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 .
Election/Restrictions
Applicant’s election of Group I (e.g., claims 1-2), and Species I, (e.g., a masking flavorant comprising isovaleric acid, phenethyl alcohol and a lactone) in the reply filed on 12/16/2025 is acknowledged. Claims 3-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim status
The examiner acknowledged the amendment made to the claims on 12/16/2025.
Claims 1-17 are pending. Claims 1-2 are previously presented. Claims 3-17 are withdrawn without traverse in response to the restriction requirement (see “Election/Restrictions” above). Claims 1-2 are hereby examined on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 are rejected under 35 USC 101 because the claimed invention is directed to a natural product without significantly more. The claims recite a composition (e.g., a masking flavorant) which is a mixture of isovaleric acid, phenethyl alcohol and lactones. However, each of the isovaleric acid, phenethyl alcohol and lactones is naturally occurring. For example, Takashima JP2020156343 A evidences that isovaleric acid is a naturally occurring fatty acid found in Valeriana plants (see [0002] of the English description); Sano JP 2016112014 A evidences that phenethyl alcohol (e.g., 2-phenyethyl alcohol) is widely found in nature (see page 20), and Sartori, “Lactones: classification, synthesis, biological activities, and industrial applications”, Tetrahedron, 2021, 84, 132001 evidences that lactones are abundant in nature (see “Introduction”). Further, there is no record establishing that the mixture as claimed has any characteristics that are different from the naturally occurring isovaleric acid, phenethyl alcohol and lactones. This judicial exception is not integrated into a practical application because the recitation of the intended use as a masking flavorant does not impart material characteristics to the composition. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because although the claims recite a ratio of the compounds, there is no record showing the ratio amounts to more than the combination of naturally occurring compounds.
Claim Rejections - 35 USC § 103
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Takashima JP2020156343 A (cited in the IDS submitted 12/13/2023, English translation of the disclosure relied upon for reference, hereinafter “Takashima”) in view of Varadan WO 2015/153666 A1 (cited in the IDS submitted 12/13/2023, hereinafter “Varadan”).
Regarding claims 1-2, Takashima teaches a flavorant (e.g., seasoning) composition that comprises isovaleric acid and phenethyl alcohol (0009; 0035), and the seasoning composition is obtained by fermentation of a yeast, or a yeast and a lactic acid bacterial (0009). Further, Takashima teaches that the composition is used for enhancing meat flavor and masking an unpleasant flavor of plant protein (0043). Takashima teaches that food that uses vegetable proteins usually lacks a satisfying meat flavor, but the seasoning composition that comprises isovaleric acid makes it possible to make such food taste rich and umami (0044). Takashima further teaches that the seasoning composition can mask the grassy and beany taste of soybean protein, or processed food that uses soy protein (0045).
Takashima is silent regarding that the seasoning composition further comprises lactones, or the weight ratio of lactones/(isovaleric acid + phenethyl alcohol) as recited in instant claim 1.
Varadan in the same field of endeavor teaches that lactones can be used to increase meat flavor or masking off-flavor associated with plant materials in a food product such as a meat replica (page 8, line 24- page 9, line 6). Varadan makes a mention of soybean protein as the plant materials (page 15, line 26- page 16, line 3).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Takashima by combing the seasoning composition that comprises isovaleric acid and phenethyl alcohol as disclosed by Takashima with the lactones as disclosed by Varadan with reasonable expectation of success, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06. In the instant case, prior art has established both the seasoning composition that comprises isovaleric acid and phenethyl alcohol, and lactones could increase meat flavor or masking off-flavor associated with plant protein thus one of the ordinary skill in the art would have combined the two to form a composition used for the same purpose.
On the ratio of lactone/(isovaleric acid and phenethyl alcohol) as recited in claim 1, Takashima as modified by Varadan does not expressly teach the ratio, however, one of ordinary skill in the art would have been motivated to manipulate the mixing ratio of the seasoning composition with the lactones such that the new composition could efficiently serve the intended purpose of enhancing meat flavor and masking an unpleasant flavor of plant protein in a food. Note that claims recites a very broad ratio in which the upper bound is 10,000 time of the lower bound.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Veronique WO 2021/191541 A1 (English translation relied upon for reference, hereinafter “Veronique”).
Regarding claim 1, Veronique teaches a hydroalcoholic composition for improving the organoleptic quality of a beverage such as wine, cognac, whiskey, and rum (0003; 0025), the composition comprises, inter alia, 0.001-0.05 parts by weight of isovaleric acid, 0.05-5 parts by weight of phenethyl alcohol (e.g., 2-phenylethanol), and 0.001-0.1 parts by weight of at least one C4-C12 lactone (0014-0019), wherein the at least one C4-C12 lactone is choses from massoialactone, a gamma lactone, and a mixture thereof (0041-0045).
The ratio of lactones/(isovaleric acid and phenethyl alcohol) as disclosed by Veronique overlaps with the range as recited in claim 1 (for example, when the composition comprises 0.1 parts lactones, 0.05 parts of isovaleric acid and 0.05 parts of phenethyl alcohol, the ratio of lactones/(isovaleric acid and phenethyl alcohol) is 1) . 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).
The preamble language “masking flavorant” is not considered to further limit the composition. It is the examiner’s position that the intended use recited in the present claims do not result in a structural difference between the presently claimed composition and the prior art composition and further that the composition of the prior art is capable of performing the intended uses. Given that Veronique teaches a hydroalcoholic composition that comprises isovaleric acid, phenethyl alcohol and lactones in which the ratio of lactones/(isovaleric acid and phenethyl alcohol) overlaps with the range as recited in claim 1, and the composition of Veronique can be added to a food (e.g., a beverage) to improve the flavoring (e.g., organoleptic) property, it is clear that the composition of Veronique would be capable of performing the intended uses, i.e., as a masking flavorant.
Regarding claim 2, the limitation that at least one of lactones, isovaleric acid and phenethyl alcohol is a microbial fermentation product by yeast and/or koji mold, or yeast and/or koji mold, and LAB is interpreted as a product-by-process limitation, and the patentability of which is based on the product itself. To this end, although Veronique does not shed light the source of the lactones, isovaleric acid or phenethyl alcohol, the compounds as disclosed by prior art cannot be distinguished from those that are produced by fermentation. Therefore, Veronique meets claim 2.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791