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 status
The examiner acknowledged the amendment made to the claims on 04/14/2026.
Claims 1-12 and 14-21 are pending in the application. Claims 17-20 are currently amended. Claims 2, 9-12, 18, 21-22 and 27-30 remain cancelled. Claims 1-12, 14-16 and 21 are withdrawn without traverse in response to the restriction requirement. Claims 17-20 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 20 is objected to because of the following informalities: “ The protected food or beverage material aroma compounds” should read “Protected food or beverage material aroma compounds”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 19 is 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 19 depends claim 17 and recites that the protected food or beverage aroma compounds comprise aldehydes protected by acetal protecting group. However, given that claim 17 recites that the protected food or beverage material aroma compounds comprise acetal adducts of the aldehydes with one or more of quinic acid, chlorogenic acid, or derivatives thereof, the subject matter that the protected food or beverage aroma compounds comprise aldehydes protected by an acetal protecting group as recited in claim 19 is already encompassed by claim 17. As such, claim 19 fails to further limit the subject matter of claim 17. 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 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 Dierbach US Patent Application Publication No. 2016/0192671 A1(hereinafter referred to as Dierbach), and as evidenced by Gigl, “Identification and Quantitation of Reaction Products from Quinic Acid, Quinic Acid Lactone, and Chlorogenic Acid with Strecker Aldehydes in Roasted Coffee”, J. Agric. Food Chem., 2021, 69, 1027−1038 (cited in the IDS filed 10/27/2023, hereinafter referred to as Gigl).
Regarding claims 17-20, Dierbach teaches a coffee beverage brewed from medium roast coffee beans and water (0104). As evidenced by Gigl, a coffee beverage prepared from a medium roast coffee contains acetalization products (e.g., acetal adduct) of quinic acid or chlorogenic acid and one or more coffee aroma compounds (e.g., Strecker aldehydes, acetaldehyde, propanal, methylpropanal, 2- and 3-methylbutanal, and methional) (Abstract; Fig. 1; Fig. 1, 3 and 5; page 1034, “ UHPLC−MS/MS Screening of the Aldehyde Adducts (1−18) in Roasted Coffee Beverages; page 1035, left hand column, 2nd para.).
Further regarding claim 20, it is noted that the limitation about “separating the one or more food or beverage material aroma compounds from a food or beverage material, protecting the separated one or more food or beverage material aroma compounds with the protecting group, and storing the protected food or beverage material aroma compounds” is a product-by- process limitation."[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). See MPEP 2113.
In the instant case, Dierbach as recited above teaches protected food beverage aroma compounds comprising an acetal adduct of aldehydes with protecting groups (e.g., quinic acid or chlorogenic acid). Although Dierbach does not teach that the acetal adduct is produced by separating aldehydes from coffee material followed by protecting (e.g., reacting) the aldehydes with quinic acid or chlorogenic acid and storing the acetal adduct of aldehydes, the final acetal adduct of aldehydes and quinic acid/ chlorogenic acid appear materially indistinguishable form the final product as recited in claim 20, therefore, claim 20 is anticipated by Dierbach.
Response to Arguments
Applicant’s arguments filed 04/14/2026 with respect to claims 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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