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 II, claims 17-20 in the reply filed on 10/30/2025 is acknowledged. Claims 1-12, 14-16 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Claim 18 is objected to because of the following informalities: “Protected food or beverage material aroma compounds as claimed in claim 17” should read “Protected food or beverage aroma compounds as in claim 17”. 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.
Claim 19 is 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 19 depends from claim 17 and recites that “wherein the aroma compounds comprises aldehyde protected by an acetal protecting group”. It is unclear whether the aroma compounds recited in the limitation is the protected aroma compounds (e.g., the adduct), or the aroma compounds that is prior to protection. For the purpose of examination, the former interpretation is assumed. Appropriate correction is required.
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.
Claims 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaleda US Patent No. 3,482,988 (hereinafter referred to as Kaleda).
Regarding claims 17-20, Kaleda teaches protected (e.g., stabilized, column 1, line 13-15) coffee beverage aroma compounds comprising one or more coffee aroma compounds (e.g., an aldehyde) protected by an acetal protecting group (column 1, line 70- column 2, line 15; column 3, line 3-18), wherein the one or more coffee aroma compounds are obtained from separation of ground and coffee roasted, followed by reacting with starch to form acetal (column 2, line 44-47; column 3, line 3-18). The acetal as disclosed by Kaleda reads on the adduct of claims 17-18.
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 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recites an adduct of one or more food or (coffee) beverage aroma compounds with a protecting group such as an acetal. However, such an adduct is naturally occurring. For example, Spoombung, et al. (Creating a fig fragrance [Online], published April, 2013, [retrieved on 2026-01-13]. Retrieved from the Internet: <URL: https://basenotes.com/threads/creating-a-fig-fragrance.343774/>) shows that an adduct acetaldehyde, acetaldehyde dimethyl acetal, is present in figs (see page 3, a response by vicky2005). Note that acetaldehyde is one of the key aromas of coffee. This judicial exception is not integrated into a practical application because no utility is recited by the claims. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no additional elements are recited. Further, although claim 20 recites a product by process limitation, the scope of the claims is no more than an adduct of food/beverage aroma compounds with a protecting group.
Conclusion
Pertinent art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
-Nishikawa US Patent Application Publication No. 2006/0211814 A1, which teaches an acetal formed by reacting acetaldehyde with a polyvinyl alcohol (0019).
-Shulman WO 2020/072557 A1, which teaches phenylacetaldehyde dimethyl acetal (page 32, line 24), an adduct of wine aroma phenylacetaldehyde.
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/CHANGQING LI/Primary Examiner, Art Unit 1791