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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 8 December 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment and/or cancellation of the claims: (1) the objections to the claims have been withdrawn; (2) the 35 U.S.C § 102 rejections of claims 12-14 and 16 have been withdrawn. However, Applicant’s amendment has necessitated the rejection of claims 12-23 and 25-26 under 35 U.S.C § 103.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-10, 12-23, and 25-28
Withdrawn claims: 1-10 and 27-28
Previously canceled claims: None
Newly canceled claims: 11 and 24
Amended claims: 1-3, 7-9, 12, 15-16, and 19-22
New claims: None
Claims currently under consideration: 12-23 and 25-26
Currently rejected claims: 12-23 and 25-26
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 12-23 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Zasypkin (US 2009/0104330 A1, cited on the IDS filed on 5 April 2023).
Claim Interpretation
Regarding the preambles of claims 12-16: (1) a method of enhancing saltiness of food, (2) a method of reducing salt in food, (3) a method of producing food with reduced salt, and (4) a method of producing food, the instant specification at paragraphs [0020] – [0021] states:
[0020] The enhancement of the saltiness may be used, for example, for reduction of salt in food. Specifically, enhancement of the saltiness can compensate lack of the saltiness of food due to reduction of salt, thereby achieving reduction of salt in food. That is, in one aspect, reduction of salt in food can be performed by using the active ingredients (specifically, enhancing of the saltiness of food by using the active ingredients). In another aspect, food with reduced salt can be produced by using the active ingredients (specifically, enhancing the saltiness of food by using the active ingredients). Thus, the active ingredients may be used for reduction of salt in food and may be used for production of food (specifically, production of food with reduced salt). The reduction of salt in food and food with reduced salt are described later.
[0021] The active ingredients may be used for enhancement of the saltiness, reduction of salt in food, or production of food in aspects described in the method of the present invention described later.
Therefore, the claimed step of adding the ingredients (A) to (D) to a raw material of the food is expected to perform any or all of the effects of (1) enhancing the saltiness of the food, (2) reducing the salt in food, (3) producing food with reduced salt, and (4) producing food.
Regarding the reduction of salt in food and food with reduced salt, paragraphs [0079] – [0080] of the instant specification indicate that the term “salt” refers to sodium chloride specifically.
Claim Rejections
Regarding claims 12-16, Zasypkin teaches a method of enhancing saltiness in food (re: claim 12), a method of reducing salt in food (re: claims 13 and 15), a method of producing food with reduced salt (re: claim 14), and a method of producing food (re: claim 16) comprising: a step of adding the following ingredients (A) to (D) to a raw material of a food: (A) potassium chloride; (B) arginine or a salt thereof; (C) lysine or a salt thereof; and (D) a nucleic acid-containing yeast extract containing 10% (w/w) or more nucleic acid – Zasypkin teaches a reduced sodium salty taste composition which can significantly reduce the amount of sodium chloride in food, seasonings or flavorings and provide a good salty taste to food ([0036], see also claim 4). In Example 3 ([0080] – [0082]), Zasypkin teaches the topical application of a reduced sodium composition to plain potato chips, and that this results in potato chips with a saltiness matching the full salt control ([0081]). The reduced sodium composition comprises (A) potassium chloride, (B) arginine, (C) lysine hydrochloride, and (D) “yeast extract” ([0080]). The yeast extract of Example 3 is not explicitly specified. However, Zasypkin teaches that “the most preferred yeast extract in this invention is the high nucleotide yeast having meaty or bouillon-like notes. The high nucleotide yeast extract may contain between 10% to 20% by weight of such nucleotides as 5’-guanine monophosphate, 5’-inosine monophosphate, and their salts.” ([0061]; see also claim 5, which indicates a range of 10% to 30%). Therefore, a high nucleotide yeast extract containing between 10% to 30% by weight of such nucleotides as 5’-guanine monophosphate, 5’-inosine monophosphate, and their salts is an obvious choice. The disclosed range of 10% to 30% lies inside the claimed range of 10% or more.
wherein the amount of ingredient (D) added is 2.3 to 50% (w/w) relative to the total amount of ingredients (A) to (C) added – Zasypkin teaches that yeast extract is added in an amount of up to 10%, preferably 0.1 to 5% by weight ([0042], see also claim 4). In Example 3 ([0080]), to which the scope of the invention is not limited ([0073]), Zasypkin teaches that the total amount of ingredients (A) to (C) is 39.82 % of potassium chloride + 1.07% of arginine + 0.54% of lysine monohydrochloride = 41.43%. The amount of ingredient (D) is 1.24% yeast extract ([0080]). The amount of ingredient (D) added relative to the total amount of ingredients (A) to (C) is therefore 1.24% / 41.43% = 2.99% (w/w). This amount lies inside the claimed range.
