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 .
The Amendment filed May 5, 2026 has been entered. Claims 5-12 and 21-28 are pending. Claims 1-4 and 13-20 have been cancelled. Claims 5 and 8-11 have been amended. Claims 21-28 are new.
Claim Objections
Claim 9 is objected to because of the following informalities: Applicant’s amendment to claim 5 changed the heat treatment step to step (d) and not step (e). This change should be reflected in claim 9. Appropriate correction is required.
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.
Claim 22 is 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.
Claim 22 recites “The method of claim 5, further comprising grinding and/or defatting the flavor composition”, however, it is not clear at what point in the process this step occurs. Does is occur after the heat treatment step (d) or does it occur after step (a) before the heating?
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 5-12 and 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 2019/0343155 A1; Nov. 14, 2019) in view of Krizhanovskij et al. (SU 1003769 A1; March 15, 1983).
Regarding claims 5 and 21, Shi discloses a method of preparing a sweetener and flavor composition, wherein the flavor composition can be a chocolate or cocoa flavor ([0034], [0389], [0527], [0713], [1972], [4320]), the method comprising providing at least one plant material (e.g. a plant extract: [0005], [0339], [0358]), at least one amino acid, and at least one saccharide ([0009]-[0010], [0401], [0458]) in an aqueous medium ([0389]), heating the aqueous mixture ([0024]), and drying the heated mixture to obtain a dried mixture ([0756]).
Shi teaches that the heating in step (b) comprises heating the aqueous mixture to a temperature from 50-200 C, thus overlapping the claimed ranges of 60-100 C([1374]). Shi teaches that the heating is performed for a time of 10 minutes to 48 hours, thus overlapping the claimed ranges of at least 5 min ([1375]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Shi teaches that grape seeds, which is a plant material, can be added before the heating step ([0715], [0770], [0834], [0835]). Shi teaches that grape seeds add flavor and provide antioxidant properties. Therefore, it would have been obvious to one of ordinary skill in the art to add grape seeds to the reaction mixture before heating depending on the desired flavor and properties of the flavor composition.
Shi teaches that the at least one amino acid can be can be alanine, phenylalanine, glycine, isoleucine, lysine, leucine, proline, serine, threonine, valine, or tyrosine ([0458]).
Shi teaches that the at least one saccharide can be glucose, fructose, xylose, rhamnose, sucrose, maltose, lactose, or isomaltulose ([0401]). Shi teaches that the at least one saccharide provided in step (a) is provided in an amount of about 1 to about 10 wt% ([0482]), thus falling within the claimed range of up to 10 wt%.
Shi teaches that the flavor composition does not have to include cocoa or cocoa-derived solids, as the flavor composition comprises a plant material, amino acids, and a saccharide and can be a cocoa substitute ([0034], [0389], [0527], [0713], [1972], [4320]). Therefore, Shi teaches that flavor composition is at least 95% free of cocoa or cocoa-derived solids.
While Shi teaches method as described above, Shi fails to further teach step (d) subjecting the dried mixture to a heat treatment.
Krizhanovskij discloses a method of producing a cocoa substitute from grape seeds, wherein the grape seeds are crushed, dried, cooled, and further dried by roasting in order to obtain the characteristics of cocoa products (Derwent Abstract). Krizhanovskij teaches a heat treatment step (e), which comprises roasting at a temperature of 140-150 C (Derwent Abstract), thus falling within the claimed range of 120-220 C.
With respect to the time for roasting, Krizhanovskij fails to teach a specific time, however, it would have been obvious to one of ordinary skill in the art to determine the optimum time for roasting depending on the desired taste and characteristics. Krizhanovskij teaches that the roasting provides the grape seeds with a more cocoa characteristic and therefore it is well within the ordinary skill to vary the time for roasting depending on the desired characteristics of the product. This is merely routine experimentation that is well within the ordinary skill in the art.
