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 .
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.
Restriction Requirement
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 13-20, drawn to a composition comprising: (a) a compound of formula (I), (b) one or more sweet tasting substances; and (c) optionally, one or more sweet taste modulating substances.
Group II, claims 21-26, drawn to a method for optimizing flavor of one or more sweet tasting substances comprising: (i) providing a compound of formula (I), (ii) combining the compound of formula (I) with one or more sweet tasting substances of (i); and (iii) optionally, combining the compound of formula (I), the one or more sweet tasting substances of (i), or mixture thereof, with one or more sweet-taste modulating substances.
Group III, claims 27-30, drawn to a method of producing a compound of formula (I) of claim 13 comprising: (i) providing trilobatin, an extract from Lithocarpus litseifolius or Lithocarpus polystachyus leaf material, an extract from Malus trilobata root material, or mixtures thereof; and (ii)
subjecting the trilobatin or the extract of (i) to a chemical or enzymatic
alkanoylation.
As set for the in Rule 13.1 of the Patent Cooperation Treaty (PCT), “the international application shall relate to one invention only or to a group of inventions so linked as to from a single general inventive concept.” Moreover, as stated in PCT Rule 13.2, “where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features." Furthermore, Rule 13.2 defines “special technical features” as “those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.”
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The special technical feature of Group I is a composition comprising: (a) a compound of formula (I) and (b) one or more sweet tasting substances. This composition is not novel in view of Zhao (Anal. Methods, 2014, 6, 1359 and the Supplementary Material, attached). Zhao teaches the phenolic constituents in Lithocarpus polystachyus comprise the compound of formula (I), named 6"-O-acetyltrilobatin (see compound 56 in the Supplementary Material), and the sweet-tasting compound phloretin.
As such, Group I does not share a special technical feature with the instant claims of Groups II and III. Therefore, the claims are not so linked within the meaning of PCT Rule 13.2 so as to form a single inventive concept, and unity between Groups I-III is broken.
Inventorship
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product 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 are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to 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.
Telephonic Election
During a telephone conversation with attorney James Balls on March 19, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 13-20. Affirmation of this election must be made by applicant in replying to this Office action. Claim 21-30 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Status
Claims 1-12 are cancelled.
Claims 13-30 are newly added and are pending.
Claims 21-30 are withdrawn.
Claims 13-20 are examined on the merits in this prosecution.
Claim Objections
Claims 17 and 18 are objected to because of the following informalities: in the first line of claim 17 and the second line of claim 18, the modulating substances are referred to as “(iii)”. The Examiner interprets this term as referring to “(c)” in claim 13. Appropriate correction is required.
In claim 18, the term “phloretin” is recited in both lines 3 and 4. Appropriate correction is required.
CLAIM REJECTIONS
Invention directed to non-statutory subject matter
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 13-20 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 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 13-20 are directed to a composition comprising a compound of Formula (I), one or more sweet tasting substances, and optionally, one or more sweet taste modulating substances. This composition is present in a natural substance, namely the plant Lithocarpus polystachyus, and as such the claimed invention is considered a judicial exception, namely a composition of nature. The claims recite only theses three elements and do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The Lithocarpus polystachyus plant, as described by Zhao (Anal. Methods, 2014, 6, 1359 and the Supplementary Material, attached), L. polystachyus contains the compound of formula (I) (compound 56, named 6"-O-acetyltrilobatin, mass M-H = 477) and the sweetener / sweet taste modulating substance phloretin (compound 58), while Guo (Foods 2021, 10, 1779) teaches extracts of Lithocarpus polystachyus contain sweet monosaccharides such as mannose (a sugar alcohol), rhamnose, glucose, galactose, xylose and arabinose (pg 8, Section 3.2.2).
Anticipation Rejection
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.
1) Claims 13 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao (“Characterization of phenolic constituents in Lithocarpus polystachyus,” Anal. Methods, 2014, 6, 1359).
Zhao teaches the phenolic constituents in Lithocarpus polystachyus comprise the compound of formula (I), named 6"-O-acetyltrilobatin (see compound 56 in the Supplementary Material), and the sweet compound phloretin (compound 56 in the Supplementary Material; pg 1361, right column, bottom paragraph).
For claim 20, Zhao teaches the leaves of Lithocarpus polystachyus have been used for treating disorders such as diabetes, hypertension, and epilepsy; additionally, these leaves have traditionally been widely used as a food material called 'Baise sweet tea' in south China (pg 1359, Introduction).
