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 .
Response to Restriction Requirement
Applicant’s election without traverse of Group I in the reply filed on November 24, 2025 is acknowledged.
Claims 7-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 24, 2025.
Claims
Claim Rejections - 35 USC § 102 - Anticipation
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1) Claims 1-2, 4-6 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenway et al. (US 20180344685).
Greenway et al. disclose a composition comprising a combination of menthol and naringenin. The menthol can also be derived from natural sources, such as a mint plant or sunflower essential oil (paragraph 0042).
The menthol may be derived from natural sources, which primarily comprise (-)-menthol.
In regards to the composition being a coolness-modifying composition, the composition comprises a flavanone and therefore would have the function of being a coolness-modifier.
Therefore Greenway et al. anticipate the instant claims.
2) Claims 1-6 and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 6732023 (2020-07-29).
JP 6732023 disclose flavoring substances comprising phloretin and another flavoring substance. The substance further comprises naringenin. Mixtures of phloretin and other flavonoids such as naringenin are used, for example, to positively influence the absorption of flavonoids in the intestinal tract. The flavoring substance include menthol. The examples comprise a mixture of phloretin and naringenin (see Examples).
In regards to claims 5-6, JP 6732023, specifically lists menthol. Therefore one can at once envisage menthol with a mixture of phloretin and naringenin. See MPEP 2131.02,III.
In regards to the composition being a coolness-modifying composition, the composition comprises a flavanone and/or dihydrochalcone and therefore would have the function of being a coolness-modifier.
Therefore JP 6732023 anticipates the instant claims.
Claim Rejections - 35 USC § 103 - Obviousness
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over JP 6732023 (2020-07-29).
JP 6732023 discloses flavoring substances comprising phloretin and another flavoring substance. The substance further comprises naringenin. Mixtures of phloretin and other flavonoids such as naringenin are used, for example, to positively influence the absorption of flavonoids in the intestinal tract. The flavoring substance include menthol. The examples comprise a mixture of phloretin and naringenin (see Examples).
It is believed that JP 6732023 anticipates the instant claims. However, purely arguendo and for the purposes of this rejection, JP 6732023 differs from the instant claims insofar as it does not exemplify a compositions comprising phloretin and/or naringenin with menthol.
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. However, it would have been obvious to one of ordinary skill in the art to have added menthol to the composition of JP 6732023 because it is suggested by JP 6732023 and because it is a suitable flavoring agent for the disclosed compositions.
Claims 1-6 and 20-21 are rejected.
Claims 7-18 are withdrawn.
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEZAH ROBERTS/ Primary Examiner, Art Unit 1612