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 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 3-4 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 Claims 3-4, 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).
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 15-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a naturally occurring product without significantly more. The claims recite a structure and amount of fatty acid and a bitter tastant, which are met by naturally occurring products. This judicial exception is not integrated into a practical application because the claimed invention does not represent significantly more than what occurs in nature and is not considered to be patent eligible subject matter. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims recite a composition which lies within the range of naturally occurring products.
Regarding Claims 15-17, whole sweet potatoes comprise 2 milligrams of lauric acid per 100 grams of sweet potato, which is 20 ppm (see evidentiary reference of (https://wholefoodcatalog.info/nutrient/lauric_acid/potatoes_and_starches/high/). Note that lauric acid is a C12 fatty acid, with R1, R2, and R2 equal to a hydrogen atom and m, n values overlapping the claimed range according to the claim, e.g. m=1 to 12, n=0 to 11. Whole sweet potatoes are additionally known to comprise bitter tastants (see evidentiary reference of Lower, https://lifehacker.com/how-to-make-sweet-potato-skins-taste-delicious-1846159787, second to last paragraph).
Claim Rejections - 35 USC § 102
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 1-2, 5, 8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogi (“Long-Chain Fatty Acids Elicit a Bitterness-Masking Effect on Quinine and Other Nitrogenous Bitter Substances by Formation of Insoluble Binary Complexes”, DOI: 10.1021/acs.jafc.5b03193, September 2015).
Regarding Claims 1-2 and 13, Ogi teaches the use of the sodium salts of saturated fatty acids to mask bitter flavors in food (Introduction, Paragraph 1 and Page 8495, Table 1), such as nitrogenous bitter substances (Page 8498, Discussion, Paragraph 1). Note that lauric acid is a C12 fatty acid, with R1, R2, and R3 equal to a hydrogen atom and m, n values lying within the claimed range according to the claim, e.g. m=1 to 12, n=0 to 11.
Regarding Claims 5 and 8, Ogi teaches that the food composition comprises a bitter tastant, such as known pharmaceutical ingredients (Page 8494, Materials and Methods, “Screening of Bitter Substances”).
Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collins (https://theconversation.com/hate-vegetables-you-might-have-super-taster-genes-74428) taken with evidentiary reference of Taormina (“Branched-Chain Fatty Acids—An Underexplored Class of Dairy-Derived Fatty Acids”, DOI: 10.3390/nu12092875)
Regarding Claims 1, 3, and 4, Collins teaches that the addition of cheese masks bitter flavors (Page 3, “How to trick your taste buds into loving vegetables”)
Taormina teaches that dairy products such as cheese comprise branched chain fatty acids (Page 2, Figure) that lie within the claimed structural range (note that anteiso-methylhexadecanoic acid has R1 equal to a C1 alkyl, R2 and R3 equal to a hydrogen atom, m=1, n=12 according to Claim 3, and R1 equal to a hydrogen atom, R2 equal to a C2 alkyl, R3 equal to a C1 alkyl according to Claim 4).
Where Taormina teaches that branched fatty acids are present in cheese, and Collins teaches the addition of cheese to bitter foods to reduce bitterness, the method of Collins teaches the addition of fatty acids to reduce a bitter taste as claimed.
Claim 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collins taken with evidentiary reference of Homma (“Identification of Bitterness-Masking Compounds from Cheese”, DOI: 10.1021/jf300563n, April 2012)
Regarding Claims 1 and 2, Collins teaches that the addition of cheese masks bitter flavors (Page 3, “How to trick your taste buds into loving vegetables”)
Homma teaches that fatty acids mask bitter flavors in cheese (Abstract), and that cheese comprises lauric acid (Page 4495, Table 1).
Note that lauric acid is a C12 fatty acid, with R1, R2, and R3 equal to a hydrogen atom and m, n values lying within the claimed range according to Claims 1 and 2, e.g. m=1 to 12, n=0 to 11.
Where Homma teaches that fatty acids according to Claims 1 and 2 are present in cheese, and Collins teaches the addition of cheese to bitter foods to reduce bitterness, the method of Collins teaches the addition of fatty acids to reduce a bitter taste as claimed.
Claims 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whole Food Catalog, taken with evidentiary reference of Lower.