Obviousness Rejections
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao (cited above), in view of Yang (“A highly regioselective route to arbutin esters by immobilized lipase from Penicillium expansum,” Bioresource Technology, Volume 101, Issue 1, January 2010, pages 1-5).
Zhao teaches a mixture comprising trilobatin obtained from Lithocarpus polystachyus (pg 1359, Introduction).
Zhao does not teach the conversion of trilobatin to 6’’-O-acetyltrilobatin.
Yang teaches the missing element of Zhao.
Zhao teaches a highly regioselective route to arbutin esters (see structure of arbutin, below) using an immobilized lipase from Penicillium expansum (Title). As seen in the structure, arbutin contains the glucose group comprising four hydroxy groups and a phenol group; similar structural features are found in trilobatin.
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arbutin trilobatin
Zhao teaches the regioselectivity for acetylation of the 6’ position is greater than 99% over a range of lipases, including Novozym 435, a lipase derived from Candida antartica B (Table 1, pg 3).
The skilled artisan would have expected success in utilizing a lipase from Penicillium expansum or a lipase derived from Candida antartica B in a method of obtaining 6’’-O-acetyltrilobatin from the trilobatin in the composition of Zhao since Yang teaches that the 6’ position of glucose in arbutin, which structurally coincides with the 6” position of trilobatin, is selectively acetylated using a lipase from Penicillium expansum or a lipase derived from Candida antartica B. The person of ordinary skill in the art would have found it obvious to utilize a lipase from Penicillium expansum or a lipase derived from Candida antartica B because ordinarily skilled artisans would have predicted that the 6” position is in a structurally similar position as the 6’ position of arbutin, and the enzymes are extremely selective (>99%) for acylation in that position. It is noted that the instant specification discloses a lipase derived from Candida antarctica B as a preferred catalyst for acylation in the 6” position of trilobatin (instant specification, pg 20: 1-7).
2) Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao (cited above), in view of Guo (“The Chemical, Structural, and Biological Properties of Crude Polysaccharides from Sweet Tea (Lithocarpus litseifolius (Hance) Chun) Based on Different Extraction Technologies,” Foods 2021, 10, 1779; cited above).
The teachings of Zhao are discussed above.
Zhao does not teach the sweet tasting substances recited in claim 15.
Guo teaches the missing element of Zhao.
Guo teaches a range of extraction technologies to extract Lithocarpus litseifolius leaves (Abstract; pg 2, 2.1. Materials and chemicals). Guo teaches the extracts of Lithocarpus polystachyus contain sweet monosaccharides such as mannose (a sugar alcohol), rhamnose, glucose, galactose, xylose and arabinose (pg 8, Section 3.2.2), reading on claims 15 and 16.
For claims 17 and 18, Guo teaches the extracts of Lithocarpus polystachyus contain sweet monosaccharides and Zhao teaches the compound of formula (I) and the sweet-taste modulating compound phloretin (see citations above).
It would have been obvious to one of ordinary skill in the art to prepare a product comprising the compound of formula (I) and the sweetener/sweet modulating compound phloretin, as taught by Zhao, and the sweet monosaccharides taught by Guo, since Gao teaches that sweet monosaccharides such as glucose are naturally present in extracts of Lithocarpus polystachyus, and the presence of the sweet monosaccharides would be predicted to make a more appealing sweet tea composition to consumers.
3) Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao (cited above), in view of Meng (“Phytochemicals and bioactive analysis of different sweet tea (Lithocarpus litseifolius [Hance] Chun) varieties,” J Food Biochem. 2020; 45:e13183) and Liu (“Phenolic Content, Main Flavonoids, and Antioxidant Capacity of Instant Sweet Tea (Lithocarpus litseifolius [Hance] Chun) Prepared with Different Raw Materials and Drying Methods,” Foods 2021, 10, 1930).
The teachings of Zhao are discussed above.
Zhao does not teach the amount of formula (I) are present in a product.
Meng and Liu teach the missing element of Zhao.
Meng teaches the concentration of compound (I), named by Meng “Phloretin 2ʹ-O-(6ʺ-O-acetyl glucoside), in a variety of L. litseifolius cultivars, (pg 8, Table 3, Entry 28), is 0.33 to 2.48 mg/g of leaf material, or 333 to 2480 ppm).
Liu teaches that the ratio of water to leaf material of L. litseifolius is 19:1 (Abstract). As such, the amount of the compound of formula (I) in a sweet tea formulation is expected to be 5% of 333 ppm to 2480 ppm, an amount overlapping the claimed range of less than 180 ppm. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup, can be reached on (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612