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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 depends from claims 8 and 1. Claim 1 requires the presence of “δ-dodecalactone and/or δ-decalactone”. Claim 12 also requires that “the lactones include δ-dodecalactone and δ-decalactone”. Claim 1 already requires the presence of either or both of these lactones, thus claim 12 does not further limit claim 8 or claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 6, and 8-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 was amended to require δ-dodecalactone and/or δ-decalactone. Claims 4, 6, and 8-11 refer to “lactones”. It is not clear if the lactones in these claims refer solely to the two lactones recited in claim 1, or to any lactones that may be present in the product. Moreover, these claims do no use articles such as “the” to denote whether they refer to the lactones (δ-dodecalactone and/or δ-decalactone) of claim 1. For claim 8, the lactones are seen to be the same as the lactones of claim 1.
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 1-6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2532252 (Sanguinetti) in view of JP 2023116130 (Hasegawa).
Regarding claims 1, 12, and 13, Sanguinetti discloses beverages comprising collagen that are suitable for improving skin conditions. Sanguinetti also discloses a flavor base that includes lactones, esters, aliphatic higher alcohols, ketones, aromatic aldehydes, aromatic alcohols, thioethers, fatty acids, propylene glycol, ethanol, and glycerol (glycerine). Regarding the amount of collagen, the examples of Sanguinetti disclose amounts of collagen above 5wt% of the beverage. For instance, Example 2 has 5 g collagen, and 2 g syrup, 43 g water in addition to small amounts of other ingredients amounting to 1.178 g, resulting in a collagen amount of about 9.8 wt% collagen. Sanguinetti does not disclose specific esters and lactones that may be used as part of the flavor base for the collagen beverage. Hasegawa discloses a composition effective to improve unpleasant flavor and refers to odor inhibition of collagen in the background. Hasegawa discloses the use of ester compounds and lactones and gives an example of ester of ethyl butyrate and an example of lactone of delta dodecalactone. It would have been obvious to use these materials as the ester and lactone in Sanguinetti as Hasegawa recognizes the use of these materials as part of a composition effective to improve unpleasant flavor.
Regarding claims 3 and 8, Hasegawa also discloses the use of linalool and one of ordinary skill would have found use thereof obvious based upon the disclosure by Hasegawa of its use for improving flavor. Moreover, the lactones are present as discussed above with regard to claim 8.
Regarding claims 2, 4-6 and 9-11, Hasegawa discloses that the concentration of the present compound in the unpleasant flavor-improving composition (preferably the total concentration when adding a plurality of the present compounds) is arbitrary according to the addition target and aroma characteristics of the unpleasant flavor-improving composition, as described above. can be determined, and an appropriate concentration may be set so that it can be added to consumer goods at a concentration at which the effect of improving the unpleasant flavor is exhibited. For example, it is in the range of 100ppt to 10%. Further, Hasegawa discloses that it depends on the formulation of the unpleasant flavor-improving composition, if the concentration of the present compound in the unpleasant flavor-improving composition is 100 ppt to 10%, the scent derived from the present compound does not protrude excessively and can be transferred to consumer goods. An unpleasant flavor improvement effect is obtained. The present compound may be added at a concentration outside the range of 100 ppt to 10%, depending on the unpleasant flavor-improving composition of the present invention and the fragrance to which it is added. In other words, the amounts of the flavor improving composition depends upon the desired effect of improving and may be adjusted accordingly. Absent a showing of unexpected results, it would have been obvious to adjust the amounts of each of the ethyl butyrate, linalool and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Claims 1-6 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2532252 (Sanguinetti) in view of US 2020/0275682 (Chakraborty).
Regarding claims 1, 12 and 13, Sanguinetti discloses beverages comprising collagen that are suitable for improving skin conditions. Sanguinetti also discloses a flavor base that includes lactones, esters, aliphatic higher alcohols, ketones, aromatic aldehydes, aromatic alcohols, thioethers, fatty acids, propylene glycol, ethanol, and glycerol (glycerine). Regarding the amount of collagen, the examples of Sanguinetti disclose amounts of collagen above 5wt% of the beverage. For instance, Example 2 has 5 g collagen, and 2 g syrup, 43 g water in addition to small amounts of other ingredients amounting to 1.178 g, resulting in a collagen amount of about 9.8 wt% collagen. Sanguinetti does not disclose specific esters and lactones that may be used as part of the flavor base for the collagen beverage. Chakraborty discloses a flavor system used with proteins and discloses that to impart a vanilla taste the ingredients of ethyl butyrate; gamma-valerolactone; gamma-octalactone; heliotropine; gamma-nonalactone; vanillin; gamma-decalactone and delta-decalactone [0028, Table 1]. It would have been obvious to one of ordinary skill in the art to use the known flavor system for the beverage of Sanguinetti to obtain the desired flavor profile in the beverage. Sanguinetti discloses that esters and lactones may be used and Chakraborty discloses use of off-note blocking compounds as to mask undesirable off-notes with peptides and specifically names delta decalactone [0026, 0044, 0049] and ethyl butyrate is used in conjunction as a key ingredient for vanilla [0028]. One of ordinary skill would have found it obvious to use known materials disclosed by Chakraborty in Sanguinetti with a reasonable expectation of blocking off-notes.
