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 .
Status of Claims
Claims 1-10 are pending and under examination in this application.
Claim Objections
Claims 2-5 and 8-10 are objected to because of the following informalities:
Claims 2-5 recite the limitation "a yeast extract as claimed in claim 1" in lines 1-2. While it is clear that the “yeast extract” recited in the limitation is the yeast extract claimed in claim 1, for matters of form, “a yeast extract” should be changed to “the yeast extract.” Appropriate correction is required.
Claims 8-10 recite the limitation "a food flavor enhancer as claimed in claim 7" in lines 1-2. While it is clear that the “food flavor enhancer” recited in the limitation is the food flavor enhancer claimed in claim 7, for matters of form, “a food flavor enhancer” should be changed to “the food flavor enhancer.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 6-10 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 6 recites, “A yeast extract prepared by the method of claim 1, comprising peptides represented by SEQ ID NO. 1 to SEQ ID NO. 35.” It is unclear if all 35 peptides represented by SEQ ID NO. 1 to SEQ ID NO. 35 are required in the yeast extract or if the yeast extract is only required to comprise any one or more of the 35 peptides. For the purpose of examination, by meeting the limitations in claim 1, claim 6 is considered met.
Claims 7-10 recite, “A use of a flavor molecules in preparing a food flavor enhancer.” An attempt to claim a process without setting forth any steps involved in the process raises an issue of indefiniteness. The recitation merely recites a use without any active, positive, steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(q). For the purpose of examination, by meeting the limitations in claim 1, claims 7-10 will be considered met.
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 7-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter) because the claimed invention is directed towards a use without any active, positive, steps delimiting how this use is actually practiced. Claims 7-10 recite, “A use of flavor molecules in preparing a food flavor enhancer” and then go on to state the types of peptides in the flavor molecules. However, no active steps are given stating how the flavor enhancer is prepared. It is noted that “one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. 101. See In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961). See MPEP 2173.05 (q). Thus, claims 7-10, which are directed towards a use, do not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101.
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 1-2 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shou-Zhen et al. TW I777730 (cited on IDS dated 03/22/2024) in view of Origane et al. US 5188852.
Please note the rejection below is based off of paragraph numbers added to the PE2E English translation of Shou-Zhen, supplied with the rejection.
Regarding claim 1, Shou-Zhen teaches a method of preparing, and increasing flavor molecules in, a yeast extract (method for producing a yeast peptide as a food flavoring agent; [0001], [0006]).
Shou-Zhen discloses the method comprising step a: culturing a yeast of the Kluyveromyces marxianus species [0004], [0007]. Shou-Zhen teaches the yeast is cultured in a yeast culture medium wherein the yeast culture medium is a basic yeast culture medium, with the lactic acid being a sole carbon source in the yeast culture medium [0007], [0029]. It is noted that the instant specification defines the term “basic yeast culture medium” as basic culture medium used in the present invention to culture yeast, which contains elements essential to the growth of yeast. The specification then gives the example of the culture medium having 6.7 g of yeast nitrogen base without amino acids and 20 g of lactic acid per liter of distilled water [0043]. Shou-Zhen also teaches a culture medium having 6.7 g of nitrogen base without amino acids and 20 g lactic acid per liter of distilled water [0021]. Thus, the Shou-Zhen culture medium is construed as a basic yeast culture medium.
Shou-Zhen teaches the basic yeast culture medium containing 20 g lactic acid per liter of distilled aqueous solution or about 2% lactic acid in the culture medium [0021]. This is within the claimed range about 2-12% lactic acid.
Shou-Zhen teaches the yeast culture is produced at a predetermined culture temperature, where the predetermined culture temperature is 30 °C [0024]. This is within the claimed temperature range of 23-37 °C.
Shou-Zhen teaches step b: separating yeasts from the yeast culture (protein obtained by separation; [0052]).
Shou-Zhen does not teach step c of mixing the yeast with water serving as an extraction solvent and is silent as to the extraction temperature.
Origane teaches a process for producing a yeast extract without the use of an organic solvent (Abstract). Origane discloses step c: mixing the yeasts with water serving as an extraction solvent (a mixture of live yeast and water; claim 1). Origane teaches performing extraction at a predetermined extraction temperature to obtain the yeast extract, at about 30 to about 54 °C (claim 1). This overlaps the claimed predetermined extraction temperature, which is equal to the predetermined culture temperature, or in other words is 23-37 °C. 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(I). Origane teaches the present method, which uses water as the extraction solvent and extracting at a temperature within the claimed range, prepares an excellent yeast extract without the unwanted problems caused by organic solvents but where the extract has good taste and flavor in good yield (Abstract, C1 L61-65).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen by incorporating the teachings of Origane to use an extraction solvent of water and preforming the extraction within the claimed temperature because this prepares an excellent yeast extract without the unwanted problems caused by organic solvents but where the extract has good taste and flavor in good yield, as recognized by Origane (Abstract, C1 L61-65).
