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 .
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 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 of this title, 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.
Claims 1, 3-5, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kortes US 2011/0200707 (cited on Information Disclosure Statement filed November 14, 2023) in view of McMindes et al. US 2008/0254167.
Regarding Claim 1, Kortes discloses a fish flavor product (‘707, Paragraph [0001]) comprising a flavor comprising a polyunsaturated fatty acid (‘707, Paragraphs [0007]-[0008]) wherein the flavor comprising the polyunsaturated fatty acid is a process flavor (incubated at elevated temperatures of less than 260°C) (‘707, Paragraph [0009]). Applicant defines the term “process flavor” as meaning a thermally reacted product (Specification, Page 1, lines 30-32). Therefore, the composition comprising the polyunsaturated fatty acid at an incubating temperature above 100°C and a reaction time sufficient for the fish flavor to develop (‘707, Paragraphs [0009] and [0021]) reads on the claimed “process flavor” in view of applicant’s definition of the term “process flavor” to mean a thermally reacted product. The fish flavor product also comprises a yeast extract (‘707, Paragraph [0023]). The polyunsaturated fatty acid is oxidized (‘707, Paragraph [0025]).
Kortes is silent regarding the yeast extract comprising 5’-ribonucleotides.
McMindes et al. discloses a fish flavor product (‘167, Paragraph [0043]) comprising a process flavor (heated, precooked seafood meat) (‘167, Paragraph [0144]) comprising a polyunsaturated fatty acid (docosahexanenoic acid) (‘167, Paragraph [0134]) and a yeast extract comprising 5’-ribonucleotides of flavoring enhancers (‘167, Paragraph [0119]).
Both Kortes and McMindes et al. are directed towards the same field of endeavor of fish flavor products comprising a heated process flavor comprising a polyunsaturated fatty acid and a yeast extract. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fish flavor product of Kortes and incorporate 5’-ribonucleotides into the yeast extract as taught by McMindes et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). McMindes et al. teaches that there was known utility in the food art to incorporate 5’-ribonucleotides into a yeast extract of a fish flavor food product as a flavor enhancer ingredient.
Regarding Claim 3, McMindes et al. discloses the fish flavor product comprising vitamin C (‘167, Paragraph [0131]). Both Kortes and McMindes et al. are directed towards the same field of endeavor of fish flavor products comprising a heated process flavor comprising a polyunsaturated fatty acid and a yeast extract. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fish flavor product of Kortes and incorporate 5’-ribonucleotides into the yeast extract as taught by McMindes et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). McMindes et al. teaches that there was known utility in the food art to incorporate vitamin C into fish flavor food products.
Regarding Claim 4, McMindes et al. discloses the amount of yeast extract comprising 5’-ribonucleotides being about 10% by weight of the fish flavor product (‘167, Paragraph [0119]), which overlaps the claimed amount of yeast extract comprising 5’ ribonucleotides of between 10 and 80% w/w of the fish flavor product. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the concentration of yeast extract containing 5’-ribonucleotides within the fish flavor product of Kortes to fall within the claimed concentration of yeast extract containing 5’-ribonucleotides as taught by McMindes et al. since where the claimed yeast extract comprising 5’-ribonucleotide ranges overlaps ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the concentration of yeast extract containing 5’-ribonucleotides within the fish flavor product of Kortes will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of yeast extract containing 5’-ribonucleotides within the fish flavor product 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.04.II.A.). One of ordinary skill in the art would adjust the yeast extract containing 5’-ribonucleotide concentration within the fish product of Kortes based upon the desired flavor profile of the fish flavored product as taught by McMindes et al. (‘167, Paragraph [0119]).
Further regarding Claim 4, the limitations “the amount of process flavour is between 30 and 70% w/w of the fish flavor product” are optional limitations by virtue of the phrase “and/or” and since the prior art renders obvious the limitations preceding the phrase “and/or.”
