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 .
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claim(s) recite(s) an off-flavor suppressor. The claimed off-flavor suppressor only require an active ingredient The recited active ingredients are naturally occurring. For example, ionones are naturally occurring compounds, produced in plants (see e.g., section 1. Chemical Structure, Physicochemical Properties and Natural Occurrence in Aloum et al., Ionone Is More than a Violet’s Fragrance: A Review, Molecules 2020, 25, 5822). Nootkatone is a naturally occurring sesquiterpenoid ketone found in grapefruit (see e.g., Ortuno et al., Flavanone and Nootkatone Levels in Different Varieties of Grapefruit and Pummelo, Journal of Agricultural and Food Chemistry, January 1995, Volume 43, Number 1). Thus, the recited active ingredients are not markedly different from the product' s naturally occurring counterpart in its natural state. This judicial exception is not integrated into a practical application because the off-flavor suppressor compounds naturally found in nature and no additional ingredients are required. The components derived from unsaturated fatty acids are not a required element of claims 1-4 and only serve as an intended use for off-flavor suppressor compounds. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims only require off-flavor suppressor compounds that are found in nature.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2017153371 .
JP2017153371 teaches that deteriorating odors can be generated during storage of product beers due compounds such as 2-nonenal (lines 21-22). JP2017153371 teaches that ionone can be used to mask deteriorating odors (lines 266-270). α-ionone and β-ionone are isomers of ionone that are naturally present. The components derived from unsaturated fatty acids are not a required element of claims 1-4 and only serve as an intended use for off-flavor suppressor compounds.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2017153371. A translation of JP2017153371 is provided with this official action and relied upon below.
JP2017153371 teaches that deteriorating odors can be generated during storage of product beers due compounds such as 2-nonenal (lines 21-22).
As to claims 1, 3, 5, and 7, JP2017153371 teaches that ionone can be used to mask deteriorating odors (lines 266-270). α-ionone and β-ionone are isomers of ionone. It would have been obvious to use isomers of ionone due to their structural similarity. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (see MPEP 2144.09).
The masking compounds can be added in an amount of 0.01 to 100ppm (lines 297-298). This overlaps the claimed amounts of claims 5 and 7. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Claims 2, 4, 6 and 8 specifically recite (E) 2-nonenal as an odor generating compound. It would have been obvious to use the ionone of JP2017153371 to mask (E)-2-nonenal as (E)-2-nonenal is a stereoisomer of 2-nonenal. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (see MPEP 2144.09).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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