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 .
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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 04/30/2026 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 04/30/2026 and 03/26/2026. Claims filed 04/30/2026 are examined.
Claims 1, 3, 6, 10-13 and 17-28 are pending in the application. Claims 1, 6, 11-13, 18-19 and 25-26 are currently amended. Claims 2, 4-5, 7-9 and 14-16 remain cancelled. Claims 3, 10, 17 and 20-24 are previously presented. Claims 27-28 are newly presented. Claims 1, 3, 6, 10-13 and 17-28 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 11 is objected to because of the following informalities: “30” should read “30%”. Appropriate correction is required.
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 1, 3, 10, 17, 21, 22, 23 and 24 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 1 recites a ratio of 1:0.00001 to 400. It is unclear if the range is 1:0.00001 to 400: 1 or 1:0.00001 to 1: 400 for the ratio. Claim 3 is rejected for the same reason. Given that claim 3 depends from claim 1 and recites a range of 1:0.00005 to 200 with 200 being smaller than 400, 1:0.00001 to 400 is interpreted to mean 1:0.00001 to 1: 400. Claims 10, 17, 21, 22, 23 and 24 are rejected for the same reason. Appropriate correction is required.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Kanetani JP2011004640 A (English translation relied upon for reference, hereinafter referred to as Kanetani) in view of Noriyoshi JP2020031564 A (cited in the IDS submitted 02/15/2024, English translation relied upon for reference, hereinafter referred to as Noriyoshi).
Regarding claims 1 and 3, Kanetani teaches a method of producing a seafood (e.g., fish) extract having reduced unfavorable smell (e.g., fishy smell), the method comprising removing most of the fish smell components in a fish extract by azeotropy, followed by masking fishy smell by adding a masking agent (e.g., deodorizing substance) to the fish extract (Abstract; 0018-0019; 0041; 0035). Kanetani teaches that as the deodorizing substance added in the masking step, any substance commonly used as a deodorizing component can be used, for example, a monoterpene aldehydes such as citronellal (0035; 0038). Kanetani teaches that the deodorizing substance can be added in an appropriate amount depending on the degree of unpleasant odor, but generally the amount added is in the range of 0.001-1% by weight of the seafood extract (0040; 0052).
Kanetani is silent regarding that the masking agent or deodorizing substance comprising γ-Glu-Val-Gly. What Kanetani teaches is that any substance commonly used as a deodorizing component can be used (0035).
Noriyoshi in the same field of endeavor teaches a taste odor masking agent for masking unpleasant taste such as fishy smell in a food that comprises fish components, wherein the taste odor masking agent comprises a gamma-glutamyl tri- peptide such as γ-Glu-Val-Gly (0006; 0026; 0030). Noriyoshi teaches adding 0.001 to 10% the gamma-glutamyl tri- peptide to the food (0006).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kanetani by combing citronellal with γ-Glu-Val-Gly to form a new masking composition and adding the new composition to the fish extract with reasonable expectation of success, for the reason that as stated in MPEP 2144.06, "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In the instant case, prior art has established that both citronellal and γ-Glu-Val-Gly are able to mask the fishy smell of a food product that comprises fish component thus one skilled artisan would have been motivated to combine the two masking agents to form a new composition to be used for the same purpose.
On the weight ratios of citronellal to γ-Glu-Val-Gly as recited in claims 1 and 3, where prior art has established that both citronellal and γ-Glu-Val-Gly are able to mask fishy smell in a food product that comprises fish components, one of ordinary skill in the art would have been motivated to manipulate the amounts of each in the new masking composition such that the new composition when added to the fish extract could effectively mask the fishy smell therein. As such, the ratios as recited in the claims are merely obvious variants of the prior art. Note that claim 1 or claim 3 recites a very broad range for the ratio of citronellal to γ-Glu-Val-Gly (e.g., the upper bound is 40,000,000 times of the lower bound in claim 1 and the upper bound is 4,000,000 times of the lower bound in claim 3).
Claims 6, 10-13 and 17-28 are rejected under 35 U.S.C. 103 as being unpatentable over Chakraborty US Patent Application Publication No. 2017/0055548 A1 (hereinafter referred to as Chakraborty) in view of Noriyoshi JP2020031564 A (cited in the IDS submitted 02/15/2024, English translation relied upon for reference, hereinafter referred to as Noriyoshi).