Regarding Claim 5, Kortes discloses the fish flavor product being a powder (‘707, Paragraphs [0016] and [0018]). McMindes et al. discloses the moisture content of the protein containing materials varying depending upon the extrusion process and the moisture content ranging from about 1% to about 80% by weight and that in low moisture extrusion applications the moisture content of the protein containing materials ranging from about 1% to about 35% by weight (‘167, Paragraph [0065]) and the final moisture content of the product varying depending on the intended application (‘167, Paragraphs [0098]-[0099]). It would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the dry matter content of the powder to be homogenous at a level of more than 90%, i.e. have a 10% moisture content, since differences in the dry matter content/moisture content of the food product will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such dry matter content/moisture content 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.04.II.A.). One of ordinary skill in the art would adjust the dry matter content/moisture content of Kortes based upon the intended application of the food product as taught by McMindes et al.
Further regarding Claim 5, the limitations “having an amount of sodium chloride of less than 10%” are optional limitations by virtue of the phrase “and/or” and since the prior art renders obvious the limitations preceding the term “and/or.” Nevertheless, differences in the sodium chloride content of the food product will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such sodium chloride content 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.04.II.A.). One of ordinary skill in the art would adjust the dry matter content/moisture content of Kortes based upon the desired saltiness levels of the fish flavor product.
Regarding Claim 16, Kortes discloses the fish flavor product being in the form of a powder (‘707, Paragraphs [0016] and [0018]), which reads on the claimed powder particles.
Further regarding Claim 16, the limitations “wherein the process flavor and the yeast extract comprising 5’-ribonucleotides are separate powder particles” are product by process claims. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.).
Regarding Claim 17, Kortes discloses the yeast extract being a dried yeast extract (‘707, Paragraph [0031]). McMindes et al. discloses the yeast extract comprising 5’-ribonucleotides (‘167, Paragraph [0119]). Kortes modified with McMindes et al. does not disclose the yeast extract comprising free asparagine. Therefore, Kortes discloses the yeast extract comprising an amount of free asparagine of 0 mg/g based on dry matter of the yeast extract. Applicant discloses the yeast extract comprising 5’-ribonucleotides comprising an amount of free asparagine based on dry matter which is not higher than 1 mg/g of the yeast extract which low amount of asparagine results in no acrylamide being formed during the Maillard reaction (Specification, Page 2, lines 33-37). Since Kortes modified with McMindes et al. also teaches the yeast extract to be free of free asparagine, one of ordinary skill in the art would expect the yeast extract of Kortes modified with McMindes et al. to not be reacted.
Regarding Claim 18, McMindes et al. discloses the fish flavor product comprising flavor enhancers of 5’-ribonucleotide salts (‘167, Paragraph [0119]). Although Kortes modified with McMindes et al. does not explicitly disclose the concentration of flavor enhancer of 5’-ribonucleotides being present in the yeast extract in an amount from 25 to 55 wt% 5’-ribonucleotides based on the dry weight of the yeast extract, differences in the concentration of 5’-ribonucleotides will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of 5’-ribonucleotides 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of 5’-ribonucleotides present in the yeast extract of Kortes based upon the desired flavor enhancer intensity imparted by the 5’-ribonucleotide salts as suggested by McMindes et al.
Regarding Claim 19, Kortes discloses the fish flavor product comprising yeast extract (‘707, Paragraph [0023]). McMindes et al. discloses the fish flavor product comprising 5’-ribonucleotide salts (‘167, Paragraph [0119]). Kortes modified with McMindes et al. does not disclose the yeast extract comprising free asparagine. Therefore, Kortes discloses the yeast extract comprising an amount of free asparagine of 0 mg/g based on dry matter of the yeast extract, which falls within the claimed amount of free asparagine not higher than 1 mg/g based on dry matter of the yeast extract.
Regarding Claim 20, Kortes does not disclose or suggest using any gluten. Therefore, Kortes discloses the fish flavor product comprising 0 ppm gluten based on dry matter of the fish flavor product, which falls within the claimed amount of gluten of less than 100 ppm based on dry matter of the fish flavor product. Additionally, McMindes et al. discloses an embodiment of the fish flavor product being made with starting materials that are gluten free (‘167, Paragraph [0033]), which also discloses the fish flavor product comprising 0 ppm gluten based on dry matter of the fish flavor product, which falls within the claimed amount of gluten of less than 100 ppm based on dry matter of the fish flavor product.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kortes US 2011/0200707 (cited on Information Disclosure Statement filed November 14, 2023) in view of McMindes et al. US 2008/0254167 as applied to claim 1 above as further evidenced by Noordam et al. US 2010/0183767.
