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 § 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 10-13 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.
Regarding claim 10, claim 10 recites “A method of preparing a preserved product according to claim 1, the method comprising adding (a) a ferulic acid component…and (b) an organic acid component” in lines 1-5. Since the product of claim 1 already recites “a ferulic acid component and an organic acid component” in claim 1 it is unclear if the ferulic acid component and organic acid component recited in lines 1-5 are the same as or different from that already recited in claim 1.
Claims 11-13 are rejected by virtue of their dependence on a rejected base claim.
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.
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.
Claims 1, 2, 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura JP 2021065117A (Espacenet Translation) in view of Wadamori GB 2289676.
Regarding claim 1, Kimura discloses a preserved food product comprising a ferulic acid component (ferulic acid) and an organic acid component being selected from acetate (sodium acetate) (Espacenet Translation). Kimura discloses that the ferulic acid component and the organic acid component can present in a molar ratio of 0.25:1 (Espacenet Translation [0023]). It is noted that Kimura discloses that the ferulic acid component and the organic acid component (sodium acetate) can be present in a mass ratio 15:25 (Espacenet Translation [0023]), therefore to obtain the molar ratio: 15g ferulic acid x mol/194.18g = 0.077 mol ferulic acid, 25g sodium acetate x mol/82.0343g =0.304 mol sodium acetate, 0.077 mol ferulic acid: 0.304 mol sodium acetate = 0.25 mol ferulic acid: 1 mol sodium acetate).
Claim 1 differs from Kimura in the recitation that the ferulic acid component and the organic acid component are homogenously distributed throughout the preserved food product and the preserved food product comprises 8-75 mmol/kg of the ferulic acid component and 10-200 mmol/kg of the organic acid component.
However, Kimura discloses that the amount of ferulic acid component (ferulic acid) can be varied based on desired bacteriostatic effect and taste (Espacenet Translation). Therefore, Kimura provides motivation for one of ordinary skill in the art to adjust the amount of ferulic acid through routine experimentation, including to values presently claimed in order to provide a desired bacteriostatic effect and taste. It has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. (MPEP 2144.05).
Kimura discloses that the amount of organic acid component (sodium acetate) can be varied based on desired bacteriostatic effect and taste (Espacenet Translation [0022]- [0024]). Therefore, Kimura provides motivation for one of ordinary skill in the art to adjust the amount of organic acid component through routine experimentation, including to values presently claimed in order to provide a desired bacteriostatic effect and taste. It has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. (MPEP 2144.05).
Regarding the limitation that the ferulic acid component and the organic acid component are homogeneously distributed throughout the food product, Kimura generically discloses that the food product comprises the ferulic acid component and organic acid component and discloses that the method of adding the ferulic acid component and organic acid component is not particularly limited (Espacenet Translation [0030]), and it would have been obvious to one of ordinary skill in the art to homogenously distribute the ferulic acid component and organic acid component in order to ensure that the a desired bacteriostatic effect is obtained throughout the food product.
Additionally, in the alternative, regarding the limitation that the surface of the food product comprises 8-75 mmol per kg of the ferulic acid component and 10-200 mmol per kg of the organic acid component, the surface of the food being defined as the outside layer of the food product having a thickness of 0.5mm, it is noted that Kimura generically discloses that the food product comprises the ferulic acid component and organic acid component and discloses that the method of adding the ferulic acid component and organic acid component is not particularly limited (Espacenet Translation [0030]).
Wadamori discloses that a ferulic acid component and organic acid component (Pg.7) can be applied to food products by spraying with or dipping food products in a composition comprising a ferulic acid component and organic acid component and therefore suggests applying a ferulic acid component and organic acid component to the surface of a food product (Pg. 5, Pg. 8) for preserving the food product. Wadamori discloses that the concentration and contact time with the composition can be varied and therefore suggests that the amount present on the surface of the food product can be varied.
It would have been obvious to one of ordinary skill in the art to modify Kimura such that the surface of the food product comprises the ferulic acid component and the organic acid component, the surface of the food being defined as the outside layer of the food product having a thickness of 0.5mm as suggested by Wadamori in order to suitably preserve the food product. It would have been obvious to one of ordinary skill in the art to vary the amount of ferulic acid component and organic acid component present on the surface based on the desired taste and bacteriostatic effect. As discussed above, Kimura provides motivation for one of ordinary skill in the art to adjust the amount of organic acid component through routine experimentation, including to values presently claimed in order to provide a desired bacteriostatic effect and taste. It has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. (MPEP 2144.05).
Regarding claim 2, claim 2 differs from Modified Kimura in the recitation that Kimura explicitly recites the food product specifically comprises 30-95% water. However, given that the foods listed in paragraph [0011] commonly include water within the claimed range, it is obvious that the food product can comprise water within the claimed range.
Regarding claim 4, claim 4 is rejected for the same reasons given above as for claim 1. Kimura discloses that the food product is a processed meat (‘117, Espacenet Translation [0011]).
Regarding claim 5, claim 5 is rejected for the same reasons given above as for claim 1. Kimura discloses that the food product is a meat (‘117, Espacenet Translation [0011]).
