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 .
Claim Objections
Claim 4 is objected to because of the following informalities: “wherein it comprises a flavor” should read “wherein it further comprises a flavor”. Appropriate correction is required.
Claims 4-8, 10, 13, 14, and 16-18 are objected to because of the following informalities: all claims recut “it”, for the purposes of clarity, the article should be changed to the complete description so as to read “wherein the composition”
Claims 5 and 16 are objected to because of the following informalities: “by weight of nutrient” should read “by weight of the nutrient”. Appropriate correction is required.
Claims 8 and 17 are objected to because of the following informalities: “a water-soluble carrier material” should read “the water-soluble carrier material”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “a taste modulator” should read “the taste modulator”. 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 12 and 19 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.
Regarding Claim 12, 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). Line 10 recites the limitation “comestible acceptable salts thereof (such as the mono-ammonium salt)”, and for the purposes of examination the recitation will not be considered as further limiting the claim.
Claim 19 recites the limitation "in the form of" in line 1. There is insufficient antecedent basis for this limitation in the claim as the limitation could refer to either the edible consumer product of the composition. For the purpose of examination, the recitation of “in the form of” will be interpreted as the edible consumer product.
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 1-4, 6-7, 9, 11-12, 15, and 19 are rejected under 35 U.S.C. 101 as evidenced by Akinmoladun et al. (Nutritional benefits, phytochemical constituents, ethnomedicinal uses and biological properties of Miracle fruit plant (Synespalum dulcificum Shumach & Thonn. Daniell, CellPress: Heliyon).
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. The following analysis is presented within the framework enumerated in MPEP § 2106.
Step 1: Is the claim directed to a statutory category of invention? Applicant’s claims are directed to a composition of matter; thus, the answer to Step 1 is Yes.
Step 2A, Prong 1: Is the claim directed to a judicial exception? In the instant case, Claim 1 is directed to a composition comprising at least one water-soluble carrier material, nutrient, and taste modulator. Claims 2-4, 6-7, 9, and 11-12 are directed to the composition recited in claim 1, wherein the specific components are further limited into vitamins, minerals, and flavors, selections therein, and selections of water-soluble carriers, and Claims 15 and 19 are directed to an edible product comprising the composition of claim 1.
The teaching of Akinmoladun et al. teaches a natural, edible, botanical product, [Abstract] comprising at least one water-soluble carrier, as selected from the limitations recited in claim 9, [Pg. 2, Sec. 4, Par. 3] nutrient, as selected from the limitation recited in claims 2-3 and 6-7, [Pg. 2, Sec. 4, Par. 4] and taste modulator, as selected from the limitations recited in claims 4 and 11-12. [Abstract] Therefore, the claims recite products of nature. MPEP § 2106.04(b) states that "When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A."
Markedly different characteristics analysis
MPEP § 2106.04(c)(I) states that "if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception...". To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states "The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”. Akinmoladun et al. teaches all the limitations in Claims 1-4, 6-7, 9, 11-12, 15, and 19, as described above.
In the instant case, there is no modification of the ingredients within the claimed composition. The fact pattern in this application is similar to that found in Funk Brothers Seed Co. V. Kalo Inoculant Co., 333 U.S. 127, 131 (1948) which stated "Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee". In the instant application each naturally occurring claim element has the same effect it always had. The claimed naturally occurring products perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee. As such, the characteristics of the claimed invention are not markedly different from their naturally occurring counterparts.
Therefore, the claims are drawn to mixtures of naturally occurring products. Thus, the answer to Step 2A, Prong One, is Yes.
Step 2A, Prong 2: Do the claims recite additional elements that integrate the judicial exception into a practical application? As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In the instant case, the only application of the instant invention is as a consumable product, which is taught by the natural product of Akinmoladun et al. [Pg. 1, Sec.1, Par. 3] Therefore, there is no practical application claimed. Thus, the answer to Step 2A, Prong Two, is No.
Step 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception? MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself”. In the instant case, there are no additional elements, therefore the answer for Step 2B is no. As such, Claims 1-4, 6-7, 9, 11-12, 15, and 19 are not directed to patent eligible subject matter.
Claims 1-4, 6-7, 9, and 11-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a composition that exists in nature without significantly more. Akinmoladun et al. teaches a natural, edible, botanical product, [Abstract] comprising at least one water-soluble carrier, specifically a protein, [Pg. 2, Sec. 4, Par. 3] nutrient, specifically vitamins A, C, D, and K and minerals Fe, Zn, Cu, and Ca, [Pg. 2, Sec. 4, Par. 4-5] and taste modulator, specifically the sweetener miraculin. [Abstract] This judicial exception is not integrated into a practical application because the applicant foes not alter the algae biomass in a significant way. Therefore, The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the composition recited is known to exist in nature with the recited components.
Claims 15 and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an edible composition without significantly more. The claims recite an edible product comprising the composition of claim 1, specifically, a botanical product, as described above. This judicial exception is not integrated into a practical application because the composition taught by Akinmoladun et al. need not be altered in a significant way in order to read on the limitations recited in claims 15 and 19, as described above. Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the composition is naturally harvestable.
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 (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 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.
Claims 1-4, 6-7, 9, 11-12, 15, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akinmoladun et al. (Nutritional benefits, phytochemical constituents, ethnomedicinal uses and biological properties of Miracle fruit plant (Synespalum dulcificum Shumach & Thonn. Daniell), CellPress: Heliyon).
With respect to Claim 1, Akinmoladun et al. teaches a natural, edible, botanical product, [Abstract] comprising at least one water-soluble carrier, specifically a protein, [Pg. 2, Sec. 4, Par. 3] nutrient, specifically vitamins A, C, D, and K and minerals Fe, Zn, Cu, and Ca, [Pg. 2, Sec. 4, Par. 4-5] and taste modulator, specifically the sweetener miraculin. [Abstract] Therefore, Akinmoladun et al. anticipates the invention recited in claim 1.
