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 . Claims 1-10 are rejected herein.
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.
Claims 1-3 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over KK.
KK: KAWASAKI KIYOMITSU: published as JP 2005-13138 A on 20-Jan-2005.
Independent claim 1
KK teaches about mixtures of food flavorings (i.e. food products), comprising: seaweed extracts (i.e. concentrates) (0002) and the other claimed ingredients, further discussed below.
Seaweed extracts
KK teaches the food flavoring mixture, includes:
colorants, including: Haematococcus algae pigment (0062);
spices flavors, including: seaweed extract (0064);
thickening stabilizers, including: seaweed cellulose and brown algae extract (0064);
seasonings, including: seawater potassium chloride (0068);
production agents, including: seaweed ash extract and seawater magnesium chloride (0071);
wherein each of these ingredients encompass a seaweed concentrate or product derived therefrom, as claimed.
Food flavorings
KK teaches the food flavoring mixture, includes spice flavor materials (0091), including:
aldehydes (D) compounds, including:
2-decenal, otherwise known as 2(E)-decenal;
2-methylbutanal, otherwise known as 2- methylbutyraldehyde; and
isobutanal, otherwise known as isobutyraldehyde (0013); and
furan (J) compounds, including:
5-methylfurfural, and
furfural (0019),
which encompass at least three components from the group claimed to be in a food product.
Rationale for obviousness
As for the aldehyde (D) compounds and furan (J) compounds in a single embodiment: KK shows embodiments wherein at least one from the taught aldehyde (D) compounds and furan (J) compounds are used in the spice mixture made (ref. clm. 1), as spice flavorants:
wherein the aldehyde (D) compounds, include:
2-decenal, otherwise known as 2(E)-decenal;
2-methylbutanal, otherwise known as 2- methylbutyraldehyde; and
isobutanal, otherwise known as isobutyraldehyde (ref. clm. 6); and
the furan (J) compounds include:
5-methylfurfural, and
furfural (ref. claim 12);
therefore imparts that it was known for this combination of ingredients to be used when making food because such a thing was successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select these ingredient in a mixture for consumption, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
As for as the use of a seaweed concentrate or product derived therefrom in a single embodiment: KK shows that each of the claimed a seaweed extracts or product derived therefrom have a function when being used for making food mixtures, therefore it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making foods, as KK, to include:
Haematococcus algae pigment, for its function as a food coloring;
seaweed extract, for its function as a food spice;
seaweed cellulose and/or brown algae extract, for their function as food thickening stabilizers;
seawater potassium chloride, for its function as a food seasoning; and
seaweed ash extract and/or seawater magnesium chloride for their function as food production agents, because KK shows that these ingredients are known for use for their function, which imparts a reasonable expectation of success because they were successfully used when making food and published about at the time of filing, which means it was within the general skill of a worker in the art to select these ingredient in a mixture for consumption, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
Further, the law is replete with cases in which the difference between a claimed invention and the prior art is that the claimed variable is taught within a large amount of them. These cases have consistently held that the Appellant must show that a particular thing is critical, with evidence, by showing that the claimed variable achieves unexpected results relative to the smaller variable of the prior art because a broad teaching of a claimed variable makes this lessor known item obvious.
Therefore, it would have been obvious to one of skill in the art, at the time of filing to modify the method of making food, as KK, to include:
a seaweed concentrate or product derived therefrom; and
at least three components from the group consisting ot: 2- methylbutyraldehyde, 5-methylfurfural, furfural, 2(E)-decenal, and isobutyr aldehyde------------------------, as claimed, because KK shows that all of these ingredients to have been successfully known for use for their specific functions and published at the time of filing, which means it was within the general skill of a worker in the art to select them when making food, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious.
In summary, applicant claims a formula for making a nutritional composition that use or eliminate common ingredients, and does not amount to invention in the constantly developing art of preparing food because there is no specific showing that establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. It is long and commonly known that the object of for people of skill for cooking (e.g. cooks, chefs, and bakers) is to use or eliminate common ingredients to formulate food that is palatable. Such an act, the formulation or creation a food recipe, is not patentable because it does not make a scientific advancement in the field unless a new/novel reaction, coaction or cooperative relationship is made evident by such a creation. In other words, the act of making food or food recipes that taste good, even if the combination of the ingredients is not known or has not been done before, is not patentable subject just because it was done.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of this specific instant case.
At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Dependent claims
As for claim 2, KK provides all of the ingredeints in the claimed group, therefore encompasses the use of at least four of them, as claimed.
As for claim 3, KK provides the food product further comprises carboxylic acids, including: myristic acid and palmitic acid (0017), as claimed.
As for claim 6, KK provides the food product further comprises at least one of lauric acid (0035) and oleic acid (0017).
As for claim 7, KK provides the use of the claimed aldehyde (D) compounds (ref. clm. 12) and furan (J) compounds (ref. clm. 6), as discussed in the rejection of claim 1 above.
KK provides the use of carboxylic acids, including: myristic acid and palmitic acid (0017), as claimed.
KK provides the use of lauric acid (0035) and oleic acid (0017), as optionally claimed.
As for the sum of components a) to e): KK provides the use of from zero to 100 wt% of the aldehyde (D) compounds and from 0 to 100 wt% of the furan (J) (0010), therefore the teaching encompasses at least 5 parts by weight of the combination, based on the total weight of the food product, as claimed.
As for claim 8, as for the sum of components f) to i) of claim 8: KK provides
0 to 20% by weight of (H) carboxylic acid components (i.e. myristic acid, palmitic acid, oleic acid and lauric acid), therefore encompasses at most 50 parts by weight, based on the total weight of the food product, as claimed.