It would have been obvious to further subject the dried mixture of Shi to a heat treatment for a desired amount of time as Krizhanovskij teaches that a roasting step on a dried mixture comprising the grape seed material brings out the characteristics of cocoa products (Derwent Abstract). Therefore, heating the dried mixture of Shi comprising the grape seeds for a certain amount of time would further bring out desired cocoa characteristics in order to provide a suitable chocolate or cocoa flavor composition.
With respect to the composition comprising at least three of 5-methyl-2-phenyl-2-hexenal, 3-methylbutanal, trimethylpyrazine, phenylacetaldehyde, and furaneol as a result of the heat treatment, the examiner notes that the combined prior art render obvious a composition comprising the same components as claimed undergoing a heat treatment process. Therefore, the composition of the prior art would necessarily comprise at least three of the claimed compounds absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Therefore, as the claimed product and prior art product both comprise grape seeds, at least one amino acid, and at least one saccharide, wherein the composition is dried and further heat treated, the composition of Shi in view of Krizhanovskij would necessarily or inherently possess the claimed compounds as the compounds are a result of the heat treatment, absent a showing otherwise.
Regarding claim 6, Shi teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine, lysine, leucine, proline, serine, threonine, or valine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose, fructose, xylose, or rhamnose ([0401]).
Regarding claim 7, as stated above, Krizhanovskij teaches the use of grape seeds and further teaches that the grape seed material comprises a press cake (Derwent Abstract).
It would have been obvious to one of ordinary skill in the art have the grape seeds of Shi comprise a press cake as taught by Krizhanovskij as Krizhanovskij teaches that grape seed press cake is suitable for heating and roasting in order to provide a composition having cocoa characteristics.
Regarding claim 8, Shi teaches that the heating in step (b) comprises heating the aqueous mixture to a temperature from 50-200 C, thus overlapping the claimed range of 80-95 ([1374]).
Shi teaches that the heating is performed for a time of 10 minutes to 48 hours, thus overlapping the claimed ranges of at least 10 min, or at least 10 min to 180 min ([1375]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 9, as stated above, Krizhanovskij teaches a heat treatment step (d), which comprises roasting at a temperature of 140-150 C (Derwent Abstract), thus falling within the claimed range of 130-210 C.
With respect to the time for roasting, Krizhanovskij fails to teach a specific time, however, it would have been obvious to one of ordinary skill in the art to determine the optimum time for roasting depending on the desired taste and characteristics. Krizhanovskij teaches that the roasting provides the grape seeds with a more cocoa characteristic and therefore it is well within the ordinary skill to vary the time for roasting depending on the desired characteristics of the product. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 10, as stated above, Shi teach that the plant material comprises grape seeds.
Shi also teaches that the at least one amino acid can be phenylalanine, glycine, leucine, and proline ([0458], [1559]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acid as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Regarding claim 11, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats and apricot ([0715], [0835]-[0837], [0878], [0900]). With respect to apricot being apricot kernels, it would have been obvious to use any portion of the fruit to achieve a desired flavor.
Therefore, it would have been obvious to one of ordinary skill in the art to add oats and apricot kernels to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats and apricot as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Regarding claim 12, Shi teaches that the flavor composition does not have to include cocoa or cocoa-derived solids, as the flavor composition comprises a plant material, amino acids, and a saccharide and can be a cocoa substitute ([0034], [0389], [0527], [0713], [1972], [4320]). Therefore, Shi teaches that flavor composition is at least 99% free of cocoa or cocoa-derived solids.
Regarding claim 22, Shi further teaches grinding ([5727]). Krizhanovskij teaches grinding a flavor composition to result in a powder cocoa-like product (Derwent Abstract) and therefore it would have been obvious to grind the final composition of Shi so as to obtain a cocoa-like powder.
As it is not clear what part of the process this step occurs, these teachings in Shi and Krizhanovskij are considered to meet applicant’s claim.
Regarding claim 23, With respect to rinsing the dried mixture prior to step (d), the examiner notes that it would have been obvious to perform such step in order to remove unwanted particles prior to roasting so that a desired final flavor is achieved after the roasting step.
Regarding claim 24, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats and barley ([0715], [0835]-[0837], [0878], [0900]).
