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 the Application
Claims 6-26 filed in a preliminary amendment on 8/2/2024 are pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/2/2024 was filed before the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 6-10 and 12-26 are rejected under 35 USC 103 as being unpatentable over Kinghorn et al. (WO88/08256, cited in an IDS) in view of Ley et al. (US2002/0188019A1)
Kinghorn discloses dihydroflavonol derivatives having the same flavanone/chroman-4-one molecular structure as the presently claimed compounds and permits the substituent in the 3-position to be O-C1-C10 alkyl, thereby encompassing the claimed 3-O-C1-C6 alkyl substituent. Kinghorn further discloses hydrogen, hydroxy, and alkoxy substitution on the aromatic rings.
Kinghorn refers to the compounds as “dihydroflavonol derivatives”, whereas applicant refers to the claimed compounds as 3-alkoxyflavonones, with respect to the overlapping 3-O-alkyl structures.
Kinghorn further discloses incorporating the compounds into ingestible compositions and their use to impart a desired degree of sweetness.
Kinghorn discloses for example that its synthetic scheme permits variation of the functional groups at positions 3,5,7,3, and 4’ of its intensely sweet compound II and further teaches that compounds within its broader genus may be prepared by conventional modification of known starting materials with varying taste characteristics, motivating one of ordinary skill in the art to vary substitution on the taste-active flavonoid structure with a reasonable expectation of success.
Ley discloses closely related hydroxyflavanones, that is hydroxyl-substituted 2-phenylchroman-4-ones, for reducing or masking bitter taste in ingestible compositions. Ley further discloses hydrogen, hydroxy, alkyl, and alkoxy substitution on the structures.
It would have been obvious to one of ordinary skill in the art to use the overlapping 3-O-alkyl compounds taught by Kinghorn for reducing bitterness as taught by Ley based on the successful application of the closely related compounds in Ley to obtain the claimed flavor modifying effect, with a reasonable expectation of success.
Claim 6: Ley discloses using hydroxyflavanones to reduce or mask bitter taste. Accordingly it would have been obvious to one of ordinary skill in the art to employ Kinghorn’s overlapping 3-O-alkyl compounds for the bitterness-reducing purpose taught in Ley .
Claim 7: Ley discloses hydroxyflavanones in finished ingestible preparations at a more preferred concentration of 0.0001-0.1% by weight , [0039] corresponding to 1-1000ppm, which overlaps the claimed range.
Claims 8-10: Ley discloses ingestible compositions containing bitter substances and specifically identified bitter or bitter aftertaste substances including synthetic sweeteners and potassium chloride, [0037] rendering the claimed limitations obvious.
Claim 12: Ley specifically discloses reducing undesirable taste in oral pharmaceutical preparations and identifies bitter pharmaceutical active compounds as suitable bitter substances [0037].
Claim 13: Kinghorn discloses adding its compounds to foodstuffs in amounts sufficient to obtain a desired degree of sweetness. It would have been obvious to one of ordinary skill in the art to introduce an overlapping compound into an ingestible composition to enhance its sweet taste. Describing the sensory result as enhancing sweet taste rather than imparting or increasing sweetness does not distinguish the claimed use from Kinghorn’s teaching.
Claim 14: Ley’s more preferred 1-1000ppm concentration range overlaps the claimed 0.1-1000ppm range. Kinghorn additionally discloses selecting the amount of compound according to the desired sweetness level[0039].
Claim 15: Kinghorn discloses introducing the compounds into ingestible compositions for their sweet taste, and Ley discloses ingestible compositions containing bitter substances together with flavanone taste modifiers. The claimed composition therefore would have been obvious.
Claim 16: Kinghorn discloses ingestible compositions containing the overlapping 3-O-alkyl compounds. Ley discloses flavanone-containing ingestible compositions together with conventional food ingredients including sucrose, fructose, dextrins, inulin, cellulose, and sugar alcohols [0043]. Such materials correspond to conventional bulking materials encompassed by the presently claimed bulking-agent limitation. It would have been obvious to include such a conventional bulking material in Kinghorn’s ingestible composition for its known formulation function with a reasonable expectation of success.
