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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I, with traverse, in the reply filed on 12/17/2025 is acknowledged.
In the response, Applicant states that that the shared technical feature should be defined as "a flavor-imparting agent comprising 5 mass ppm or more of lactones having 6-14 carbon atoms, wherein 10% or more constituent fatty acids of the glycerides are straight chain saturated C6-C14 fatty acids, and the lactones are y-lactones and/or 8-lactones". Applicant appears to argue that reference Grab (US 8,609,172 B2, Of record), teaches precursor at 10 ppm but that the precursor of Grab is not the lactone, and therefore Grab does not teach the lactone being 5 mass ppm or more. This argument was considered but found unpersuasive. Grab still teaches the technical feature as discussed in the rejection infra, and therefore the feature is not considered special. As such, the restriction is proper and deemed FINAL.
Status of Claims
Claims 1-17 are pending in this application. Claims 7-17, drawn to non-elected groups. Claims 1-6 are currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/25/2024 and 09/13/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
Drawings
The drawing is objected to because there is only one figure and the drawing refers to it as Figure 1. However, 37 CFR 1.84(u)(1) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawing will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: p. 2, lines 12-13; p. 4, line 22; p. 14, last line of the specification refer to Figure 1 but should state The Figure as there is only one figure. 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.
Claim 6 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 6 is indefinite because it is unclear what the additional glycerides are being mixed with, i.e. the product, or something else, or both. Additionally, it is unclear if the addition and mixing of the glycerides are performed when the heat is first introduced, immediately after the heating, or when the product has cooled. Because the reaction is a reversible reaction, the temperature, and therefore the timing of the mixing of the reactant are necessary to determine whether the lactones would form.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Grab (US 8,609,172 B2; Of record), and in view of Grab, W. (US 2009/0311403 A1), hereinafter Grab2.
Grab teaches the reversible reaction of making the lactone flavor compound and precursor (Col. 4; Fig. 1). The flavor precursor release the lactone flavor under aqueous acidic conditions or upon heating in the presence of water, for example by cooking or by baking or upon consumption (Col. 4, lines 30-38). The flavors that form a precursor when reacted with mono- and/or diglycerides and are later released by the formed precursors consist of gamma and delta lactones, which reads on the claimed gamma and delta lactones (Col. 4, lines 39-44).
Regarding Claim 1, Grab expressly teaches preparing a precursor compound from 1g of 1-monocaprin, and 500 mg in 20 mL hexane (Example 1). When this precursor is boiled in water at 0.1 %, the aroma of the reacted lactone is released (compare examples 2-4; Example 1). As such, the starting concentration of the precursor is 1000 ppm, although only 10 ppm was used in tasting (Examples 1-4). While the exact yield of the lactone product is not disclosed, there is a reasonable expectation that at least 5 ppm of lactone is obtained from 1000 ppm of precursor, and/or one skilled in the art would be able to optimize the concentration to obtain the desired concentration sufficient to detect the flavor.
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Fig. 1
Grab teaches the lactone and flavor precursor has an R1 moiety consisting of straight-chain C1-C9 alkyl group, and the fatty acids R4 to be selected from H, CH2(OH), CH2(OCOR2), and R5 is selected from CH2(OCOR3), CH(OH)CH2OCOR2, CH(OCOR3)CH2OCOR2, CH(OCOR2)CH2OH, wherein R2 and R3 are independently selected from a straight-chain C1 to C17 alkyl etc. (Claims 1 and 7).
Regarding Claims 1-4, Grab expressly teaches examples wherein only straight chain C8 and C10 fatty acid constituents are present, reading on the “10% by mass or more of constituent fatty acids of the glycerides are straight-chain saturated fatty acids having 6 to 14 carbon atoms” (Examples 2-3). Grab expressly teaches examples wherein no unsaturated fatty acid constituents are present (Examples 2-3).
Grab does not expressly teach the oxidation heat treatment of glycerides at 140 °C.
Grab2 is in the same field of endeavor, teaching flavoring in food product wherein at least one flavor precursor of Formula I is admixed to a food product in a sufficient concentration to release a flavor of noticeable aroma upon consumption and/or heating of the food product, and wherein said flavor is selected from various aldehydes and ketones inter alia lactone compounds (Claims 1-2). For example, a precursor compound is prepared using compound is prepared using glycerin-monooctanoate and 2-nonanone, and when the resulting precursor is boiled in water, a fresh, blue cheese, creamy, fruity aroma (the aroma of 2-nonanone) is released (Example 9). Regarding the temperature claimed, Grab2 teaches the preparation of a standard dough for crackers comprising the cheese-flavored precursor, and baking the dough for about 5-7 minutes at 230° C, releasing a strong blue cheese aroma (Example 15). The resulting fresh biscuits with top aroma have a stronger flavor than the precursor crackers [0304].
Grab already teaches that the flavor precursor release the lactone flavor by heating, for example by cooking or by baking. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Grab2 with Grab and heat the glycerides of Grab at temperatures that would release the aroma and flavor, for example, heating at 230 °C, and adjusting as needed depending on the application and product. One of ordinary skill in the art would find it obvious to adjust the temperature as a matter of experimentation and optimization. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results. As such, the artisan would enjoy a reasonable expectation of success. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
Regarding Claim 5, Grab teaches the flavor precursors of Formula I are hydroxyesters of gamma or delta lactones with mono- or diglycerides that form hydroxy-diglyceride ester or hydroxy-triglyceride ester precursors (Col. 3, lines 59-63).
Regarding Claim 6, Grab teaches that the reaction of lactone flavor precursor to lactone flavor compound is a reversible reaction (Fig. 1; Col. 4, lines 24-26). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to add additional triglyceride to drive the reaction to produce more or different lactone flavor compound, if a more enhanced or additional flavors are needed.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792