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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 18, 2026 has been entered. Claims 1-4 and 6-12 are pending. Claims 1, 2, 4 and 7 have been amended. Claims 9-12 are new.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Haraguchi et al. (JP 2017018025 A; Jan. 26, 2017, see English Translation).
Regarding claim 1, Haraguchi discloses a flavor imparting agent for a plant protein-containing food product comprising (E)-6-nonenal (Example 9 of English Translation [0043]-[0044]) and butyric acid, or butanoic acid (Example 1 [0021]).
Haraguchi teaches that the butyric acid is present in an amount of 6.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the butyric acid is present in an amount of 0.6% by mass.
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass. Therefore, Haraguchi teaches that the butyric acid is in a concentration overlapping the claimed range of 103 times to 107 times that of (E)-6-nonenal.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Haraguchi further teaches the composition comprising delta-decalactone (Example 1 [0021]). Haraguchi teaches that the delta-decalactone is present in Example 1 in an amount of 5.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the delta-decalactone is present in an amount of 0.5% by mass, which is less than the 0.6% by mass of butyric acid, but not at least an order of magnitude less as claimed.
However, Haraguchi further teaches different Examples having varying amounts of both butyric acid and delta-decalactone. In Example 3, Haraguchi teaches that butyric acid is present in an amount of 40 parts by mass out of 1000 total parts by mass, which is 4% by mass, and that delta-decalactone is present in an amount of 10 parts by mass, which is 1% by mass. While still not an order of magnitude less, the amount of delta-decalactone is still significantly lower than the amount butyric acid. If the delta-decalactone were present in an amount of 9 parts by mass, which is only 1 part by mass less than what is taught in the Example, the delta-decalactone would be present in an amount which is at least an order of magnitude less than the amount of butyric acid.
As Haraguchi teaches delta-decalactone in an amount close to an order of magnitude less than butyric acid, the claimed amount is merely an obvious variant over the prior art. It would have been obvious to have the delta-decalactone be present in an amount which is at least an order of magnitude less than the amount of butyric acid depending on the desired flavor/fragrance provided by the composition. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Haraguchi teaches the composition as described above, but fails to specifically teach that the flavor-imparting agent is a meat flavor-imparting agent. Haraguchi teaches that (E)-6-nonenal enhances a rich full-bodied flavor and milk fat flavor ([0009]). Haraguchi further teaches that the flavor-imparting agent can be added to meat products to enhance the flavor ([0017]).
As Haraguchi teaches that (E)-6-nonenal is a known flavor enhancer that can provide enhanced full-bodied flavor to a variety of food products ([0017]), including meat, it would have been obvious to one of ordinary skill in the art to add (E)-6-nonenal to a plant-protein containing food product as a meat flavor-imparting agent.
Further, the examiner notes that the exact flavor that is imparted would be depending on the ingredients and food product to which (E)-6-nonenal is added to. The additional ingredients will contribute to the overall flavor. Haraguchi teaches that (E)-6-nonenal provides a fat flavor to plant protein containing products and therefore would expectedly provide a meaty/fat flavor to a plant-protein containing food product.
Regarding claim 2, Haraguchi discloses a plant protein-containing food product, e.g. soy milk, comprising (E)-6-nonenal (Example 9 of English Translation [0043]-[0044]) and butyric acid, or butanoic acid (Example 1 [0021]).
Haraguchi teaches that the butyric acid is present in an amount of 6.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the butyric acid is present in an amount of 0.6% by mass.
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass. Therefore, Haraguchi teaches that the butyric acid is in a concentration overlapping the claimed range of 103 times to 107 times that of (E)-6-nonenal.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Haraguchi further teaches the composition comprising delta-decalactone (Example 1 [0021]). Haraguchi teaches that the delta-decalactone is present in Example 1 in an amount of 5.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the delta-decalactone is present in an amount of 0.5% by mass, which is less than the 0.6% by mass of butyric acid, but not at least an order of magnitude less as claimed.
