DETAILED ACTION
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 Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 08/31/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims: (1) the 35 U.S.C. §102(a)(1) rejections of claims 1, 6, and 8-9 over Haught have been withdrawn; and (2) the 35 U.S.C. §103 rejection of claim 7 over Dempsey has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3-6, 8-16
Withdrawn claims: 10-16
Previously cancelled claims: 2
Newly cancelled claims: 7
Amended claims: 1
New claims: None
Claims currently under consideration: 1, 3-6, 8-9
Currently rejected claims: 1, 3-6, 8-9
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/31/2026 has been entered.
Claim Objections
Claim 9 is objected to because “The consumable composition of claim 8,0 wherein the orally consumable products” should be read as “The consumable composition of claim 8, wherein the orally consumable products” .
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1 and 8-9 are rejected under 35 U.S.C. 112(b) 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 1 recites that incorporating the glycerophosphate(s) into the composition is “for improving taste and palatability in the orally consumable product”. However, it is unclear as to what is meant by the phrase “improving taste and palatability” as such improvement in this context may mean any number of changes in taste or palatability. For example, one seeking to decrease the spiciness of a food product would consider a food product having a milder taste compared to a control food product to be an improvement. However, one seeking to increase the spiciness of a food product would consider a food product having a spicier taste compared to a control food product to be an improvement. Therefore, the claim is indefinite.
For the purpose of this examination, the phrase “for improving taste and palatability in the orally consumable product” will be considered to encompass any change in taste or palatability when compared to a control food product.
Claims 8-9 are rejected by reason of dependency from claim 1.
Claim Rejections - 35 USC § 103
Claims 1, 3-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dempsey (GB 2,332,850A; previously cited).
Regarding claims 1, 3, 4, and 5, Dempsey teaches a dog food comprising phosphates wherein the phosphates may be sodium glycerophosphate (page 14, line 13; page 15, line 25); and additives wherein the additive may be potassium chloride (page 14, line 9; page 16, line 23). Therefore, Dempsey teaches a consumable composition that may comprise the mineral glycerophosphate sodium glycerophosphate incorporated into an orally consumable product containing potassium chloride as recited in present claim 1.
Dempsey does not disclose that the mineral glycerophosphate is capable of blocking a bitter taste profile of the potassium chloride as recited in present claim 3. However, Dempsey teaches sodium glycerophosphate (page 14, line 13; page 15, line 25) as recited in present claim 1. Therefore, Dempsey is considered to teach a mineral glycerophosphate that is capable of blocking a bitter taste profile of the potassium chloride, thereby rendering claim 3 obvious. Dempsey also does not disclose that the mineral glycerophosphate improves the taste and palatability in the orally consumable product when compared to the taste and palatability of the same orally consumable product without the mineral glycerophosphate as recited in present claims 1, 4, and 5. However, Dempsey discloses that the composition comprises 0-3 wt.% of the potassium chloride and 0-5 wt.% of the sodium glycerophosphate (page 14, lines 9, 12), such as 0.25 wt.% sodium glycerophosphate and 1.6 wt.% potassium chloride (page 17, lines 17, 26). These concentrations provide a range of weight ratios of potassium chloride to sodium glycerophosphate which encompass the weight ratios of potassium chloride to sodium glycerophosphate in the examples of the present specification (specification [0022]-[0027]). These examples of the present specification resulted in sodium glycerophosphate improving the taste and palatability of the orally consumable product by reducing bitterness; and improving mouthfeel including increased viscosity as recited in present claims 1, 4, and 5.
Regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present in the reference. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, 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 Dempsey discloses the same weight ratios of potassium chloride to sodium glycerophosphate as recited in the present specification, Dempsey is considered to at least render present claims 1, 3, 4, and 5 obvious.
Regarding claim 6, Dempsey teaches the invention as described above in claim 1, including the composition comprising phosphates wherein the phosphates may be sodium glycerophosphate (page 14, line 13; page 15, line 25); and additives wherein the additive may be potassium chloride (page 14, line 9; page 16, line 23). Therefore, Dempsey at least suggests a composition comprising the claimed ingredients.
Dempsey does not teach that the improvement in palatability in the orally consumable product comprises providing a cooling sensation. However, regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present in the reference. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, 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). Therefore, Dempsey is considered to render claim 6 obvious, especially wherein Applicant has not demonstrated that the combination of potassium chloride and any of the claimed glycerophosphates provides a cooling sensation (i.e., the present specification shows that the combination of dipotassium phosphate with sodium glycerophosphate or the combination of dipotassium phosphate with potassium glycerophosphate provided a cooling sensation. The present specification does not show any combination comprising potassium chloride as providing a cooling sensation.).
Regarding claims 8 and 9, Dempsey teaches the invention as described above in claim 1, including the orally consumable product is a food for animals (corresponding to dog food) (page 1, lines 1-3) as recited in present claims 8 and 9.
Response to Arguments
Claim Rejections – 35 U.S.C. §102(a)(1) of claims 1, 6, and 8-9 over Haught: Applicant’s arguments with respect to claim(s) 1, 6, and 8-9 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.
Claim Rejections – 35 U.S.C. §103 of claims 103 over Dempsey: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Dempsey does not teach or suggest the claimed combination of potassium chloride and mineral glycerophosphate as Dempsey does not teach a composition comprising both a mineral glycerophosphate and potassium chloride. Applicant pointed to Table 10 of Dempsey and to the teaching of concentration ranges of 0-3 wt.% potassium chloride and 0-5 wt.% sodium glycerophosphate in Dempsey for support in Applicant’s assertion. Applicant then argued that Dempsey makes no mention of improving taste and palatability of its food product as presently claimed (Applicant’s Remarks, page 1st paragraph under “Rejections of claims under 35 U.S.C. 103” – page 7, 1st paragraph).
However, “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” MPEP 2123.II. Since Dempsey discloses both sodium glycerophosphate and potassium chloride as suitable ingredients for its composition without criticizing either ingredient and since Dempsey discloses concentrations for each ingredient which include concentrations greater than 0 wt.%, Dempsey is considered to broadly disclose a composition comprising both claimed ingredients.
In response to Applicant’s assertion that Dempsey makes no mention of improving taste and palatability of its food product as presently claimed, Dempsey teaches a composition comprising phosphates wherein the phosphates may be sodium glycerophosphate (page 14, line 13; page 15, line 25); and additives wherein the additive may be potassium chloride (page 14, line 9; page 16, line 23). Therefore, Dempsey at least suggests a composition comprising the claimed ingredients. Regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present in the reference. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, 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 the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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