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
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 93-112
Withdrawn claims: 93-100
Cancelled claims: 1-92
Claims currently under consideration: 101-112
Currently rejected claims: 101-112
Allowed claims: None
Election/Restrictions
Applicant’s election without traverse of Species II (claims 101-112) in the voicemail left on 07/03/2026 is acknowledged.
Claims 93-100 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species I, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
This application contains claims directed to the following patentably distinct Species I and Species II. The species are independent or distinct because the method of Species I comprises adding a taste modulator to a beverage comprising a steviol composition; while Species II comprises adding a taste modulator to a food or beverage comprising an umami agent. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, none of the claims are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
Species I would require a search in at least CPC A23L 27/36, along with a unique text search.
Species II would require a search in at least CPC A23L 27/88, along with a unique text search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a voicemail from Richard Timmer on 07/03/2026, a provisional election was made to prosecute the invention of Species II, claims 101-112. Affirmation of this election must be made by applicant in replying to this Office action. Claim 93-100 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 101 is objected to because of the following minor informalities:
“adding a taste modulator composition to product” should be read as “adding a taste modulator composition to a product”.
“without the taste modulator component” should be read as “without the taste modulator composition”.
“wherein the mouthfeel is inhibited when compared to a baseline product” should be read as “wherein the mouthfeel is improved when compared to a baseline product”.
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.
Claim 106 is rejected under 35 U.S.C. 112(b) 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.
Regarding claim 106, the three iterations of the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
For the purpose of this examination, the claim will be interpreted as meaning that the food product is at least one of a snack product, a luncheon or breakfast meat product, and a soup product.
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.
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 101-107, and 110 are rejected under 35 U.S.C. 103 as being unpatentable over Ley (US 2009/0214728).
Regarding claims 101, 102, 103, 104, 107, and 110, Ley teaches a composition (corresponding to the ingredients in the table of Example 5 combined with the 300 mL of water added to the ingredients as described in the preparation method of Example 4) comprising an umami agent in the form of L-glutamine; and a taste modulator composition consisting essentially of: (1) a first taste modulator component consisting essentially of a first salt having a first cation Mg2+ and a first anion in the form of chloride (corresponding to MgCl2 * 6H2O); (2) a second taste modulator component consisting essentially of a second salt having a second cation Ca2+ and a second anion in the form of chloride (corresponding to CaCl2 * 2H2O); and (3) a third taste modulator component consisting essentially of a third salt having a second cation K+ and a third anion in the form of phosphate (corresponding to KH2PO4) [0118]-[0120] as required by present claim 101. Ley discloses that the mixture is for enhancing salt taste (title of Example 5 above [0119], which indicates that the mixture is edible and is thus a food product as recited by present claim 104.
Ley also discloses that the composition comprises (1) the first taste modular component at a concentration of 0.73 g which corresponds to 3.6 mM (MgCl2 * 6H2O has a molecular mass of 203.3 g/mol); (2) the second taste modulator component at a concentration of 0.65 g which corresponds to 4.4 mM (CaCl2 * 2H2O has a molar mass of 147.01 g/mol); and (3) the third taste modulator component at a concentration 0.215 g which corresponds to 1.6 mM (KH2PO4 has a molar mass of 136.086 g/mol) [0118]-[0120]. These values fall within the ranges recited by present claims 101 and 110. Ley also discloses that the composition comprises the umami agent L-glutamine as required by present claim 101 and 107. Ley discloses that the umami agent is present in the composition in a concentration of 0.029 wt.% (calculated using the total weight of the ingredients listed in the table of Example 5 plus the 300 mL of water added to the ingredients as described in the preparation method of Example 4) [0118]-[0120]. This concentration of umami agent falls within the concentration of umami agent recited in present claim 101.
In regards to the improvement of mouthfeel compared to a baseline product due to the addition of the taste modulator component as described in present claims 101, 102, and 103, given that Ley discloses food product comprising the claimed umami agent in the claimed amount and the claimed first, second, and third taste modulator components in the claimed concentrations, the food products comprising the combination of umami agent and taste modulator composition are considered to have an improved mouthfeel as claimed when compared with baseline compositions that do not contain the first, second, and third taste modulator components.
Regarding claims 105, Ley teaches the invention as described above in claim 104, including the food product may be a condiment (corresponding to ketchup, mustard, remoulade, mayonnaise, and sauces), a cereal product, a rice product, a pasta product, a baker’s product, a biscuit product, a pastry product (corresponding to cake), a mustard product, a vinegar product, a processed food product (corresponding to tofu), a cooked vegetable product, a meat, a meat product, an egg product, a dairy product, a cheese product, a soy product, an edible oil, or a fat product [0090]-[0091].
Regarding claims 106, Ley teaches the invention as described above in claim 104, including the food product is a snack product (corresponding to nibbles), a luncheon or breakfast meat product (corresponding to sausage), and soup [0090].
Claims 101, 108-109, and 111-112 are rejected under 35 U.S.C. 103 as being unpatentable over Vasquez (US 2005/0123670) in view of Cepanec (WO 2016/185233).