Therefore, where Zasypkin teaches the topical addition of the reduced sodium composition to plain potato chips, Zasypkin implicitly teaches a method of enhancing saltiness of food comprising a step of adding claimed ingredients (A) to (D) to a raw material of the food.
Furthermore, Zasypkin teaches that 100g of the reduced sodium composition comprises 45.61% less sodium chloride than 100g of pure sodium chloride ([0080]). Where Zasypkin adds the reduced sodium composition to the plain potato chips in place of pure sodium chloride, Zasypkin implicitly teaches a method of reducing salt in food and a method of producing food with reduced salt, while simultaneously enhancing the saltiness of the food.
MPEP § 2112(I) states, “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
While Zasypkin does not explicitly recognize (1) a method of enhancing saltiness of food, (2) a method of reducing salt in food, (3) a method of producing food with reduced salt, and (4) a method of producing food, these features necessarily flow from the addition of the reduced sodium composition to the plain potato chips, and claiming such uses does not make the claim patentable.
For these reasons, claims 12-16 are rendered obvious.
Regarding claim 17, Zasypkin teaches the method according to claim 16.
Zasypkin also teaches that the food to be produced is food with enhanced saltiness – Zasypkin teaches the topical application of a reduced sodium composition comprising the ingredients as claimed in claim 16 to plain potato chips, and that this results in potato chips with a saltiness matching the full salt control ([0081]). Where Zasypkin adds the reduced sodium composition to the plain potato chips in place of pure sodium chloride, Zasypkin implicitly teaches a method of producing a food with enhanced saltiness as claimed.
Therefore, claim 17 is rendered obvious.
Regarding claim 18, Zasypkin teaches the method according to claim 12.
Zasypkin does not explicitly teach that the enhancement of the saltiness is enhancement of the saltiness in the initial taste.
However, Zasypkin teaches that the yeast extract comprises 10-30% by weight of at least one nucleotide being 5’-guanine monophosphate (i.e., guanylic acid) and/or 5’-inosine monophosphate (i.e., inosinic acid) or salts thereof (claim 5). As evidenced by the instant specification in Table 2, Test #s 7-9 ([0092]), compositions comprising ingredients (A) to (D), wherein the yeast extract ingredient (D) comprises 30% nucleic acids (Test #7) exhibit usefully enhanced initial saltiness as compared to compositions comprising 5% nucleic acid-containing yeast extract (Test #s 8-9), with the amounts of ingredients (A)-(C) being held constant.
MPEP § 2112(I) states, “‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” Since Zasypkin teaches the use of a yeast extract comprising 10-30% nucleic acids in the reduced sodium composition (claim 5), an embodiment wherein the yeast extract comprises 30% nucleic acids is obvious. The reduced salt composition of such an embodiment necessarily would have enhanced saltiness in the initial taste, as shown by Table 2 of the instant specification.
Therefore, claim 18 is rendered obvious.
Regarding claim 19, Zasypkin teaches the method according to claim 12.
Zasypkin also teaches that the resulting food is food with reduced salt – Zasypkin teaches the topical application of a reduced sodium composition comprising the ingredients as claimed in claim 12 to plain potato chips, and that this results in potato chips with a saltiness matching the full salt control ([0081]). Where Zasypkin adds the reduced sodium composition to the plain potato chips in place of pure sodium chloride, Zasypkin implicitly teaches a method of enhancing the saltiness of a food with reduced salt as claimed.
Therefore, claim 19 is rendered obvious.
Regarding claim 20, Zasypkin teaches the method according to claim 12.
Zasypkin also teaches that the nucleic acid contained in the nucleic acid-containing yeast extract is inosinic acid or a salt thereof and/or guanylic acid or a salt thereof – Zasypkin teaches that “the yeast extract is a high nucleic acid yeast extract comprising 10% to 30% by weight of at least one selected from the group consisting of 5’-guanine monophosphate (i.e., guanylic acid), 5’-inosine monophosphate (i.e., inosinic acid) and salts thereof” ([0061]; claim 5).
Therefore, claim 20 is rendered obvious.