Regarding claim 2, Shou-Zhen discloses the basic yeast culture medium used in the examples of Shou-Zhen contains 20 g lactic acid per liter of distilled aqueous solution, or that the lactic acid in step a has a concentration of about 2% [0021]. This is near the claimed range of at least 4-6% concentration. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779. See MPEP 2144.05(I).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen to incorporate the amount of lactic acid within the claimed range because Shou-Zhen teaches adjusting the pH of the culture medium, which would require the addition of an acid [0016]; and because Shou-Zhen teaches the addition of lactic acid as the carbon source for the cultivation of yeast, which can also be adjusted to maintain good growth efficiency and produce high functional yeast peptides [0016], [0029].
Moreover, while Shou-Zhen does teach how the culture medium was made for the examples in the disclosure [0021], Shou-Zhen does not particularly limit the amount of lactic acid needed in the culture medium, but only requires a specific pH range and that lactic acid is the only carbon source for the culture medium [0007]. Thus, a person of ordinary skill can envisage a formulation wherein the lactic acid comprises more than 2%, such as 4-6% lactic acid as claimed. Since Shou-Zhen teaches adjusting the pH of the culture medium [0016], which would require the addition of an acid such as lactic acid; and since Shou-Zhen teaches the addition of lactic acid as the carbon source for the cultivation of yeast, which can be adjusted to maintain good growth efficiency and produce high functional yeast peptides [0016], [0029], a person of ordinary skill through routine experimentation would be able to find a workable range for the amount of lactic acid that could be added to the culture medium to adjust the pH, promote good yeast growth and produce high functional yeast peptides. Therefore, the amount of lactic acid can be adjusted to meet the needs at hand and are result-effective variables.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen to have the lactic acid within the claimed amount, as this would help to adjust the pH, promote good yeast growth in the medium and produce high functional yeast peptides, as evidenced by Shou-Zhen [01016], [0029]; and is considered a result effective variable that can be easily found through routine experimentation as there are a finite number of solutions for the range of lactic acid. Noting, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claims 6-10, Shou-Zhen teaches a yeast extract (yeast peptide; Abstract) prepared by the method of claim 1, see claim 1 above. Shou-Zhen in view of Origane teaches a substantially identical method to the method of claim 1 with steps a-c, as shown by the rejection above. Therefore, since the method of Shou-Zhen in view of Origane is substantially identical to the method of claim 1, it is considered to produce a yeast extract that possesses the property of comprising peptides represented by SEQ ID NO. 1 to 35, as required by claim 6; and to also produce flavor molecules, wherein the flavor molecules comprise at least one peptide selected from the group consisting of peptides represented by SEQ ID NO. 1 to SEQ ID NO. 35, as required by claim 7, flavor molecules that comprise peptides represented by SEQ ID NO. 1 to SEQ ID NO. 14, as required by claim 8, flavor molecules that comprise peptides represented by SEQ ID NO. 15 to SEQ ID NO. 35, as required by claim 9, and flavor molecules, wherein the flavor molecules are a yeast extract or an isolate thereof, as required by claim 10, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Shou-Zhen et al. TW I777730 in view of Origane et al. US 5188852 as applied to claim 1 above, and further in view of Yum et al. US 20210299198.
Regarding claim 3, Shou-Zhen teaches the extract of claim 1. Shou-Zhen is silent as to the volume of the extraction solvent in step c.
Yum teaches a method for preparing a yeast extract (Abstract). Yum discloses an extraction solvent (solvent to prepare an extract; [0012]) is added to the yeast culture medium (biomass; [0012]), wherein the extraction solvent is used at a concentration of 30-80 wt. %, or a volume of 0.8 to 0.3 times as great as a volume of the yeast culture medium (biomass; [0013] [0051]. This overlaps the claimed volume of 0.5 to 0.0625 times as great as a volume of the yeast culture medium. See MPEP 2144.05(I). Yum discloses that when using extracts at this volume you are able to produce a yeast extract [0051-0052].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen in view of Origane by incorporating the teachings of Yum to have the extraction solvent volume within the claimed amount compared to the yeast culture medium because when using extracts at this volume you are able to produce a yeast extract, as evidenced by Yum [0051-0052]
Regarding claim 4, Origane teaches the predetermined extraction temperature in step c is between 30 to about 54 °C (claim 1), as discussed above in claim 1. This encompasses the claimed predetermined extraction temperature of 37 °C. See MPEP 2144.05(I).
Shou-Zhen teaches a predetermined culture temperature of 30 °C [0024], but does not teach 37 °C. Yum teaches that yeast may be cultured at a temperature of 20-40 °C [0009]. This encompasses the claimed predetermined culture temperature in step a of 37 °C.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen in view of Origane and Yum to have further incorporated the teaches of Yum by culturing the yeast at the claimed temperature because Yum recognizes this temperature as a temperature that yeast may be cultured [0009].
Regarding claim 5, Shou-Zhen teaches separating the yeasts from the yeast culture but is silent as to how the separation is done [0052]. Yum teaches the yeasts (strain) can be separated from the yeast culture (culture medium) by centrifugation [0010].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Shou-Zhen in view of Origane and Yum to have further incorporated the teaches of Yum by separating the yeasts by centrifugation as claimed because Yum recognizes centrifugation as a way to separate the yeasts (strain) from the yeast culture (culture medium) [0010].
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791