Regarding claims 101, 111, and 112, Vasquez teaches savory compositions comprising a taste modulator composition consisting essentially of a combination of a second taste modulator in the form of calcium chloride, a third taste modulator in the form of potassium chloride, and a first taste modulator in the form a magnesium salt that is preferably magnesium chloride [0034], [0039], [0042], [0050] as recited in present claims 101 and 112. Regarding the amounts of the taste modulators recited in present claims 101 and 111, Vasquez teaches the addition of the taste modulator composition to savory compositions (e.g., [0050]), but does not teach the final concentration of the taste modulator components. However, Vasquez does teach 1-3% magnesium salt, 2-15% calcium chloride and 5- 15% potassium chloride in the taste modulator composition that is added to the savory composition [0039, 0042]. These amounts would allow for final concentrations in the savory composition as recited in present claims 101 and 111, where the potassium is present at a higher amount than the magnesium and calcium, and the magnesium and calcium are present in equal amounts. Therefore, given that the composition of the prior art allows for a ratio of components as claimed to be added to savory compositions, the claimed first, second and third taste modulators, as well as their amounts, are considered to be obvious over Vasquez.
Vasquez teaches their composition in savory foodstuffs including soups, broths, sauces and mayonnaise [0050] so that the Vasquez teaches that the composition is added to a food product or a beverage as recited in present claim 101. However, Vasquez is silent as to the savory compositions additionally comprising an umami agent and in an amount as recited in present claim 101.
However, Cepanec teaches savory compositions comprising an umami agent and a combination of calcium and magnesium salts (i.e., first and second taste modulators) (page 6, “Summary of Invention’). Where 1 g of the powder of Example 6 of Cepanec is included in 100 g of soup (page 20), this provides the umami agent present at 0.65% by weight of the savory composition. This composition also comprises Mg2+ at 3.6 mM and Ca2+ at 4.99 mM, both falling within the ranges of present claims 101 and 111.
Therefore, given that Vasquez teaches the addition of a taste modulator composition consisting essentially of potassium chloride, calcium chloride, and magnesium chloride to savory compositions, and where Cepanec teaches the same types of savory compositions also comprising an umami agent, it would have been obvious to have utilized an umami agent in a savory composition in combination with the taste modulator composition of Vasquez with the reasonable expectation that a suitably flavored, low-sodium composition would have been provided. Further, one of ordinary skill would have been able to use the final amounts of the taste modulator components (e.g., magnesium and calcium) taught by Cepanec as a guide for the final concentration of the magnesium, calcium, and potassium composition taught by Vasquez. This would have required no more than routine experimentation as all of the claimed components are known to be included in savory compositions and in amounts similar to the claimed amounts in order to provide suitably flavored compositions.
In regards to the improvement of mouthfeel compared to a baseline product due to the addition of the taste modulator component as described in present claim 101, given that the claimed composition is rendered obvious by the cited combination of prior art, the compositions comprising the combination of umami agent and taste modulator composition are considered to have an improved mouthfeel as claimed when compared with baseline compositions that do not contain the first, second, and third taste modulator components.
Regarding claim 108, modified Vasquez teaches the invention as described above in claim 101, including that the umami agent comprises yeast extracts that contain 5’-ribonucleotides including inosine 5’-monophosphate, guanosine 5’-monophosphate, and mixtures thereof (Cepanec, page 7, lines 1-4). Therefore, it would have been obvious to have utilized an umami agent as taught by Cepanec in the savory compositions of Vasquez as the claimed umami agents are taught to be taste improving compounds in savory compositions.
Regarding claims 109, Vasquez teaches the invention as described above in claim 101, including the composition is a mayonnaise (e.g., Example 1), which is known to include a puree of egg yolk. Further, Cepanec teaches that the umami agent is a yeast extract. Cepanec also teaches that the umami agent may be hydrolyzed vegetable protein (page 6, “Summary of Invention” (i) and (ii)). Therefore, it would have been obvious to have utilized an umami agent as taught by Cepanec in the savory compositions of Vasquez as the claimed umami agents are taught to be taste improving compounds in savory compositions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 101-112 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 93-98, 100, 102-105, and 108-112 of co-pending Application No. 18/377,913 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 101-103 and 110-111 require the same components, the same concentrations, and the same improved mouthfeel as required by co-pending claims 93, 94, and 111-112. Instant claims 112 require the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof while co-pending claim 95, 96, 97, 98, and 100 also requires the first, second, and/or third ion to be selected from citrate, sulfate, chloride, and combinations thereof. Instant claim 107 requires the umami agent to be at least one of the recited ingredients while co-pending claim 102 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claim 108 requires the umami agent to be at least one of the recited ingredients while co-pending claim 103 requires the umami agent to be at least one of the recited ingredients wherein options for the umami agent in the instant claim are the same options for the co-pending claim. Instant claims 109 require the umami agent to be an autolyzed or hydrolyzed yeast protein or hydrolyzed vegetable protein or for the umami agent to be an extract or puree prepared from a yeast, a vegetable, a cereal, a meat, a fish, a dairy product, or an egg yolk while co-pending claim 104 and 105 requires its umami agent to be the same. Instant claim 104 requires the product to be a food product and co-pending claim 108 requires the product to be a food product. Instant claims 105 and 106 require the product to be a pasta sauce or soup as required by co-pending claims 109 and 110.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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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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/KELLY P KERSHAW/Examiner, Art Unit 1791
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