With respect to Claims 2, 3, 6, and 7, Akinmoladun et al. teaches at least one nutrient, specifically vitamins A, C, D, and K and minerals Fe, Zn, Cu, and Ca, [Pg. 2, Sec. 4, Par. 4-5] Therefore, Akinmoladun et al. anticipates the invention recited in claims 2, 3, 6, and 7.
With respect to Claim 4, Akinmoladun teaches a taste modulator in the form of the flavor of the miracle fruit. [Pg. 2, Sec. 4, Par. 3]
With respect to Claims 11 and 12, Akinmoladun et al. teaches a taste modulator, specifically the sweetener miraculin. [Abstract] Therefore, Akinmoladun et al. anticipates the invention recited in claims 4, 11, and 12.
With respect to Claim 9, Akinmoladun et al. teaches a water-soluble carrier, specifically a protein. Therefore, Akinmoladun et al. anticipates the invention recited in claim 9.
With respect to Claims 15 and 19, Akinmoladun et al. teaches a natural, edible, botanical product. [Abstract] Therefore, Akinmoladun et al. anticipates the invention recited in claims 15 and 19.
Claims 1-5, 9-12, 15, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bok et al. (US 6,465,019 B1).
With respect to Claim 1, Bok et al. teaches a spice composition, [Example 9] comprising a water-soluble carrier material in the form of corn starch, nutrients in the form of vitamins and minerals, and taste modulators in the form of citrus peel powder and sucrose. [Table III] Therefore, Bok et al. anticipates the invention of claim 1.
With respect to Claims 2, 3, 5, and 16, Bok et al. teaches a spice composition, [Example 9] comprising nutrients in the form of vitamins and minerals at about 4%. [Table III] Therefore, Bok et al. anticipates the invention recites in claims 2, 3, 5, and 16.
With respect to Claim 4, 10, and 18, Bok et al. teaches a spice composition, [Example 9] comprising a taste modulators in the form of citrus peel powder at 4.5%. [Table III] Therefore, Bok et al. anticipates the invention of claims 4 and 10.
With respect to Claim 9, Bok et al. teaches a spice composition, [Example 9] comprising a water-soluble carrier material in the form of corn starch. [Table III] Therefore, Bok et al. anticipates the invention of claim 9.
With respect to Claims 11 and 12, Bok et al. teaches a spice composition, [Example 9] comprising a taste modulator comprising hesperidin, [Col. 4, Ln. 27] known to have a sweetness enhancing effect. Therefore, Bok et al. anticipates the invention of claims 11 and 12.
With respect to Claim 15, Bok et al. teach their spice composition to be added to edible consumer products [Col. 2, Ln. 48-50].
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 1-5, 7-11, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tanka et al. (5,709,895).
With respect to Claim 1, Tanaka et al. teaches a composition comprising water-soluble carrier materials, [Col. 3, Ln. 34-38] at least one nutrient in the form of antioxidants, and at least one taste modulator in the form of a flavor. [Col. 5, Ln. 13-45] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Tanka et al. to produce the composition recited in claim 1.
With respect to Claims 2, 3, 5, 7, and 16, Tanaka et al. teaches the invention recited in claim 1, as described above. Additionally, Tanka et al. teaches the use of vitamin E and vitamin C between 0.1-2% by weight of the flavor. [Col. 5, Ln. 50-57] This teaching reads on the limitations of the nutrient being selected from a vitamin, specifically vitamin E, between 0.1-50% as recited in claims 2, 3, 5, and 7. Additionally, MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. The range of 0.1-2% overlaps with the range recited in claim 16 of 0.5-30%. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention to have produced a composition according to the claims 2, 3, 5, 7, and 16, thereby rendering the claims obvious.
With respect to Claims 4, 10, 11, and 18, Tanaka et al. teaches the invention recited in claim 1, as described above. Additionally, Tanaka et al. teaches the use of a flavor at about 20% the amount of the carrier material, [Col. 5, Ln. 22-24] including 1-menthol, [Col. 5, Ln. 38] known for its cooling effect, as recited in claim 11. The amount of flavor taught overlaps with the amount recited in claims 10 and 18, and MPEP 2144.05 I states, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Tanaka et al. in order to produce a composition with the limitations of claims 4, 10, 11, and 18, thereby rendering the claims obvious.
With respect to Claims 8, 9, and 17, Tanaka et al. teaches the invention recited in claim 1, as described above. Additionally, A specific embodiment of the invention taught comprises starch, dextrin, and isomalt at 70% the total composition. [Example 1] This reads on the use of a starch derivative and a polysaccharide as a water-soluble carrier material, as well as teaching an amount of the water-soluble carrier that lies within the ranges recited in claims 8 and 17. Therefore, Tanaka et al. renders claims 8, 9, and 17 obvious.
With respect to Claim 13, Tanaka et al. teaches the invention recited in claim 1, as described above. Additionally, Tanaka et al. teaches that the composition is extruded. [Col. 3, Ln. 40] Therefore, Tanaka et al. renders claim 13 obvious.
With respect to Claim 14 and 15, Tanaka et al. teaches the invention recited in claim 1, as described above. Additionally, Tanaka et al. teaches adding the flavor-containing capsules of the invention taught to candies and chewing gums. [Col. 7, Ln. 11-13] The dried capsules produced by the invention taught by Tanaka et al. teach a material that can be used as a coating material. Therefore, Tanaka et al. renders obvious claims 14 and 15.
Conclusion
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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