However, Haraguchi further teaches different Examples having varying amounts of both butyric acid and delta-decalactone. In Example 3, Haraguchi teaches that butyric acid is present in an amount of 40 parts by mass out of 1000 total parts by mass, which is 4% by mass, and that delta-decalactone is present in an amount of 10 parts by mass, which is 1% by mass. While still not an order of magnitude less, the amount of delta-decalactone is still significantly lower than the amount butyric acid. If the delta-decalactone were present in an amount of 9 parts by mass, which is only 1 part by mass less than what is taught in the Example, the delta-decalactone would be present in an amount which is at least an order of magnitude less than the amount of butyric acid.
As Haraguchi teaches delta-decalactone in an amount close to an order of magnitude less than butyric acid, the claimed amount is merely an obvious variant over the prior art. It would have been obvious to have the delta-decalactone be present in an amount which is at least an order of magnitude less than the amount of butyric acid depending on the desired flavor/fragrance provided by the composition. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 3, as stated above with respect to claim 2, Haraguchi discloses a plant protein-containing food product, e.g. soy milk, comprising (E)-6-nonenal (Example 9 of English Translation [0043]-[0044]).
While Haraguchi discloses in this specific example a liquid product, it is well known in the art to further dry a milk product to produce a milk powder ([0014]), and therefore it would have been obvious to dry the soy milk of Haraguchi to produce a dry milk powder if desired.
Additionally, Haraguchi discloses that (E)-6-nonenal can be added to a variety of food products ([0017]), including dry food products, wherein the food product can be a dairy substitute, and therefore it would have been obvious to one of ordinary skill in the art to add (E)-6-nonenal to a dry food product.
Regarding claim 4, Haraguchi discloses a method for producing a plant protein-containing food product, e.g. soy milk, comprising adding (E)-6-nonenal ((Example 9 of English Translation [0043]-[0044]) and butyric acid, or butanoic acid (Example 1 [0021]).
Haraguchi teaches that the butyric acid is present in an amount of 6.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the butyric acid is present in an amount of 0.6% by mass.
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass. Therefore, Haraguchi teaches that the butyric acid is in a concentration overlapping the claimed range of 103 times to 107 times that of (E)-6-nonenal.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Haraguchi further teaches adding to the composition delta-decalactone (Example 1 [0021]). Haraguchi teaches that the delta-decalactone is present in Example 1 in an amount of 5.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the delta-decalactone is present in an amount of 0.5% by mass, which is less than the 0.6% by mass of butyric acid, but not at least an order of magnitude less as claimed.
However, Haraguchi further teaches different Examples having varying amounts of both butyric acid and delta-decalactone. In Example 3, Haraguchi teaches that butyric acid is present in an amount of 40 parts by mass out of 1000 total parts by mass, which is 4% by mass, and that delta-decalactone is present in an amount of 10 parts by mass, which is 1% by mass. While still not an order of magnitude less, the amount of delta-decalactone is still significantly lower than the amount butyric acid. If the delta-decalactone were present in an amount of 9 parts by mass, which is only 1 part by mass less than what is taught in the Example, the delta-decalactone would be present in an amount which is at least an order of magnitude less than the amount of butyric acid.
As Haraguchi teaches delta-decalactone in an amount close to an order of magnitude less than butyric acid, the claimed amount is merely an obvious variant over the prior art. It would have been obvious to have the delta-decalactone be present in an amount which is at least an order of magnitude less than the amount of butyric acid depending on the desired flavor/fragrance provided by the composition. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 6, Haraguchi teaches that the butyric acid is present in an amount of 6.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the butyric acid is present in an amount of 0.6% by mass.
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass. Therefore, Haraguchi teaches that the butyric acid is in a concentration overlapping the claimed range of 104 times to 106 times that of (E)-6-nonenal.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 7, Haraguchi further teaches the composition comprising delta-decalactone (Example 1 [0021]).