Regarding Claim 2, Kortes discloses the fish flavor product comprising a yeast autolysate (‘707, Paragraph [0023]). Noordam et al. provides evidence that it was known in the food art that yeast autolysates used in food applications (‘767, Paragraph [0001]) necessarily contains yeast cell walls (‘767, Paragraphs [0004] and [0035]).
Claims 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kortes US 2011/0200707 (cited on Information Disclosure Statement filed November 14, 2023) in view of McMindes et al. US 2008/0254167 as applied to claim 1 above in further view of Kortes et al. US 2008/0317904 (herein referred to as “Kortes et al. ‘904”).
Regarding Claim 16, Kortes modified with McMindes et al. renders obvious the product by process limitations of Claim 16 as enumerated in the rejection of Claim 16 above. However, in the event that it can be shown that the product by process limitations necessarily results in a fish flavor product having different properties, Kortes ‘904 discloses a fish flavor product (‘904, Paragraph [0020]) comprising a process flavor (‘904, Paragraph [0001]) and a yeast extract comprising 5’-ribonucleotides (‘904, Paragraph [0013]) wherein the process flavor is a separate powder particle (dried process flavor) (‘904, Paragraph [0072]) from the yeast extract powder particles (‘904, Paragraph [0021]).
Both Kortes and Kortes ‘904 are directed towards the same field of endeavor of fish flavor products. Both fish flavor products of Kortes and Kortes ‘904 comprise a process flavor and a yeast extract. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fish flavor product of Kortes and have the process flavor and the yeast extract comprising 5’-ribonucleotides are separate powder particles since Kortes ‘904 teaches that there was known utility in the food art to make a fish flavor product from a process flavor and a yeast extract that are separate powder particles that are later combined together.
Regarding Claim 20, Kortes does not disclose or suggest using any gluten. Therefore, Kortes discloses the fish flavor product comprising 0 ppm gluten based on dry matter of the fish flavor product, which falls within the claimed amount of gluten of less than 100 ppm based on dry matter of the fish flavor product. Additionally, McMindes et al. discloses an embodiment of the fish flavor product being made with starting materials that are gluten free (‘167, Paragraph [0033]), which also discloses the fish flavor product comprising 0 ppm gluten based on dry matter of the fish flavor product, which falls within the claimed amount of gluten of less than 100 ppm based on dry matter of the fish flavor product.
Further regarding Claim 20, Kortes ‘904 discloses a yeast extract with an amount of free asparagine based on dry matter of not higher than 1 mg/g (‘904, Paragraph [0012]), which encompasses the claimed amount of free asparagine not higher than 1 mg/g based on dry matter of the yeast extract.
Both Kortes and Kortes ‘904 are directed towards the same field of endeavor of fish flavor products. Both fish flavor products of Kortes and Kortes ‘904 comprise a process flavor and a yeast extract. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fish flavor product of Kortes and adjust the amount of free asparagine to not be higher than 1 mg/g based on dry matter of the yeast extract as taught by Kortes ‘904 since where the claimed free asparagine concentration ranges based on the dry weight of the yeast extract overlaps free asparagine concentration ranges disclosed in the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kortes US 2011/0200707 (cited on Information Disclosure Statement filed November 14, 2023) in view of McMindes et al. US 2008/0254167 as applied to claim 1 above in further view of Arnaudov et al. US 2021/0298324.
Regarding Claim 18, Kortes modified with McMindes et al. renders obvious the limitations with respect to the claimed concentration of 5’-ribonucleotides of the yeast extract based on the dry weight of the yeast extract as enumerated in the rejection of Claim 18 above. However, in the event that it can be shown with objective evidence that the claimed concentration of 5’-ribonucleotides within the yeast extract is critical, Arnaudov et al. discloses a food product comprising yeast extract or fish extract comprising an added savory taste (‘324, Paragraph [0063]) wherein the savoury taste is 1-50 wt% 5’-ribonucleotides to impart the savoury taste to the food product (‘324, Paragraph [0080]), which overlaps the claimed concentration of 5’-ribonucleotides of from 25 to 55 wt% based on the dry weight of the yeast extract.
