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 .
This Office Action is in response to applicant’s submission dated June 5, 2026. Any rejections and/or objections made in previous actions and not repeated below are hereby withdrawn.
Claims 1-18 and 20-22 are pending and claim 19 is canceled. Claims 1-14 remain withdrawn and new claims 21-22 are added.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 16 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites the limitation, “the flavor is present in an amount of about 20% to about 50% w/w by weight of the microcapsule” and Claim 16 recites, “wherein the flavor is present in an amount of at least about 22% w/w by weight of the microcapsule”. The limitation of “at least 22%” is an open-ended limitation and therefore includes values outside the range of the limitation in claim 15.
Claim 22 recites the limitation, “the shell comprises faba bean protein and the faba bean protein is present in an amount of from about 10% to about 50% w/w by weight of the microcapsule” and Claim 22 recites, “wherein the shell comprises at least 15% w/w faba bean protein by the weight of the microcapsule”. The limitation of “at least 15%” is an open-ended limitation and therefore includes values outside the range of the limitation in claim 15.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 15-18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nickerson et al. (WO 2014/064591 A1).
With respect to Claim 15, Nickerson et al. teaches a microcapsule that has a core material and a shell, wherein the core material is an oil such as a flavor oil and the shell comprises a legume protein. [0010] Nickerson et al. teaches that the legume protein may be a faba bean protein. [0011] Nickerson et al. teaches that the legume protein can be incorporated into the capsule at about 3-10% w/v, [0035] the material to be encapsulated can be present between about 10-20% w/w, [0038] and teaches a specific embodiment wherein the legume protein isolate comprises 85.4% protein. [0064]
Though the specific legume protein isolate is not faba bean isolate, it would have been obvious to one of ordinary skill in the art to have substituted a faba bean protein with the same protein percentage due to the teaching of Nickerson et al. that the legume protein used can be faba bean protein. MPEP 2144.06 II states, “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art”. Additionally, the ranges of faba bean protein, flavor, and protein content of the faba bean protein all overlap with the ranges recited in the instant claim, and MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, Nickerson et al. teaches a microcapsule comprising a flavor and a shell, wherein the flavor comprises 20-50% w/w of the microcapsule, the shell comprises faba bean protein between 10-50% w/w of the microcapsule, and the faba bean protein has a protein content of at least 85% w/w of the faba bean protein. Nickerson et al. is silent to the volatile retention of the microcapsule.
Nickerson et al. teaches a microcapsule that is substantially identical to the microcapsule recited in the instant claim by way of the flavor content, faba bean protein content, and the protein content in the faba bean protein. MPEP 2112 II states, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. The microcapsule taught by Nickerson et al. would inherently possess the same volatile retention percentage due to the identical nature of the microcapsule taught.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Nickerson et al. to have devised a microcapsule, with at least 80% volatile retention, comprising a flavor and a shell, wherein the flavor is incorporated into the microcapsule between 20-50% w/w, the shell comprises a faba protein between 20-50% w/w of the microcapsule, and the faba bean protein is 85% protein, thereby rendering claim 15 obvious.
With respect to Claim 16, Nickerson et al. teaches the invention recited in claim 15, as described above. Nickerson et al. teaches the flavor is present in the capsule up to 20%, [0038] and 20% is about 22%. MPEP 2144.05 I states, “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”, and 20% is close to about 22%. Additionally, the difference between 20 and 22%, or any amount greater or less than the recited amount is simply the results of routine optimization. MPEP 2144.05 II states, “[W]here 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”. The determination of the optimal amount of flavor through the process of routine experimentation would not have provided unexpected results, as one of ordinary skill in the art would have been motivated to determine the best flavor profile for a composition comprising the invention recited. Therefore, Nickerson et al. renders obvious the invention recited in claim 16.
With respect to Claim 17, Nickerson et al. teaches the invention recited in claim 15, as described above. Additionally, Nickerson et al. teaches the invention can be incorporated into food products. [0039] Therefore, Nickerson et al. renders obvious the invention recited in claim 17.