Regarding claims 3 and 8, Chakraborty discloses addition of terpenes such as limonene to bind the proteins decrease the off-notes [0014, 0037]. It would have been obvious to add limonene as a binder for protein to Sanguinetti to further decrease the off-notes. Moreover, the lactones are present as discussed above with regard to claim 8.
Regarding claims 2, 4-6 and 9-11, absent a showing of unexpected results, it would have been obvious to adjust the amounts of each of the ethyl butyrate, linalool and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Additionally, Chakraborty discloses a ratio of off-note blocking compounds (butyrate and lactones) to protein binders (limonene) of 1:1 to 20:1 which indicates that the amount of off-note blocking compounds compared to limonene are such that higher amounts of off-note blockers are provided. Chakraborty also discloses that the limonene (protein binder) may be present in an amount of 0.05-1wt% by weight of the protein and the total. Chakraborty also discloses a protein content of about 2-15wt% [0025] of the composition and the off-note blockers are present in an amount of 0.00000001- 0.0025 wt% of the consumable [0050] which indicate the small amount of off-note blockers relative the protein. As stated above, it is seen to be within the level of ordinary skill to optimize the relative amounts to provide the desired taste profile.
Absent a showing of unexpected results, it would have been obvious to adjust the amounts of each of the ethyl butyrate, linalool and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Claims 1-6 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2532252 (Sanguinetti) in view of EP 0007673 (Vandenbosch).
Regarding claims 1, 8, 12, and 13, Sanguinetti discloses beverages comprising collagen that are suitable for improving skin conditions. Sanguinetti also discloses a flavor base that includes lactones, esters, aliphatic higher alcohols, ketones, aromatic aldehydes, aromatic alcohols, thioethers, fatty acids, propylene glycol, ethanol, and glycerol (glycerine). Regarding the amount of collagen, the examples of Sanguinetti disclose amounts of collagen above 5wt% of the beverage. For instance, Example 2 has 5 g collagen, and 2 g syrup, 43 g water in addition to small amounts of other ingredients amounting to 1.178 g, resulting in a collagen amount of about 9.8 wt% collagen. Sanguinetti does not disclose specific esters and lactones that may be used as part of the flavor base for the collagen beverage. Vandenbosch discloses a flavoring or flavoring enhancing composition useful for providing a wide variety of flavors and may be used in beverages or other foodstuffs (pages 2-3). Example 21 is an example using both ethyl butyrate and delta decalactone as part of the flavoring composition to confer to the solution a cream-like character with enhanced sweet notes. It would have been obvious to use the flavoring composition including both ethyl butyrate and delta decalactone in the beverage of Sanguinetti to provide a desirable flavor profile thereto.
Regarding claims 2, 4, and 9, absent a showing of unexpected results, it would have been obvious to adjust the amounts of the ethyl butyrate and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Regarding claims 3, 5, 8 and 10, Example 19 includes ethyl butyrate and linalool in a ratio of 4:1 (4) which falls within the claimed range of 0.1-10 (1:0.1 to 1:10) and is indicative of a known relative amount of the two materials. It would have been obvious to one of ordinary skill to adjust the relative amounts of flavorings to achieve the desire taste profile. Still further, it is indicative of using linalool in combination with other ingredients that effect the flavor profile and would have been obvious in combination with ethyl butyrate and lactones to achieve a desired taste profile. Moreover, the lactones are present as discussed above with regard to claim 8.
Regarding claims 6 and 11, in example 21, the ratio of ethyl butyrate to delta-decalactone is 1:1 which falls within the ratio claimed. In addition, example 25 includes ethyl butyrate and delta decalactone in a ratio of 8:10 (0.8) which falls within the ratio claimed.
Absent a showing of unexpected results, it would have been obvious to adjust the amounts of each of the ethyl butyrate, linalool and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Claims 1, 2, 8, 9, 11, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/270560 (Shirotani) in view of JP 2018/161069 (Miyazawa). For Shirotani, US 2024/0277017 is used for citations).
