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 .
DETAILED ACTION
Status of the Claims
Receipt of Remarks/Amendments filed on 03/06/2026 is acknowledged. Claims 1, 3, and 16 have been amended. Claims 1-20 remain pending, and are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Modified Rejection As Necessitated by the Amendment Filed 03/06/2026
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7, 9, 11, and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (WO 2013/004003 A1, cited in the IDS, machine translated in IP.com), hereinafter Lu, as evidenced by Curschellas et al. (Journal of Colloid and Interface Science 393 (2013) 182–191), hereinafter Curschellas.
Lu relates the invention of a nano-flavor comprising the flavor, surfactant, ethanol, etc., wherein the nano-flavor has good thermal stability, can be made with different flavors, and is simple to prepare at low cost, with applications in the fields of food, medicine etc.(Abstract; p. 6, 2nd paragraph).
Regarding Claims 1-2, Lu teaches multiple examples of nanoflavor nanoemulsions. In Example 8, Lu describes the preparation of nano-rose essence by mixing and emulsifying rose essence, Tween 20 and polyglycerol ester, and ethanol in an emulsion tank (p. 9, Example 8). Tween 20 reads on the claimed polyoxyethylene sorbitan fatty acid ester; the polyglycerol ester reads on the polyglycerol ester of fatty acids (PGE), as evidenced by Curschellas (Abstract; Introduction, 3rd paragraph; Fig. 1). The rose essence reads on the non-polar phase comprising a flavor oil; the ethanol reads on the polar phase. As such, these claims are anticipated.
Regarding Claim 3, Lu relates that emulsification is the action of a liquid uniformly dispersed in another liquid that is incompatible with each other with very small droplet (p. 7, 10th paragraph). Lu teaches that the average particle size of nano-rose essence is 58nm, which is within the claimed range (p. 9, Example 8).
Regarding Claims 4 and 17, Example 8 is prepared with 7.52kg Tween 20 and 4.22kg polyglycerol ester, which would give a ratio of 1.8:1 polyoxyethylene sorbitan fatty acid ester to PGE, within the claimed ratio.
Regarding Claim 5, based on the Examiner’s calculation, Tween-20 is present at 8.4% of the nanoemulsion, which anticipates the polyoxyethylene sorbitan fatty acid ester in an amount from 0.5 to 20wt. % of the nanoemulsion (p. 9, Example 8).
Regarding Claim 6, based on the Examiner’s calculation, PGE is present at 4.7% of the nanoemulsion, which anticipates the PGE in an amount from 0.5 to 10wt. % of the nanoemulsion (p. 9, Example 8.).
Regarding Claims 7 and 18, based on the Examiner’s calculation, if rose essence is present at 25% of the nanoemulsion, which anticipates the claimed amounts of from 0.5 to 30 wt.% and 17 to 25%, respectively (p. 9, Example 8.).
Regarding Claim 9, Lu teaches ethanol, which provides the polar phase, reading on the claimed “water and/or one or more polar non-aqueous solvents” (p. 9, Example 8)
Regarding Claim 11, Lu teaches Tween 20®, which is the same as polyoxyethylene (20) sorbitan monolaurate (p. 9, Example 8).
Regarding Claim 16, Lu teaches different sized particles that fall within the claimed range. For instance, Examples 10 and 11 recites particle sizes 108 nm and 76 nm, respectively. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claim 19, Lu also teaches Tween 80, which is the same as polyoxyethylene (20) sorbitan monooleate (p. 3, Technical solution, 5th paragraph; Examples 3-4, 11-12; Claim 5).
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, 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 8, 10, 12-15 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lu, as applied to Claim 1 above, and in view of Barendse et al. (US 2010/0112170 A1), hereinafter Barendse, as evidenced by Bastida-Rodriguez (Of record).
The teachings of Lu have been set forth above.
Regarding Claim 8, Lu is silent on the HLB of PGE.
Barendse also teaches edible emulsion and comprehends their use in spreadable products, frying products, baking ingredients, drinks, and diary type products (Abstract; [0002]). Barendse’s emulsion welcomes addition of flavor components, making it compatible with Lu [0052]. Furthermore, Barendse describes a preferred embodiment wherein the emulsion is fat continuous; another preferred embodiment the emulsion is not a duplex emulsion [0040].
Barendse teaches polyglycerol polyricinoleate (PGPR) is a strong emulsifier used in food products, which can be combined with another emulsifier including sorbitan esters of fatty acids ([0006], [0045]). Barendse discloses the use of 0.1 to 1 wt % PGPR in an edible emulsion with an undesired flavor to mask the undesired flavor (Claim 13). The HLB of PGPR is ~1 [0054].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the PGPR of Barendse in the surfactant system of Lu to obtain an edible emulsion using a strong water-in-oil emulsifier which also mask any undesired flavors in food products.
Regarding Claim 10, Barendse expressly teaches examples of emulsions with water between 40-47% (Table 1). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. An improvement in the art would have been obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Finding workable or optimal ranges is generally understood as within the capabilities of the ordinary artisan. See Pfizer Inc. v. Apotex Inc., 82 USPQ2d 1321 (Fed. Cir. 2007) (discovery of an optimum value of a variable in a known process is usually obvious.).
Regarding Claim 12, Barendse teaches PGPR, which comprises fatty acids having 18 carbon atoms as evidenced by Bastida-Rodriguez (Fig. 4). As such, Claim 12 is also obvious.
Regarding Claim 13, Lu teaches applications of its nanoflavors in the fields of food (p. 6, 2nd paragraph); Barendse teaches application of the emulsions in drinks [0002].
Regarding Claim 14-15 and 20, Lu teaches multiple nanoflavors prepared with acid solution, which would make the beverages acidic. However, Lu does not recite the specific pH of beverages. Barendse comprehends that the pH of the aqueous phase can be set to the desired value not only to influence acidic or basic taste impression and but also to influence microbial stability, preferably with the pH of the aqueous phase being from 4.3 to 5.5. This is close to the claimed pHs in Claims 15 and 20. As above, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. An improvement in the art would have been obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Finding workable or optimal ranges is generally understood as within the capabilities of the ordinary artisan. See Pfizer Inc. v. Apotex Inc., 82 USPQ2d 1321 (Fed. Cir. 2007) (discovery of an optimum value of a variable in a known process is usually obvious.).
Response to Arguments:
Applicant traversed the 102 and 103 rejections over primary art Zhang. The crux of Applicant’s argument is based on the amendment of Claim 1, which now requires the flavor nanoemulsion is not a double emulsion. Zhang teaches a double emulsion.
Applicant’s arguments have been considered but are moot because the new ground of rejection necessitated by the amendment does not rely on Zhang for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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