are diminished compared to asymptomatic and healthy oranges, which are similar (page 4, left hand column, 2nd para.).
Fukuda, Raithore and Dala-Paula are all directed to orange juices. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Fukuda by using orange juice from oranges infected with HLB because orange juice from HLB orange is simply available in the market and one would not be able to tell if the juice is from HLB orange under the industry processing conditions. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Fukuda by using orange juice from asymptomatic orange infected with HLB to meet orange shortage. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Fukuda by using a blend of healthy orange juice and HLB orange with a mixing ratio of up to 25% because human consumption of HLB juice is harmless, and the blend has reduced off-flavor.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered and the examiner’s response is shown below.
The 35 USC 112(b) rejection of claims 33-34 is withdrawn in view of the amendment made to claim 33.
The 35 USC 102 rejection over Fukuda or Raithore is withdrawn in view of the amendment made to claims 18, 33 and/or 37. However, it is noted that claim 18, 33 or 37 is currently rejected over Fukuda under 35 USC 103.
On page 11 of the Remarks, applicant asserted unexpected result associated with a low dose of a compound formula (I).
The assertion is considered. However, Attorney arguments cannot take the place of evidence. See MPEP 716.01(c) II. See also MPEP 2145 I, which states that argument does not replace evidence where evidence is necessary. Applicant is encouraged to submit evidences demonstrating the criticality associated with 10-500 ppm of a range of compounds covered by formula (I). Further, the examiner questions whether a dose of 500 nm is low.
Applicant assertion on page 11 of the Remarks that being able to successfully use lower individual dosages reduces the risk of introducing secondary off-flavours or altering the original sensory profile of the product. High concentrations of a single masking agent can sometimes create their own undesirable taste or aftertaste. Applicant further asserted that the cost efficiency of using a low dose as the use of the hesperidin at low ppm levels would be significantly less expensive than using a large amount of a single compound, and reduces the need for reformulation or corrective additives due to the possible secondary off-flavours discussed above, all contributing to overall cost savings.
The arguments are considered. However, it is not clear what is asserted above is known or a new result. Further, applicant is reminded that first, Fukuda teaches a range that encompasses the range as claimed, which includes an even lower dose (e.g., 10 ppm) than claimed (e.g., 500 ppm), second, the examiner questions whether a dose of 500 nm is low where Fukuda teaches as low as 10 ppm. Third, applicant has not shown any new result associated with 10-500 ppm of a compound of formula (I).
Applicant argues in the para. that bridges pages 11 and 12 of the Remarks that nothing in Fukuda suggests that hesperidin alone in the claimed amount would be useful to achieve the masking effect against tastes of the specific substances as recited in the claims.
The argument is considered but found unpersuasive because prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, where Fukuda teaches adding hesperidin at an amount that encompasses the range as recited in the claim to an ingestible product comprising the same off-flavor causing substances as recited in the claim, it logically follows that the masking effect is within the teaching of the prior art.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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