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 .
Election/Restrictions
Applicant's election with traverse of group III, claims 12-16 in the reply filed on 24 April 2026 is acknowledged. The traversal is on the grounds that unity of invention exists and the special technical feature makes a contribution over the prior art. This is not found persuasive because having claims drawn to the product, use of the product and manufacture of the product does not remove the requirement that a special technical feature between the invention groupings must still exist. Additionally, applicant identifies the use of glucosyl naringin to enhance saltiness as the special technical feature, however, this feature is not positively recited in all of the groups. Claims 4-10 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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 12, 15 and 16 are rejected under 35 U.S.C. 101 because the claims are not directed to a valid statutory class of invention.
Regarding claims 12-16, as stated in MPEP 217305(q) “"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("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 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Instantly pending claims 12, 15 and 16 each recite the “use” of glucosyl naringin, but fail to recite any positively recited method steps associated with this use. Therefore, claims 12, 15 and 16 fail to satisfy the requirements of 35 U.S.C. 101.
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 12-16 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 claim recites the “use” of glucosyl naringin for manufacturing a composition, but fails to positively any method steps corresponding to the claimed use. As such, it is not clear what method is encompassed by the claim. (See MPEP 2173.05(q)) Claims 13-16 depend from claim 12 and inherent the deficiencies thereof. Since it is unclear what method is encompassed by claims 12-16, accordingly, these claims have not been considered for prior art rejections. As stated in MPEP 217306 II “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
Claim 13 recites “wherein the use comprises a step adding a saltiness enhancing composition comprising glucosyl naringin”. This limitation fails to what the saltiness enhancing composition must be added to. As such, it is not clear what the scope of claim 13 is. Claim 14 depends from claim 13 and necessarily inherits the deficiencies thereof.
Claims 15 and 16 recite proportions of glucosyl naringin in terms of “salt equivalent”. It is unclear how to measure a proportion of GN relative to a “salt equivalent”. Applicant’s specification describes salt equivalent in various units of grams, grams/100 g and percentage. It is unclear what units the salt equivalent recited in claim 15 must have. It is unclear in claim 16 if the “salt equivalent” recited is for the GN or for salt in the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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