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 1, 2026. Any rejections and/or objections made in previous actions and not repeated below are considered withdrawn.
Claims 1-12, 14, and 16-24 are pending, and claims 1-4, 9-12, 14, 16, and 21-24 remain withdrawn.
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 5-8 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ley et al. (US 2008/0242740 A1).
With respect to Claims 5-8, Ley et al. teaches the compound of formula (II), 4, [0071] represented below.
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Ley et al. teaches the compound is known as phloretin, [0068] and can be deprotonated at several positions using sodium or potassium. [0069-70] Additionally, Ley et al. teaches this compound is for use in flavor modification. [0206] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, that, given the finite number of positions that can be deprotonated by the salt cations of sodium and potassium, a disodium or dipotassium salt of phloretin is rendered obvious by the teaching of Ley et al., as recited in claims 5-8.
With respect to Claims 17 and 18, Ley et al. teaches phloretin can be incorporated into a composition for enhancing sweetness. [0206] Therefore, Ley et al. renders obvious the invention recited in claims 17 and 18.
With respect to Claims 19 and 20, Ley et al. teaches phloretin can be incorporated into a composition for enhancing sweetness. [0206] Additionally, Ley et al. teaches the use of bitter sweeteners in the composition. [0108] Therefore, Ley et al. renders obvious the invention recited in claims 19 and 20.
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant asserts on Page 6, Line 25, that “Phloretin is known to exhibit stability issues, especially in aqueous environments” and cites Hu “Preparation and characterization of phloretin by complexation with cyclodextrins”. Applicant continues on Lines 29-31, that “Examples 3 and 4 of the present application, aqueous solutions of the claimed compounds ‘could be stored for several days at room temperature under nitrogen without any significant change’”. Applicant concludes on Page 7, Line 1, that one of ordinary skill in the art “would not have reasonably expected the claimed compounds to exhibit improved aqueous stability”.
Applicant is directed MPEP 2145 VI, which states “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.” The limitation of the stability of the composition in an aqueous solution is not recited in the instant set of claims, and is therefore not germane. Additionally, Ley et al. does not teach a composition that exists solely in an aqueous environment, and in some embodiments the composition would exist in a fat, wax, or protein matrix. [0168]
For these reasons, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 7, Lines 20-22, that “Applicant respectfully submits that the dependent claims incorporate by reference all the limitations of the claims to which they refer and include their own patentable features and are therefore in condition for allowance”.
Applicant’s assertions are found to be unpersuasive due to the rejection of the independent claim from which the remaining claims depend is maintained. For this reason, and those enumerated above, the rejection of claims 5-8 and 17-20 are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hu et al. (Preparation and characterization of phloretin by complexation with cyclodextrins, New Journal of Chemistry), study of phloretin was presented by applicant in assertions, but not made of record.
THIS ACTION IS MADE FINAL. 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.
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, 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
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