Regarding claims 6, 10-13 and 17-28, Chakraborty teaches adding a flavor system for reducing an undesirable off-notes (e.g., beany or grassy taste) of a food that comprises non-animal protein (e.g., soybean protein) (0025; 0010; 0045; 0014), wherein the flavor system comprising, inter alia, a protein binder, an off-note blocking compound, and a flavorant (0004), wherein the protein blinder serves to bind to and form a complex with the non-animal protein and the off-note blocking compound to mask or block undesirable off-notes (0025), wherein the protein binder includes a mixture of a terpene and a carbonyl compound (for example, nootkatone) (0004; 0041), wherein the amount of the protein binder is 0.05-1% by weight of the non-animal protein (0042), wherein suitable off-note blocking compound includes one or more of fatty acid, carbonyl, sulfur-containing compound, sweet browns, sweeteners, lactone, etc. (0048-0052), wherein the amount of the off-note blocking compound is 0.00000001 to 0.0025 % by weight of the food (0052), and wherein the weight ratio of the off-note blocking compound to the protein binder is 1:1 to 20:1 (0055).
Chakraborty is silent regarding the off-note blocking compound comprises γ-Glu-Val-Gly. What Chakraborty teaches is that the flavor system could include a plurality of off-note blocking compounds (0054).
Noriyoshi in the same field of endeavor teaches a taste odor masking agent for masking unpleasant taste such as beany odor (e.g., soybean odor) in a food that comprises soybean protein, wherein the taste odor masking agent comprises a gamma-glutamyl tri- peptide such as γ-Glu-Val-Gly (0006; 0026; 0030). Noriyoshi teaches adding 0.001 to 10% the gamma-glutamyl tri- peptide to the food (0006).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Chakraborty by combing at least one of fatty acid, carbonyl, sulfur-containing compound, sweet browns, sweeteners, lactone, etc. with γ-Glu-Val-Gly to form a new masking composition and adding the new composition to the food that comprises soybean protein with reasonable expectation of success, for the reason that as stated in MPEP 2144.06, "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In the instant case, prior art has established that both at least one of fatty acid, carbonyl, sulfur-containing compound, sweet browns, sweeteners, lactone, and γ-Glu-Val-Gly are able to mask the beany odor of a food product that comprises soybean protein thus one skilled artisan would have been motivated to combine the two masking agents to form a new composition to be used for the same purpose.
On the weight ratios of nootkatone to γ-Glu-Val-Gly as recited in claims 10, 17 and 21-24, the ratio of nootkatone to γ-Glu-Val-Gly depends on the individual amounts of the two. In the instant case, Chakraborty teaches that nootkatone is part of the protein binder that binds to the non-animal protein such as soybean protein to free-up the flavorant (0025; 0038), that nootkatone combined with a terpene accounts for 0.05-1% by weight of the soybean protein, that weight ratio of the off-note blocking compound to the protein binder is 1:1 to 20:1; and Noriyoshi teaches that γ-Glu-Val-Gly is the active compound that masks the soybean odor in a food that comprises soybean protein and 0.001 to 10% γ-Glu-Val-Gly is added to the food. Therefore, one of ordinary skill in the art would have been motivated to manipulate the amount of nootkatone added to the food such that it could effectively bind the soybean protein to free up the flavorant, and to manipulate the amount of γ-Glu-Val-Gly within the off-note blocking compounds such that they could effectively mask the beany odor. As such, the ratios as recited in the claims are merely obvious variants of the prior art. Note that claims recites a very broad range for the ratio of nootkatone to γ-Glu-Val-Gly (e.g., the upper bound is 40,000,000 times of the lower bound in claims 10, 17 and 24 and the upper bound is 4,000,000 times of the lower bound in claims 21-23).
For the same reason above, the amounts of nootkatone and γ-Glu-Val-Gly by weight of the soybean protein as recited in claims 11,12, 18-19 and 25-26 are also obvious variants of the prior art. Note that claims 11, 18 and 25 recite a very broad range of the concentration of γ-Glu-Val-Gly in which the upper bound 30% is 300,000 times of the lower bound 0.1 ppm, and claims 12, 19 and 26 recite a very broad range for the concentration of nootkatone in which the upper bound 8% is 16,000,000 time of the lower bound 5 ppb.
Response to Arguments
Applicant’s arguments filed 04/30/2026 and 03/26/2026 with respect to pending claims have been considered but are moot over the new ground of rejection set forth in the instant office action.
The examiner notes that applicant has amended claims 11-12, 18-19 and 25-26 to narrow the ranges of the ratios of component (A) or component (B) to the off-taste substance, however, the fact remains that the ranges are very broad. For example, in claims 11, 18 and 25, the upper bound 30% is 300,000 times of the lower bound 0.1 ppm, and in claims 12, 18 and 26, the upper bound 8% is 16,000,000 time of the lower bound 5 ppb.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NIKKI H DEES can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHANGQING LI/Primary Examiner, Art Unit 1791
Prosecution Insights