Regarding claim 21, Zasypkin teaches the method according to claim 20.
Zasypkin also teaches that the inosinic acid or the salt thereof is disodium inosinate, and the guanylic acid or the salt thereof is disodium guanylate – As indicated regarding claim 20, Zasypkin teaches that the nucleic acids are inosinic acid or salts thereof, and/or guanylic acid or salts thereof (claim5). Zasypkin further teaches that the salts thereof are disodium inosinate and disodium guanylate ([0066]).
Therefore, claim 21 is rendered obvious.
Regarding claim 22, Zasypkin teaches the method according to claim 12.
Zasypkin also teaches that the amount of the nucleic acid contained in the nucleic acid-containing yeast extract is 20% (w/w) or more – Zasypkin teaches that “the yeast extract is a high nucleic acid yeast extract comprising 10% to 30% by weight of at least one selected from the group consisting of 5’-guanine monophosphate (i.e., guanylic acid), 5’-inosine monophosphate (i.e., inosinic acid) and salts thereof” ([0061]; claim 5). The claimed range of 20% or more overlaps the disclosed range of 10% to 30%. In a 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).
Therefore, claim 22 is rendered obvious.
Regarding claim 23, Zasypkin teaches the method according to claim 12.
Zasypkin also teaches that the lysine or the salt thereof is lysine hydrochloride – “0.54% of lysine monohydrochloride” ([0080]).
Claim 23 is therefore rendered obvious.
Regarding claim 25, Zasypkin teaches the method according to claim 12.
Zasypkin does not specifically disclose that the method comprises one, two, three, or four features selected from the group consisting of the following (a) to (d):
(a) the ingredient (A) is added so that the concentration of the ingredient (A) at the time of eating is 0.0024 to 0.12% (w/w);
(b) the ingredient (B) is added so that the concentration of the ingredient (B) at the time of eating is 0.0005 to 0.025% (w/w);
(c) the ingredient (C) is added so that the concentration of the ingredient (C) at the time of eating is 0.000048 to 0.0024% (w/w); and
(d) the ingredient (D) is added so that the concentration of the ingredient (D) at the time of eating is 0.00014 to 0.007% (w/w).
However, the instant specification at paragraph [0070] states:
The amounts of ingredients (i.e., active ingredients and any other ingredients) and the amount ratio therebetween added in the method of the present invention are not particularly limited as long as the saltiness enhancement effect is obtained. The amounts of ingredients and the amount ratio therebetween added in the method of the present invention can be set as appropriate depending on various conditions such as the type of raw material of food and the type of the food.
As such, the inventors indicate that the amounts of the individual “active ingredients” (i.e., ingredients (A) to (D)) and their respective ratios are not critical, as long as the saltiness enhancement effect is obtained.
Zasypkin teaches that the application of the reduced sodium composition to plain potato chips results in a saltiness matching the full salt control ([0081]). This indicates that the amounts of the claimed active ingredients in the reduced sodium composition of Zasypkin enhances the saltiness of the potato chips in the same way as full sodium salt. One of ordinary skill in the art would have reasoned that applying more of the reduced salt composition would result in increased saltiness, and applying less of the reduced salt composition would result in decreased saltiness. As such, the claimed active ingredients (A) to (D) are result-effective variables.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to determine the optimal value for active ingredients (A) to (D) used in the process of Zasypkin, through routine experimentation, to impart the food with a desired amount of saltiness appropriate for the food and the preference of the consumer, including at least one of the claimed features (a) to (d).
Therefore, claim 25 is rendered obvious.
Regarding claim 26, Zasypkin teaches the method according to claim 12.
Zasypkin also teaches that the ingredients (A) to (D) are added by addition of a composition for enhancing saltiness of food, the composition comprising the ingredients (A) to (D) – Zasypkin teaches that potassium chloride, arginine, lysine monohydrochloride, and yeast extract (i.e., ingredients (A) to (D)) were mechanically blended and shaken in a closed container to for a reduced sodium composition ([0080], see also claim 17). The reduced sodium composition was tested topically on plain potato chips, and resulted in a saltiness matching the full salt control ([0081], see also claim 19). This indicates that the reduced sodium composition of Zasypkin enhances the saltiness of the potato chips in the same way as full sodium salt.
Claim 26 is therefore rendered obvious.
Response to Arguments
Claim Objections:
Applicant has overcome the objections to the claims by amendment. Accordingly, the objections have been withdrawn.