Haraguchi teaches that the delta-decalactone is present in an amount of 5.0 parts by mass in Example 1 or 10 parts by mass in Example 3, with the total mass being 1000 parts by mass ([0021]). Therefore, the delta-decalactone is present in an amount of 0.5% or 1% by mass.
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass. Therefore, Haraguchi teaches that the delta-decalactone is in a concentration overlapping the claimed range of 1 to 10,000 times that of (E)-6-nonenal.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 8, Haraguchi teaches that (E)-6-nonenal is added to the composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), thus overlapping the claimed range of 0.01 ppt to 100 ppb.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claims 9-11, as stated above, Haraguchi discloses a method for producing a plant protein-containing food product, e.g. soy milk, comprising adding the flavor imparting agent comprising (E)-6-nonenal ((Example 9 of English Translation [0043]-[0044]), butyric acid, or butanoic acid, and delta-decalactone (Example 1 [0021], Example 3).
With respect to the plant protein-containing food comprising delta-decalactone in a concentration of 1 ppb to 100 ppb, Haraguchi teaches that 0.1% of the flavor composition is added to the plant protein containing food (Example 9), which results in the delta-decalactone being present in an amount of 0.000005% (0.5% of delta-decalactone present in 0.1% flavor composition), or 50 ppb, thus falling within the claimed range of 1 to 100 ppb.
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of delta-decalactone depending on the desired flavor/fragrance provided by the composition.
Regarding claim 12, as stated above, Haraguchi discloses a flavor imparting agent for a plant protein-containing food product comprising (E)-6-nonenal (Example 9 of English Translation [0043]-[0044]), butyric acid, or butanoic acid, and delta-decalactone (Example 1 [0021]).
Haraguchi teaches that (E)-6-nonenal is added to composition in an amount ranging from 50 ppt to 2 ppm ([0015], [0023]), which is 0.0000000005% to 0.0002% by mass.
Haraguchi teaches that the delta-decalactone is present in Example 1 in an amount of 5.0 parts by mass, with the total mass being 1000 parts by mass ([0021]), which is 0.5% by mass.
Therefore, Haraguchi teaches that the delta-decalactone is in a concentration higher than the claimed range of 1 to 1,000 times that of (E)-6-nonenal.
However, it would have been obvious to one of ordinary skill in the art to vary the amount of (E)-6-nonenal and delta-decalactone depending on the desired flavor/fragrance provided by the composition. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that the prior art fails to teach or suggest delta-decalactone being present in an amount which is at least an order of magnitude less than the amount of butyric acid.
This is not found persuasive. The examiner agrees that Haraguchi teaches that the delta-decalactone is present in Example 1 in an amount of 5.0 parts by mass, with the total mass being 1000 parts by mass ([0021]). Therefore, the delta-decalactone is present in an amount of 0.5% by mass, which is less than the 0.6% by mass of butyric acid, but not at least an order of magnitude less as claimed.
However, Haraguchi further teaches different Examples having varying amounts of both butyric acid and delta-decalactone. In Example 3, Haraguchi teaches that butyric acid is present in an amount of 40 parts by mass out of 1000 total parts by mass, which is 4% by mass, and that delta-decalactone is present in an amount of 10 parts by mass, which is 1% by mass. While still not an order of magnitude less, the amount of delta-decalactone is still significantly lower than the amount butyric acid. If the delta-decalactone were present in an amount of 9 parts by mass, which is only 1 part by mass less than what is taught in the Example, the delta-decalactone would be present in an amount which is at least an order of magnitude less than the amount of butyric acid.
As Haraguchi teaches delta-decalactone in an amount close to an order of magnitude less than butyric acid, the claimed amount is merely an obvious variant over the prior art. It would have been obvious to have the delta-decalactone be present in an amount which is at least an order of magnitude less than the amount of butyric acid depending on the desired flavor/fragrance provided by the composition. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791