Claim 17: Ley specifically discloses that its flavanone- containing ingestible preparations may further contain sweeteners, including saccharin, cyclamate, aspartame and neotame [0018]. It would have been obvious to one of ordinary skill in the art to have included an additional sweetener in the composition with a reasonable expectation of enhancing sweetness and modifying bitterness.
Claim 18: Ley specifically discloses hydroxyflavanones in finished ingestible preparations at a more preferred concentration of 0.0001-0.1% by weight [0039], corresponding to 1-1000ppm, which overlaps the claimed range.
Claim 19: Kinghorn discloses foodstuffs containing taste-active compounds, while Ley discloses food, beverages and other consumable preparations containing flavanone taste modifiers. The claimed flavored product would therefore have been obvious.
Claim 20: Kinghorn specifically discloses food and beverage products, and Ley discloses food, drink and oral pharmaceutical preparations (claim 2, [0017]), comprising flavor modifying compounds as claimed.
Claim 21: Kinghorn’s 3-O-C1-10 alkyl genus encompasses O-methyl and O-ethyl, corresponding to x being either ethyl or methyl. Kinghorn and Ley further disclose aromatic substitution by hydrogen, hydroxy, and alkoxy groups , including the hydrogen, methyl, hydroxy and methoxy selections recited in claim 21. Selection of the claimed lower substituent alternatives in modified Kinghorn would have been obvious to one of ordinary skill in the art.
Claim 22: Ley discloses preferred hydroxyflavanone embodiments having hydrogen at positions corresponding to R2 and R4.
Claim 23: Ley discloses preferred hydrogen substitution at positions R5 and R9 and identifies hydrogen as an available substituent in position R6. Selection of substitution at R6 together with R5 and R9 in modified Kinghorn would therefore have been obvious.
Claim 24: Kinghorn’s 3-O-C1-10 alkyl genus encompasses O-methyl and O-ethyl, corresponding to x being either ethyl or methyl. Kinghorn and Ley further disclose aromatic substitution by hydrogen, hydroxy, and alkoxy groups , including the hydrogen, methyl, hydroxy and methoxy selections recited in claim 21. Selection of the claimed lower substituent alternatives in modified Kinghorn would have been obvious to one of ordinary skill in the art.
Claim 25: Ley discloses preferred hydrogen substitution at positions corresponding to R2 and R4 [0026] motivating one of ordinary skill in the art to similarly apply the substitution in modified Kinghorn with a reasonable expectation of success.
Claim 26: Ley discloses preferred hydrogen substitution at positions R5 and R9 and identifies hydrogen as an available substituent in position R6 [0026]. Selection of substitution at R6 together with R5 and R9 in modified Kinghorn would therefore have been obvious.
Claim 11 is rejected under 35 USC 103 as being unpatentable over Kinghorn in view of Ley and further in view of Bertelsen (Journal of Science of Food and Agriculture 98(10):3860-3869 (2018)).
Kinghorn and Ley render obvious the bitterness reducing method of claim 6 for the reasons stated above. Claim 11 requires that the bitter tastant comprises a plant protein.
Bertelsen discloses that enzyme-treated soy protein, which inherently contains peptides, exhibits undesirable bitterness and teaches significantly reducing that bitterness by addition of taste masking agents (abstract).
Ley discloses hydroxyflavanones for reducing bitter taste and additionally identifies bitter peptide fragments as bitter substances [0017] susceptible to masking by its hydroxyflavanones.
It would therefore have been obvious for one of ordinary skill in the art to apply related compounds in Kinghorn to reduce bitter taste of plant proteins inherently comprising peptides, with a reasonable expectation of success.
Claims 6-26 are therefore prima facie obvious in view of the art.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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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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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793
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