Both modified Kortes and Arnaudov et al. are directed towards the same field of endeavor of food products comprising yeast extract. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the food product containing yeast extract to have 5’-ribonucleotides in the claimed concentration based on the dry weight of the yeast extract as taught by Arnaudov et al. since where the claimed 5’-ribonucleotide concentration ranges based on the dry weight of the yeast extract overlaps 5’-ribonucleotide concentration ranges disclosed in the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). One of ordinary skill in the art would adjust the concentration of 5’-ribonucleotides of the yeast extract of modified Kortes based upon the desired degree of savoury taste imparted to the food product as taught by Arnaduov et al.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kortes US 2011/0200707 (cited on Information Disclosure Statement filed November 14, 2023) in view of McMindes et al. US 2008/0254167 as applied to claim 1 above in further view of Jolivet et al. US 2021/0076722.
Regarding Claim 18, Kortes modified with McMindes et al. renders obvious the limitations with respect to the claimed concentration of 5’-ribonucleotides of the yeast extract based on the dry weight of the yeast extract as enumerated in the rejection of Claim 18 above. However, in the event that it can be shown with objective evidence that the claimed concentration of 5’-ribonucleotides within the yeast extract is critical, Jolivet et al. discloses a yeast extract comprising from 25 to 55 wt% 5’-ribonucleotides (‘324, Paragraph [0018]), which overlaps the claimed concentration of 5’-ribonucleotide concentration of 25 to 55 wt% 5’-ribonucleotides based on the dry weight of the yeast extract. Jolivet et al. further discloses the concentration to be useful to mask bitter and sour tastes and undesirable sweetener, protein, and metallic aromatic notes in a product (‘324, Paragraph [0018]).
Both modified Kortes and Jolivet et al. are directed towards the same field of endeavor of yeast extracts. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the food product of modified Kortes and incorporate 5’-ribonucleotides in the claimed concentration of the yeast extract based on the dry weight of the yeast extract as taught by Jolivet et al. since where the claimed yeast extract comprising 5’-ribonucleotide ranges overlaps ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the concentration of yeast extract containing 5’-ribonucleotides within the fish flavor product of Kortes will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of yeast extract containing 5’-ribonucleotides within the fish flavor product 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.04.II.A.). One of ordinary skill in the art would adjust the yeast extract containing 5’-ribonucleotide concentration within the fish product of Kortes based upon the desired degree of masking bitter and sour tastes and undesirable sweetener, protein, and metallic aromatic notes in a product as taught by Jolivet et al. (‘324, Paragraph [0018]).
Response to Arguments
Applicant's arguments filed March 9, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 6 of the Remarks that Kortes teaches preventing oxidation of the polyunsaturated fatty acid and that Kortes teaches that the fish oil used in the process “may comprise additional ingredients, for example stabilisers such as sodium ascorbate and tocopherols. Applicant contends that sodium ascorbate and tocopherols are well known antioxidants and alleges that Kortes seeks to prevent oxidation of the polyunsaturated fatty acid starting material. Applicant continues that Kortes teaches using an extruder may result in a stable fish flavor and that oxidation may result in a rancid off flavor. Applicant concludes that Kortes teaches that the glassy state stabilizes the product against oxidation and oxidation is undesirable because it may result in a rancid off flavor and that Kortes does not teach a process flavor comprising an oxidized polyunsaturated fatty acid and teaches preventing oxidation at every stage of the process.