Regarding claims 6 and 7, claims 6 and 7 are rejected for the same reasons given above as for claim 1.
Regarding claim 8, claim 8 is rejected for the same reasons given above as for claim 1.
Regarding claim 9, Kimura discloses that the organic acid component is selected from lactic acid and lactate (‘117, Espacenet Translation [0024]).
Regarding claim 10, claim 10 is rejected for the same reasons given above as for claim 1.
Regarding claim 11, claim 11 differs from Kimura in the recitation that the ferulic acid component are added in the form of a preservative composition comprising 0.18-4.2mmol per gram of dry matter of the ferulic acid component and 0.5-9.0mmol per gram of dry matter of the organic acid component. It is noted that Wadamori discloses that a ferulic acid component and organic acid component (Pg.7) can be applied to food products in the form of a preservative composition comprising a ferulic acid component and organic acid component (Pg. 5, Pg. 8) for preserving the food product. Wadamori discloses that the concentration and contact time with the composition can be varied and therefore it would have been obvious to one of ordinary skill in the art to modify the particular amounts of ferulic acid component and organic acid component based on desired contact time with the preservative composition.
Regarding claim 12, Modified Kimura teaches that the preservative composition is added in the form of a powder or an aqueous solution (‘676, Pg. 8, 3rd paragraph).
Regarding claim 13, claim 13 is rejected for the same reasons given above as for claim 11.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kimura JP 2021065117A (Espacenet Translation) in view of Wadamori GB 2289676 in view of Chua US 2010/0175567.
Regarding claim 3, claim 3 differs from Modified Kimura in the recitation that the product specifically has a water activity between 0.90-0.995, however Chua discloses that water activity affects shelf life ([0002]), therefore it would have been obvious to one of ordinary skill in the art to routinely adjust the water activity including to values presently claimed based on desired shelf life.
Response to Arguments
Applicant's arguments filed 04/03/2026 have been fully considered but they are not persuasive.
On Pg. 8 of the remarks Applicant argues that Kimura does not encourage upward adjustment to the claimed range, rather it warns that higher ferulic acid levels may compromise taste.
This argument has not been found persuasive. Kimura broadly discloses that at least 0.04% mass of ferulic acid can be utilized (0.04% mass equating to 2 mmol/kg). While Applicant argues a preferred range, it is noted that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” (MPEP 2123.II).
On pg. 8 of the remarks Applicant argues that Kimura does not teach ferulic acid concentration standing alone as the parameter to be optimized to achieve preservation. Applicant argues that Kimura expressly attributes antimicrobial effect to the combined action of carbon dioxide and ferulic acid. Applicant argues that Kimura does not teach that modification of ferulic acid component concentration alone is a result effective variable and therefore the rejections reliance on routine optimization is misplaced.
This argument has not been found persuasive, Kimura specifically recites that “if the content of ferulic acids in a food product is less than 0.04% by mass, the bacteriostatic effect on various microorganisms, including lactic acid bacteria, is poor. On the other hand, if the content of ferulic acids in a food product is too high, the quality of the food such as taste may be affected.” (Espacenet translation [0020]). Thus, Kimura explicitly shows that the content of ferulic acid is a parameter which achieves a recognized result (see MPEP 2144.05.II). See also for example paragraph [0047] “the antibacterial activity was insufficient due to low content of ferulic acids”. While Kimura teaches the use of additional components for desired additional antibacterial effect, this does not negate the above teaching that content of ferulic acid can also be routinely optimized.
On Pg. 9 of the remarks Applicant argues that the amended claims demonstrate unexpected results.
This argument has not been found persuasive; Kimura already teaches using the claimed ratio and recognizes it was known in the art to utilize ferulic acid in an amount of at least 2 mmol/kg (0.04% mass equating to 2 mmol/kg) in combination with sodium acetate in an amount at least 20.47mmol/kg mass (0.25 % mass = 30.47 mmol/kg) for a food product in order to preserve the food product. It is noted that in Kimura the ferulic acid and sodium acetate are specifically being used for antimicrobial effect, and therefore it is not unexpected that ferulic acid and sodium acetate alone have an antimicrobial effect and in combination also have an improved antimicrobial effect (Espacenet translation [0020], [0022], [0044]-[0053]). Additionally, it is noted that "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.", “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention” (MPEP 2145.II).
On Pg. 11 of the remarks, Applicant requested clarification regarding the rejections of claims 2 and 3, it is noted that the rejections for claims 2 and 3 were clearly inadvertently switched with each other and have been corrected.
As discussed above, regarding claim 3, claim 3 differs from Modified Kimura in the recitation that the product specifically has a water activity between 0.90-0.995, however Chua discloses that water activity affects shelf life ([0002]), therefore it would have been obvious to one of ordinary skill in the art to routinely adjust the water activity including to values presently claimed based on desired shelf life. Thus, Chua clearly teaches that water activity is a result effective variable, and therefore that the water activity can be routinely optimized (MPEP 2144.05.II). While Chua is directed to a different invention this does make the background teachings of Chua irrelevant. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” (MPEP 2123.I)
Conclusion
THIS ACTION IS MADE FINAL. 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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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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