Regarding Claims 15-17, whole sweet potatoes, which an ingestible composition, comprise 2 milligrams of lauric acid per 100 grams of sweet potato, which is 20 ppm (see evidentiary reference of (https://wholefoodcatalog.info/nutrient/lauric_acid/potatoes_and_starches/high/). Note that lauric acid is a C12 fatty acid, with R1, R2, and R2 equal to a hydrogen atom, m equal to the claimed range, and n lying within the claimed range. (m ranges from 1-12, n ranges from 0 to 11). Whole sweet potatoes are additionally known to comprise bitter tastants (see evidentiary reference of Lower, https://lifehacker.com/how-to-make-sweet-potato-skins-taste-delicious-1846159787, second to last paragraph).
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ogi as applied to Claim 1, above, in view of Maehashi (“Bitter peptides and bitter taste receptors”, DOI: 10.1007/s00018-009-8755-9, January 2009)
Regarding Claims 6 and 7, Ogi teaches that the method is effective for foods comprising nitrogenous bitter tastants, but does not specifically address plant proteins as claimed.
Maehashi teaches that soy proteins are known to have a bitter taste due to peptides (Page 1662, Column 2, Paragraph 3). Note that peptides are nitrogenous compounds.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the method of Ogi for a food comprising soy protein. One would have been motivated to make such a modification since Ogi teaches the method for food comprising nitrogenous bitterants, and Maehashi teaches that soy protein is a food known to contain nitrogenous bitterants.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ogi as applied to Claim 1, above, in view of Bobowski (“Variation in the TAS2R31 bitter
taste receptor gene relates to liking for the nonnutritive sweetener Acesulfame-K among children and adults”, DOI: 10.1038/srep39135, December 2016) taken with evidentiary reference of Foodb (https://foodb.ca/compounds/FDB012173)
Regarding Claim 9, Ogi teaches that the method is effective for foods comprising nitrogenous bitter tastants, but does not specifically address high intensity sweeteners.
Bobowski teaches that acesulfame-potassium has a known bitter taste.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the method of Ogi for a food comprising a high intensity sweetener. One would have been motivated to make such a modification since Ogi teaches the method for food comprising nitrogenous bitterants, and Bobowski teaches that acesulfame potassium is known for a bitter taste. Note that acesulfame potassium is a nitrogenous high intensity sweetener (see evidentiary reference of Foodb).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ogi as applied to Claim 1, above, in view of University of Illinois (https://phys.org/news/2010-12-ginseng-bitter.html)
Regarding Claim 10, Ogi teaches that the method is effective for foods comprising nitrogenous bitter tastants, but does not specifically address ginseng.
University of Illinois teaches that ginseng is known to contain bitter compounds with peptide bonds (Page 2, Paragraph 3). Note that peptide bonds contain nitrogen; ginseng therefore comprises bitter nitrogenous compounds.
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the method of Ogi for a food comprising ginseng. One would have been motivated to make such a modification since Ogi teaches the method for food comprising nitrogenous bitterants, and University of Illinois teaches that ginseng contains nitrogenous bitterants.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ogi as applied to Claim 1, above, and in view of Coffee Research (https://www.coffeeresearch.org/science/bittermain.htm) and taken with evidentiary reference of ChemSpider (https://www.chemspider.com/Chemical-Structure.5369.html)
Regarding Claim 11, Ogi teaches that the method is effective for foods comprising nitrogenous bitter tastants, but does not specifically address its use in coffee or tea.
Coffee Research teaches that coffee comprises the bitter compound trigonelline (Page 2, Paragraph 3), which is a nitrogenous compound (see evidentiary reference of ChemSpider).
Therefore, it would have been obvious to one having ordinary skill in the art before the filing date of the claimed invention to utilize the method of Ogi for coffee. One would have been motivated to make such a modification since Ogi teaches the method for food comprising nitrogenous bitterants, and Coffee Research teaches that coffee contains nitrogenous bitterants.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ogi as applied to Claim 1, above.
Regarding Claim 12, Ogi teaches that umami is a known taste in food (Introduction, Paragraph 1). Where Ogi teaches the use of fatty acids in foods, and additionally teaches that umami is a known taste in foods, it would have been obvious to utilize the method of Ogi in a food comprising umami tastants (i.e. having an umami taste).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
Prosecution Insights