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 I, claim 1 and newly claim 23-37 in the reply filed on 04/21/2026 is acknowledged.
Newly submitted Group II, claim 28-40 to a product and Group III, claim 41-42 to a product, are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions I and II are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the product of Group I does not require two components and amount content as recited in Group II. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and III are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed Group I does not require three components and amounts as recited in Group III. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to related product. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed Group II does not require three components and amounts as recited in Group III. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 38-42 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Application Status
Claim 1 and 23-37 are under examination.
Claim 38-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and III, there being no allowable generic or linking claim.
Claim 2-22 are cancelled.
Claim 1 and 23-37 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/19/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 37 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 37 recites “the content of the undissociated acetic acid (AH) is 10 w/v% to 40 w/v%” is indefinite, hence the range is not farther limiting the range set forth in the preceding claim 36.
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.
Claim(s) 1 and 23-37 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki Kiyomitsu (JP 2005013138, Machine Translation English).
Regarding claim 1, 23-31 and 34, Kawasaki Kiyomitsu discloses a spice flavor composition (‘138, [0001], claim 1) comprising aldehydes and carboxylic acids; wherein the aldehydes includes 2-octenal (‘138, [0013], claim 1) and the carboxylic acids includes acetic acid (‘138, [0017], claim 1). Kawasaki Kiyomitsu discloses the carboxylic acids, the acetic acid in a range of 0 to 20 % by wt. (‘138, [0010]) which overlaps the cited range of claim 1 and 34. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kawasaki Kiyomitsu’s spice flavor composition comprising the acetic acid (‘138, [0017], claim 1) and meets the limitation of an acetic acid-containing composition.
Kawasaki Kiyomitsu does not explicitly disclose the amount of the acetic acid as recited in claim 1; the amount of the 2-octenal of claim 23; and the ratios of claim 26. However, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re Benjamin D. White, 17 C.C.P.A (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
It would have been obvious to one of ordinary skill in the art at the time of the claimed invention to adjust known flavoring such as acetic acid amounts of claim 1; and 2-octenal amounts of claim 23; and ratios of claim 26, in Kawasaki Kiyomitsu’s spice flavor composition, including the claimed amounts to provide a desired flavor profile in Kawasaki Kiyomitsu’s spice flavor composition, absent a clear and convincing or evidence to the contrary.
With respect to claim 24, 27 and 29, Kawasaki Kiyomitsu teaches the 2-octenal (‘138, [0013], claim 1) as recited in claim 1 and (+)-rose oxide is listed as an alternative selection of claim 1, hence the (+)-rose oxide is never specifically claimed as being present then claims 24, 27 29 are rejected for the same reasons as claim 1 with the 2-octenal (‘138, [0013], claim 1) being the taught element in the selection.
With respect to claim 25, 28, 30 and 31, Kawasaki Kiyomitsu teaches the 2-octenal (‘138, [0013], claim 1) as recited in claim 1 and 1,8-cineole is listed as an alternative selection of claim 1, hence the 1,8-cineole is never specifically claimed as being present then claims 25, 28, 30 and 31 are rejected for the same reasons as claim 1 with the 2-octenal (‘138, [0013], claim 1) being the taught element in the selection.
Regarding claim 32 and 33, Kawasaki Kiyomitsu discloses the spice flavor composition comprising spice extracts including thyme, nutmeg, fengreek, lemongrass, rose, peppermint, cinnamon, cumin (‘138, [0054]) which are consider as extract of plant material.
Regarding claim 35, Kawasaki Kiyomitsu discloses the spice flavor composition comprising sorbitan fatty acid esters (surfactant) (‘138, [0069]).
Regarding claim 36 and 37, Kawasaki Kiyomitsu discloses the carboxylic acids, the acetic acid in the range of 0 to 20 % by wt. (‘138, [0010]). Kiyomitsu is silent on an undissociated acetic acid in the acetic acid with the cited amounts. Th undissociated acetic acid is considered an intermediate limitation in the acetic acid. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
The patentability of an intermediate may be established by unexpected properties of an end product "when one of ordinary skill in the art would reasonably ascribe to a claimed intermediate the ‘contributing cause’ for such an unexpectedly superior activity or property." In re Magerlein, 602 F.2d 366, 373, 202 USPQ 473, 479 (CCPA 1979). "In order to establish that the claimed intermediate is a ‘contributing cause’ of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product." Id. at 479.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/ Primary Examiner, Art Unit 1792
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