Examiner argues applicant points to an embodiment of a fish flavor product may comprise additional ingredients, for example, stabilisers such as sodium ascorbate and tocopherols (‘707, Paragraph [0018]) and a specific example in which sodium ascorbate and tocopherols are included in the fish flavor product (‘707, Paragraph [0031]). However, this particular embodiment is not cited to or relied upon in the rejection. The phrases “may comprise” and “for example” indicate that the disclosure of stabilizers including sodium ascorbate and tocopherols are exemplary embodiments of the prior art. Disclosed examples and preferred embodiments do not constitutes a teaching away from a broader disclosure or nonpreferred embodiments in view of In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123.II.). The Office Action does not rely upon the particular embodiments disclosed Furthermore, applicant admits that the process flavor means a thermally reacted product and the process flavor comprises an algal oil comprising oxidized polyunsaturated fatty acids wherein the process flavor is as disclosed in WO 2010/046313 (Specification, Page 2, lines 30-37). WO 2010/046313 has an equivalent US PGPUB of Kortes US 2011/0200707, which is the primary reference relied upon herein. Applicant admits that the process flavor is as disclosed in WO 2010/046313, which is equivalent to the primary reference of Kortes US 2011/0200707 relied upon herein. Therefore, this argument is not found persuasive. Furthermore, the primary reference of Kortes discloses the fish flavor product comprising a polyunsaturated fatty acid (‘707, Paragraphs [0007]-[0008]) that is oxidized (‘707, Paragraph [0025]) wherein the polyunsaturated fatty acid is an omega-3 polyunsaturated fatty acid (‘707, Paragraph [0017]). Claim 1 does not specify the particular temperature at which the process flavor is heated. Claim 1 also does not recite the degree of oxidation that occurs. Kortes discloses the fatty acid to be eicosapentaenoic acid (EPA) and/or docosahexaenoic acid (DHA) (‘707, Paragraph [0018]). Ismail “Oxidation in EPA and DHA rich oils: an overview” (published 2016) discloses all lipids containing unsaturated fatty acids oxidize over time such as fish oil capsules (Ismail, Page 55). Ismail establishes that all lipids containing unsaturated fatty acids are capable of oxidizing. Furthermore, Terp et al. US 2016/0316810 discloses an oxidizable oil comprising fish oil containing an omega-3 polyunsaturated fatty acid (‘810, Paragraph [0007]). The claims do not specify any particular process conditions, e.g. heating temperature and/or degree of oxidation of the claimed oxidized term recited in Claim 1. Therefore, this argument is not found persuasive.
Applicant argues on Pages 6-7 of the Remarks that Example 1 of Kortes describes a yeast extract but does not disclose 5’-ribonucleotides.
Examiner argues the secondary reference of McMindes et al. is being relied upon to teach the limitations regarding the 5’-ribonucleotides. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). These arguments do not argue the propriety of the combination of Kortes modified with McMindes et al. Therefore, this argument is not found persuasive.
Applicant argues on Pages 7-8 of the Remarks that McMindes lists “yeast extract” as a flavoring agent and separately lists “5’-ribonucelotide salts” as a flavor enhancer and are disclosed to be separate ingredients to be added independently to a seafood meat composition and not as a single component where the yeast extract itself contains 5’-ribonucleotides and that Claim 1 requires a yeast extract comprising 5’-ribonucelotides wherein the yeast extract inherently contains 5’-ribonucleotides as part of its composition.
Examiner argues McMindes et al. discloses the fish flavor product comprising the combination of yeast extract and 5’-ribonucleotides (‘167, Paragraph [0119]). The fish flavor product would contain the combination of yeast extract and 5’-ribonucleotides. Furthermore, the primary reference of Kortes teaches the composition comprising a yeast extract and/or yeast autolysate (‘707, Paragraph [0023]). Noordam et al. US 2010/0183767 provides evidence that it was known in the food art that yeast autolysates can contain 5’-ribonucleotides (‘767, Paragraph [0033]). Therefore, this argument is not found persuasive. Furthermore, Charpentier et al. “Release of Nucleotides and Nucleosides during Kinetics and Potential Impact on Flavor” (published March 26, 2005) teaches that it was known in the food art that 5’-nucelotides are a component of yeast extract (Charpentier, Page 3000).
Applicant argues on Page 8 of the Remarks that Noordam is directed to yeast autolysates and not yeast extracts. Applicant contends that Noordam is not the same as a yeast extract wherein a yeast extract comprises water soluble components of the yeast cell whereas yeast extract is produced through the hydrolysis of peptide bonds by the naturally occurring enzymes present in edible yeast or by the addition of food grade enzymes.