As for claims 9-10, KK provides that the food product includes:
soups, sauces, savoury concentrates, dressings, seasonings, condiments, snacks foods and meat products (0076), as in claim 9;
wherein the teaching of meat products, encompasses the use of meat analogues, meat extenders and meat substitutes, as in claim 10.
Further, since the modified teaching provides a similar food composition comprising similar amounts of similar ingredients, which reflects the breadth of the claimed composition, absent a showing of criticality, with evidence, it would be reasonable to expect that the composition taught would have the intended use of:
soups, sauces, bouillons, savoury concentrates, dressings such as vinaigrettes and salad dressings, seasonings, condiments, snacks, meat analogues and /or meat extenders and/or meat substitutes, as in claim 9; and
meat analogues and /or meat extenders and/or meat substitutes, as in claim 10; because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over KK, as applied to claims 1-3 and 6-10 above, further in view of Gong.
Gong: Identification of key umami-related compounds in Yangtze Coilia ectenes by combining electronic tongue analysis with sensory evaluation; RSC Adv., 2016, 6, 45689.
As for claims 4-5, KK teaches the use of glutamate in food products (0068), however, does not discuss the use of edible nucleotides with it, for their known umami flavor enhancement.
Gong also teaches about food compositions with added flavorings and further provides that umami 5’-nucleotides, are known for their important roles of enhancing the umami flavoring in food, especially when used with glutamate (see the abstract, the 2nd para. of section 1; 1st para. of section 2.6; 1st para. of section 3.3, Table 1, and the Conclusion).
Gong teaches said umami 5’-nucleotides, include the specifically claimed types:
adenosine 5'-monophosphate (5’-AMP),
cytidine 5'-monophosphate (5’-CMP),
quanosine 5'- monophosphate (5’-GMP) and
uridine 5'-monophosphate (5’-UMP),
Therefore, the shows the use of at least 2 of the claimed umami 5’-nucleotides, as in claim 4; and at least 3 of the claimed umami 5’-nucleotides, as in claim 5
It would have been obvious to one of skill in the art, at the time of filing to modify the method of making foods with glutamate, as KK, to include the use of at least two or three of the umami 5’-nucleotides, including:
adenosine 5'-monophosphate (5’-AMP),
cytidine 5'-monophosphate (5’-CMP),
quanosine 5'- monophosphate (5’-GMP) and
uridine 5'-monophosphate (5’-UMP), --------------as claimed, because Gong provides:
1) it was known for such a thing to have been successfully achieved and published at the time of filing, which means it was within the general skill of a worker in the art to select the use of the claimed umami 5’-nucleotides when making foods with glutamate, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious (see MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious); and
2) there are advantages to doing such a thing, including that these umami 5’-nucleotides are known for enhancing the umami flavoring in food, especially when used in food compositions with glutamate, which shows a recognition in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that beneficial result would have been produced by their combination (see MPEP 2144.II that states: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination).
Response to Arguments
Applicant argues that the rejection is fundamentally flaw because it fails to demonstrate that KK teaches or suggests the specific combination of ingredients as recited in claim 1. To support this argument, Applicant asserts that the Examiner’s analysis improperly treats KK as a catalogue of ingredients without demonstrating that the references teaches or suggests the claimed combination. Applicant further notes that the rejection lacks proper motivation to combine the alleged teachings of KK. Applicant additionally notes that the Examiner’s reliance of In re Levin is misplaced because the case relates to recipes involving common ingredients while claim 1 of the instant patent application are directed toward a specific combination of a seaweed concentrate with particular compounds that are not merely a common recipe variation.
Applicant’s arguments has been considered. However, none are found persuasive. For the record, had KK taught the specific combination of ingredients recited in claim 1, the rejection of record would have been an anticipatory rejection. Rather, the rejection of record is an obviousness rejection. In the instant case, KK is more than a catalogue of ingredients, as alleged by Applicant. KK actually provided the suggestion and motivation to combine the ingredients together. And, the motivation is clearly outlined in the office action. For example, with respect to seaweed, at [0064] KK teaches the addition of seaweed extract like seaweed cellulose as a thickening stabilizer. With respect to the use of In re Levin, it should be noted that In re Levin is cited to further advance the position of obviousness. The obviousness rejection is not solely reliant on In re Levin. Furthermore, similar to the assessment that KK is a catalogue of ingredients, the guidance provided by In re Levin extends beyond “common ingredients”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Principato teaches about food products (ti.) including protective coatings for foods, comprising: at least one preferred food flavoring (about line 22 from the bottom of pg. 8), including: 1) 2- methylbutyraldehyde (cass no. 96-17-3) (toward the end of line 26 on pg. 11); 2) 5-methylfurfural (cass no. 620-02-0) (13! line on pg. 9); 3) furfural (cass no. 98-01-1) (11' line on pg. 9); and 4) isobutyr aldehyde (i.e. 2- methylpropanal) (cass no.78-84-2) (7'" line from the bottom of pg. 22). emulsifying agents, including: seaweed (ref. clm. 9).
PRINCIPATO: published as: WO2019243869: PROTECTIVE AGENT FOR FOOD PRODUCTS on 12/26/2019.
Hung shows that four of ingredients a)-e) were known to be inherent aromatic profiles in the green seaweed Ulva sp. fermented by various microorganisms (see Table 1).Huang: Monitoring the Aroma Compound Profiles in the Microbial Fermentation of Seaweeds and Their Effects on Sensory Perception; Fermentation 2023, 9, 135.
Related PCT/EP2023/072931, which the instant patent application is a 371 of, has several references which show the claimed flavors were known for use in the prior art.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emily M Le whose telephone number is (571)272-0903. The examiner can normally be reached M-F, 8 am-4:30pm.
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.
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.
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793