Therefore, it would have been obvious to one of ordinary skill in the art to add oats and barley to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats and barley as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Regarding claim 25, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats and barley ([0715], [0835]-[0837], [0878], [0900]).
Therefore, it would have been obvious to one of ordinary skill in the art to add oats and barley to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats and barley as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Regarding claim 26, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats, barley and apricot ([0715], [0835]-[0837], [0878], [0900]). With respect to apricot being apricot kernels, it would have been obvious to use any portion of the fruit to achieve a desired flavor.
Therefore, it would have been obvious to one of ordinary skill in the art to add oats, barley and apricot kernels to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats, barley and apricot as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Regarding claim 27, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats, carob, barley and apricot ([0715], [0744], [0835]-[0837], [0878], [0900]). With respect to apricot being apricot kernels, it would have been obvious to use any portion of the fruit to achieve a desired flavor.
Therefore, it would have been obvious to one of ordinary skill in the art to add oats, carob, barley and apricot kernels to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats, carob, barley and apricot as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0744], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine, lysine and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Regarding claim 28, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats and barley ([0715], [0835]-[0837], [0878], [0900]).
Therefore, it would have been obvious to one of ordinary skill in the art to add oats and barley to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats and barley as Shi teaches that they are sources of fiber, antioxidants, flavor and prebiotics ([0715], [0835]-[0837], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine, proline and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 5, 6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 14, 16 and 19-22 of copending Application No. 18/579,268 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant application recites a method of preparing a cocoa or chocolate flavor composition comprising reacting a plant material that is grape seeds, an amino acid and a saccharide. Parent application 18/579,268 recites reacting a plant material, where the plant materials recited include grape seed, with an amino acid, a saccharide, or a combination thereof. Therefore, it would have been obvious to have reacted the grape seed plant material with an amino acid and a saccharide based on the claims in the parent application. Additionally, dependent claims in both applications recite the same amino acids and saccharides, as well as the same conditions for heating and roasting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejection from the previous Office Action and therefore it has been withdrawn.
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Shi discloses a vast number of possible ingredients that could be combined to an and all exemplary flavors, and therefore it would not have been obvious to combine the specifically claimed ingredients to arrive at a chocolate or cocoa flavor.
This is not found persuasive. The examiner agrees that Shi teaches a vast majority of ingredients and flavors, however, it does suggest the use of grape seed, a saccharide and an amino acid to obtain a flavor composition, wherein the flavor composition can be a cocoa or chocolate flavor composition.
As stated in MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
Further, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Regarding applicant’s argument that Shi fails to even teach a plant material as it teaches an extract, the examiner notes that the claims do not specify the type of grape seed used. Therefore, grape seed extract falls within the scope of grape seed and this argument is not found persuasive. The claims should reflect that the material is a solid, such as a press cake as recited in claim 7.
Applicant further argues that Krizhanovskij’s roasting step cannot be applied to the dried MRP of Shi as a raw starting material is not equivalent to the MRP that would result from Shi.
While the examiner agrees that they are two different products, the process of Krizhanovskij would have suggested a roasting step when using grape seed as it results in a different flavor profile. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the secondary reference would have suggested to one of ordinary skill in the art adding a roasting step to the process of Shi.
With respect to the composition comprising 5-methyl-2-phenyl-2-hexenal, 3-methylbutanal, trimethylpyrazine, phenylacetaldehyde, and furaneol as a result of the heat treatment, the examiner notes that the combined prior art render obvious a composition comprising the same components as claimed undergoing a heat treatment process. Therefore, the composition of the prior art would necessarily comprise at least three of the claimed compounds absent a showing otherwise.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Therefore, as the claimed product and prior art product both comprise grape seeds, at least one amino acid, and at least one saccharide, wherein the composition is dried and further heat treated, the composition of Shi in view of Krizhanovskij would necessarily or inherently possess the claimed compounds as the compounds are a result of the heat treatment, absent a showing otherwise.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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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.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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