With respect to Claim 18, Nickerson et al. teaches the invention recited in claim 17, as described above. Nickerson et al. is silent to the flavor intensity scores of the microcapsule composition as compared to an iso-active flavored product without the microcapsule.
According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”. Despite the silence to the flavor intensity score of the capsule, MPEP 2112 I states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”. Therefore, the invention taught by Nickerson et al. would possess the same properties of the claimed invention, including flavor intensity with respect to a flavored product without the microcapsule.
With respect to Claim 20, Nickerson et al. teaches the invention recited in claim 17, as described above. Additionally, the amount of encapsulated material incorporated into the food product can be less than 10%. [0041] MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Therefore, Nickerson et al. renders claim 20 obvious.
With respect to Claim 21, Nickerson et al. teaches the invention recited in claim 15, as described above. Nickerson et al. teaches the use of modified maltodextrin (i.e., modified food starch) in the formation of the microcapsule [0031] and the use of HCl to control the pH of the protein isolate in the microcapsule. [0081] The instant specification discloses modified food starch as an acceptable emulsifier, [Pg. 14, Ln. 25-26] and HCl is a known acidulant. Therefore, Nickerson et al. renders claim 21 obvious.
With respect to Claim 22, Nickerson et al. teaches the invention recited in claim 15, as described above. Additionally, Nickerson et al. teaches that the legume protein can be incorporated into the capsule at about 3-10% w/v. [0035] Though the range taught in Nickerson et al. is not within the range recited by the instant claim, MPEP 2144.05 II states, “[W]here 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”. The amount of at least 15% are the results of routine experimentation, and therefore, it would have been obvious to determine the optimal amount of protein to use in the microcapsule using the teaching of Nickerson et al.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Nickerson et al. to have devised the invention recited in claim 15, wherein the legume protein comprises at least 15% of the microcapsule, thereby rendering claim 22 obvious.
Response to Arguments
Applicant's arguments filed September 25, 2026 have been fully considered but they are not persuasive.
Applicant asserts on Page 3, with respect to the 103 rejection over Nickerson et al. that, “Nickerson et al. fails to teach or suggest the features of Claim 15”.
Examiner disagrees, citing the above rejection, wherein examiner explains that Nickerson et al. teaches a microcapsule that has a core material and a shell, wherein the core material is an oil such as a flavor oil and the shell comprises a legume protein. [0010] Nickerson et al. teaches that the legume protein may be a faba bean protein. [0011] Nickerson et al. teaches that the legume protein can be incorporated into the capsule at about 3-10% w/v, [0035] the material to be encapsulated can be present between about 10-20% w/w, [0038] and teaches a specific embodiment wherein the legume protein isolate comprises 85.4% protein. [0064]
Though the specific legume protein isolate is not faba bean isolate, it would have been obvious to one of ordinary skill in the art to have utilized a faba bean protein in the same protein percentage due to the teaching of Nickerson et al. that the legume protein used can be faba bean protein. MPEP 2144.06 II states, “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art”. Additionally, the ranges of faba bean protein, flavor, and protein content of the faba bean protein all overlap with the ranges recited in the instant claim, and MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”.
Therefore, Nickerson et al. clearly suggests a microcapsule comprising a flavor and a shell, wherein the flavor comprises 20-50% w/w of the microcapsule, the shell comprises faba bean protein between 10-50% w/w of the microcapsule, and the faba bean protein has a protein content of at least 85% w/w of the faba bean protein. Nickerson et al. is silent to the volatile retention of the microcapsule.
Nickerson et al. teaches a microcapsule that is substantially identical to the microcapsule recited in the instant claim by way of the flavor content, faba bean protein content, and the protein content in the faba bean protein. MPEP 2112 II states, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. The microcapsule taught by Nickerson et al. would inherently possess the same volatile retention percentage due to the identical nature of the microcapsule taught.
For this reason, applicant’s assertion is found to be unpersuasive, and the rejection of claims 15-18 and 20-22 are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki 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.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