Examiner argues Noordam is being relied upon merely as an evidentiary reference with respect to Claim 2 to provide evidence that it was known in the food art that yeast autolysates used in food applications (‘767, Paragraph [0001]) necessarily contains yeast cell walls (‘767, Paragraphs [0004] and [0035]). The primary reference of Kortes teaches the composition comprising a yeast extract and/or yeast autolysate (‘707, Paragraph [0023]), which envisages an embodiment wherein both a yeast extract and a yeast autolysate are both present in the food composition. Claim 2 recites a yeast autolysate, which is already taught by the primary reference of Kortes. Therefore, this argument is not found persuasive.
Applicant argues on Pages 9-10 of the Remarks that the Office has not established a proper motivation to combine the references to arrive at the claimed invention. Applicant contends that Kortes is directed to a process for producing a product having a fish flavor that is highly concentrated, i.e. very strong such that adding small amounts of fish flavor to food or feed may already be sufficient to provide a desired fish flavor and that Kortes is directed to a flavoring product, a concentrated ingredient added to food to impart fish flavor. Applicant continues that McMindes is directed to a fundamentally different product of a seafood meat composition and simulated seafood meat composition comprising structured protein products with protein fibers that are substantially aligned along with other ingredients. Applicant continues that McMindes focuses of texture of structured protein products with substantially aligned protein fivers and that flavoring agents and flavor enhancers in McMindes including yeast extract and 5’-ribonucleotide salts are merely optional additional ingredients to enhance the flavor of the final food product. Applicant contends that a person of ordinary skill in the art seeking to develop a fish flavor product as claimed would not look to McMindes that focuses on texture and fiber alignment in seafood meat compositions for guidance on flavor formulation.
Examiner argues Claim 1 does not specify any particular concentration of fish flavor or any particular protein fibers or any particular fiber alignment. Applicant argues limitations that are not commensurate in scope with the claimed invention. With respect to applicant’s contention that McMindes teaches optional additional ingredients of yeast extract and 5’-ribonucleotide salts to enhance the flavor of the final food product, applicant admits that the optional ingredients are embodiments taught by McMindes. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art including nonpreferred embodiments in view of Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP § 2123.I.). Both Kortes and McMindes et al. are directed towards the same field of endeavor of fish flavor products comprising a heated process flavor comprising a polyunsaturated fatty acid and a yeast extract as claimed. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fish flavor product of Kortes and incorporate 5’-ribonucleotides into the yeast extract as taught by McMindes et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). McMindes et al. teaches that there was known utility in the food art to incorporate 5’-ribonucleotides into a yeast extract of a fish flavor food product as a flavor enhancer ingredient. Therefore, this argument is not found persuasive.
Applicant argues on Pages 10-11 of the Remarks that the claimed invention allegedly achieves unexpected results. Applicant points to the specification that explains the problem addressed by the invention that fish analogues become abundantly available following the increasing need in the market for vegetarian products wherein plant products provide a fish flavor that is perceived as real fish and plant protein is known to introduce off notes to the fish analogue product and there is a need in the art for flavor products and fish analogue product wherein the off notes from the plant protein are masked. Applicant points to Example 2 of applicant’s Specification as allegedly providing experimental evidence demonstrating the unexpected masking effect that the results are that the control fish analogue has a rice TVP note which is masked in the improved fish analgoues. Example 3 demonstrates that the results are that the control fish analogue has a soy TVP note masked in the improved fish analogues. Example 4 demonstrates that the results are that the control fish analogue has a soy TVP note which is masked in the improved fish analogues.
Examiner argues it is unclear how the alleged “masked” notes in Tables 2-4 were evaluated and/or measured. It is unclear from the data in Tables 2-4 how the fishy profile and/or fishy aroma are calculated and measured. Arguments presented by the applicant cannot take the place of evidence in the record in view of In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (MPEP § 716.01(c).II.). Therefore, this argument is not found persuasive. Furthermore, it is noted that Claim 18 recites a specific concentration of 5’-ribonucleotides based on the dry weight of the yeast extract. One of the rejections of Claim 18 relies upon Jolivet et al., which teaches masking bitter and sour tastes of a yeast extract by adjusting the concentration of 5’-ribonucleotides used (‘722, Paragraph [0018]).
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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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, Erik Kashnikow can be reached at 571-270-3475. 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.
/ERICSON M LACHICA/Examiner, Art Unit 1792
Prosecution Insights