Claim Rejections – 35 U.S.C. § 102 of claims 12-24 and 26 and 35 U.S.C. § 103 of claim 25: Applicant’s arguments filed on 8 December 2025 have been fully considered, but they are not persuasive.
Applicant first argued that the rejection of previous claim 22, now incorporated into claims 12, 15, and 16 along with the limitations of previous claim 24, is based on a false equivalence between the two yeast extracts (“yeast extract” of Example 3 and “high nucleotide yeast extract” of Example 5) of Zasypkin. Applicant argued that the difference in terms explicitly distinguishes the two yeast extracts and the context of the specification implicitly denies that the “yeast extract” in example 3 would be a high nucleotide yeast extract. Applicant argued that the yeast extract in Example 3 cannot be considered to inherently have a high nucleotide content as inherency requires necessity, and this context of the specification does not provide a basis for the yeast extract in Example 3 to necessarily be the high nucleotide extract (p. 9, ¶ 4).
Applicant’s argument has been considered, but it is not persuasive. MPEP § 2131.02(III) states, “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).” Where Example 3 states “yeast extract”, one of ordinary skill in the art would turn to the specification and claims to determine the nature of the yeast extract. Paragraph [0061] states that the most preferred yeast extract is high nucleotide yeast extract. Paragraph [0061] states 10% to 20% nucleotides, and claim 5 recites 10% to 30% nucleotides. Therefore, one would at once envisage the claimed arrangement wherein the yeast extract of Example 3 is high nucleotide yeast extract comprising 10% to 30% nucleotides. Regardless, the amended claims are rejected under 35 U.S.C. § 103 because the teachings of Zasypkin clearly render the claims obvious.
Applicant next argued that the amount of “high nucleotide yeast extract in Example 5 is only about 1.4 wt% relative to the total weight of potassium chloride, arginine, and lysine, the present claims reciting an amount of 2.3% or more are distinguished from Example 5 (pp. 9-10, bridging ¶).
Applicant’s argument has been considered, but it is not persuasive. Where one would at once envisage the claimed arrangement wherein the yeast extract of Example 3 is high nucleotide yeast extract comprising 10% to 30% nucleotides, the relative amount of high nucleotide yeast extract relative to the total weight of potassium chloride, arginine, and lysine would be 2.99% as shown by the calculations regarding previous claim 24 and in the rejection of claims 12-16 under 35 U.S.C. § 103 presented hereinabove.
Applicant further argued that the present claims achieve unexpectedly advantageous effects, particularly an early saltiness enhancement effect, by using high nucleotide yeast extract in an amount of 2.3% or more (p. 10, ¶ 3). Applicant argued that Zasypkin does not disclose or suggest an early saltiness enhancement, and since Examples 3 and 5 comprise a considerable amount of sour substances such as citric acid, there is a high probability that the initial salty taste is masked and therefore not enhanced (p. 10, ¶ 4).
Applicant’s assertion of unexpected technical results is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. MPEP § 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he 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)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, the previously rejected claims were rejected under 35 U.S.C. § 102. Secondary considerations are applicable only to rebut a prima facie case of obviousness of claims rejected under 35 U.S.C. § 103. Regarding the currently rejected amended claims, Applicant’s assertion of an unexpected enhanced early saltiness is the recognition of a latent property of the obvious combination of the claimed ingredients, which cannot be the basis for patentability. See MPEP § 2145(II). Regarding Applicant’s argument that since Examples 3 and 5 comprise a considerable amount of sour substances such as citric acid, there is a high probability that the initial salty taste is masked and therefore not enhanced, this argument is based on speculation. Evidence is required to support such an argument. Regardless, Zasypkin teaches embodiments that do not require the sour substances. For example, the embodiments of claim 5 do not require the acids of claim 2. Such embodiments are obvious variants of the invention of Zasypkin. Therefore, the early saltiness is considered to be present as described regarding claim 18 hereinabove.
Furthermore, Applicant’s evidence is not commensurate in scope with the claimed invention. The examples are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges and combinations of the claimed ingredients from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples. Test # 7 of Table 2 of the instantly filed specification provides one specific example. Table 4 provides additional examples, but the scope of the claims is far broader than can be supported by the Applicant’s evidence, not in the least because the scope of the claims encompasses any amount and proportion of ingredients (A) to (C).
For at least these reasons, Applicant’s arguments are not found to be persuasive, and claims 12-23 and 25-26 are rejected under 35 U.S.C. § 103
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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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793