Regarding claims 1, 12 and 13, Shirotani discloses ingredients for the purpose of masking off-flavors caused by collagen, and collagen peptides in foods and beverages. Specifically, Shirotani discloses using lactones to mask off-flavours and enhancing and improving flavor in foods containing collagen or collagen peptides [0063, 0077] and acknowledges that collagen and collagen peptide have a peculiar unpleasant odor and bitterness, and it is necessary to suppress the unpleasant odor and bitterness for use thereof in foods and beverages [0009]. The lactones include δ-dodecalactone and δ-decalactone [0065]. Regarding the amount of collagen, Shirotani discloses the proteins are contained in the final food in an amount of 0.1wt% or more which overlaps the claimed range [0077]. Moreover, an example in [0125] of a drink includes 8wt% total milk protein. While this example is not directed to collagen, it is indicative of higher amounts of protein that may be used, thus suggesting values above 5wt%. Shirotani does not disclose the addition of ethyl butyrate. Miyazawa discloses a flavor and smell correcting agent and aroma composition for flavor correcting and smell correcting. Miyazawa discloses a method of removing or reducing a foreign taste and a foreign odor of health food and drink without damaging a preferable taste inherent in the food and drink to thereby make it easy to take the food and drink (abstract). Specifically, an active ingredient including ethyl butyrate is added to the food/drink to correct the flavor and smell (abstract). Miyazawa discloses that the off-flavor and odor targeted by the flavoring composition include bitterness found in foods and drinks containing amino acids and peptides. Miyazawa discloses that ethyl butyrate may be added in an amount of 4500-135000 ppb. It would have been obvious to add ethyl butyrate as disclosed by Miyazawa to the food or beverage of Shirotani to suppress the bitter off-notes of the collagen. As Shirotani discloses that collagen and collagen peptide have a peculiar unpleasant odor and bitterness, and Miyazawa discloses that the off-flavor and odor targeted by the flavoring composition (ethyl butyrate) include bitterness found in foods and drinks containing amino acids and peptides, it would have been obvious to one of ordinary skill to use the ethyl butyrate in Shirotani with a reasonable expectation of successfully correcting the smell and aroma of the collagen containing food/beverage based upon the disclosure of such a use in Miyazawa.
Regarding claims 2, and 11, it would have been obvious to provide the collagen peptides in amounts above 0.1wt% and to balance the collagen with the flavoring of the beverage and masking agents as suggested by Miyazawa. One of ordinary skill would have found it obvious to optimize the amount of collagen peptides to obtain the benefits thereof with the flavoring and juice amounts to optimize the taste.
Absent a showing of unexpected results, it would have been obvious to adjust the amounts of each of the ethyl butyrate, linalool and lactones to achieve the desired effect on the unpleasant flavor containing food/beverage. The relative amounts of each are also adjustable to provide the desired flavoring and improvement to the flavor of the food/beverage. Moreover, the amounts would be readily determined by the ordinary artisan and would be adjustable based upon the amount of protein (collagen) causing the unpleasant flavor.
Regarding claims 8 and 9, the lactones are discussed above and Shirotani discloses the amount of lactones is 1ppb or more. Claim 8 of Shirotani discloses the protein content is 1wt% or more. The claimed range of up to 1:5000000 of lactone to collagen is seen to be obviated by the ranges of Shirotani. Moreover, adjusting the relative amounts is seen to be within the purview of one ordinary skill in the art to adjust the taste profile of the food product.
Claims 3-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/270560 (Shirotani) in view of JP 2018/161069 (Miyazawa) as applied to claims 1, 2, and 8 above, and further in view of JP 2019/041696 (Tetsui).
Shirotani and Miyazawa are discussed above, but do not specifically disclose the addition of linalool. Tetsui discloses an oral composition comprising collagen peptides and a method of masking the odor and taste thereof by adding linalool and gamma decalactone in amounts of 0.1-1.2 ppm and 0.5-10ppm respectively. It would have been obvious to add linalool to Shirotani as modified above with a reasonable expectation of successfully masking the collagen peptides as taught by Tetsui.
Regarding the amounts of ethyl butyrate, linalool and lactone, one of ordinary skill in the art would have found it obvious to vary the amounts of ethyl butyrate, linalool and/or delta decalactone and/or delta dodecalactone to provide the desired level of masking of the collagen and optimize the taste and aroma thereof.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, and 8-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The rejection of claims 15 and 16 under 101/112 is withdrawn as these claims were cancelled.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
Prosecution Insights