DETAILED ACTION
Status of the Application
The present application is being examined under the pre-AIA first to invent provisions.
The amendment filed December 19, 2025 is acknowledged. Claims 12-20, 23, 25-30, 33, and 35 are pending in the application. Claims 1-11, 21, 22, 24, 31, 32, and 34 have been cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 19, 2025 has been entered.
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 23 and 25-29 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.
Independent claim 23 has been amended to recite “wherein the amount of isomaltulose provided in step a) is from 40 to 75 weight-% of the isomaltulose-containing composition of a chewing gum core obtained in step c)” at lines 25-26. It is unclear what is intended by this recitation. More specifically, there is no previous mention of step a), step c), or a chewing gum core in claim 23. Therefore, the scope of claim 23 is indefinite. For the purpose of the examination, the recitation of “wherein the amount of isomaltulose provided in step a) is from 40 to 75 weight-% of the isomaltulose-containing composition of a chewing gum core obtained in step c)” (emphasis added) at lines 25-26 of claim 23 is interpreted as “wherein the amount of isomaltulose is from 40 to 75 weight-% of the isomaltulose-containing composition”.
Independent claim 25 has been amended to recite “wherein the amount of isomaltulose provided in step a) is from 40 to 75 weight-% of the isomaltulose-containing composition of a chewing gum core obtained in step c)” at lines 26-27. It is unclear what is intended by this recitation. More specifically, there is no previous mention of step a), step c), or a isomaltulose-containing composition of a chewing gum core in claim 25. Therefore, the scope of claim 25 is indefinite. For the purpose of the examination, the recitation of “wherein the amount of isomaltulose provided in step a) is from 40 to 75 weight-% of the isomaltulose-containing composition of a chewing gum core obtained in step c)” (emphasis added) at lines 26-27 of claim 25 is interpreted as “wherein the amount of isomaltulose is from 40 to 75 weight-% of the isomaltulose-containing chewing gum core”.
Claims 26-29 are not specifically discussed but are rejected due to their dependence on claim 25.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 12, 13, 16-20, 23, 25-30, 33, and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hatae et al. JP 57-086246 (hereinafter “Hatae”) (refer to corresponding machine translation) in view of Broderick et al. WO 8907895 (hereinafter “Broderick”).
With respect to claim 12, Hatae teaches mechanically kneading gum ingredients to produce a chewing gum with advantages (P2, top; and P4, all).
Regarding the recitation of “for intentionally reducing a stickiness of a composition of a chewing gum core for a non-coated chewing gum product to an internal contact surface of a first chewing gum processing machinery in a chewing gum preparation process” in the preamble of claim 12, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising a) providing isomaltulose in an amount suitable to reduce stickiness of the composition of a chewing gum core to the surface, wherein the isomaltulose is present as isomaltulose particles having a diameter of less than 100 µm; b) providing a chewing gum base composition consisting of a chewing gum base component and at least one additive selected from the group consisting of sugars, sugar alcohols, intense sweeteners, hydrocolloid, gum base, plastifiers, lubricant, emulsifiers, protein components, milk components, dairy ingredients, fat and fat substitutes, vegetable fat, vitamins, preservatives, aroma, flavourings, colours, TiO2, edible acids, dietary fibres, and combinations thereof; c) kneading the isomaltulose provided in step a) with the chewing gum base composition provided in step b) and obtaining an isomaltulose-containing composition of a chewing gum core for a non-coated chewing gum product consisting of the chewing gum base composition having the isomaltulose at a concentration of at least 40 weight-% based on the total weight of the chewing gum base composition and the isomaltulose and wherein the amount of isomaltulose provided in step a) is from 40 to 75 weight-% of the isomaltulose-containing composition of a chewing gum core obtained in step c) in claim 12, Hatae teaches providing palatinose (isomaltulose) with a particle size of 200 to 300 mesh (between about 44 and 74 microns) in an amount of 0.1 to 10 parts by weight per part by weight of the gum base (step a), providing a chewing gum base composition containing gum base and flavoring (step b), and kneading the palatinose and chewing gum base composition to provide a chewing gum product having a palatinose content of about 9% to about 90% (0.1 to 10 pbw palatinose per 1 pbw gum base = 1 pbw palatinose per 0.1 to 10 pbw gum base and 10 to 100 pbw palatinose per 1 pbw flavor = 1 pbw palatinose per 0.01 to 0.1 pbw flavor; [1 pbw palatinose /{1 pbw palatinose + 0.1 to 10 pbw gum base + 0.01 to 0.1 pbw flavor }] * 100) (step c) (P2, bottom – P3, top; and P4, bottom). The palatinose quantity (isomaltulose) of Hatae encompasses the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the recitation of wherein step c) is carried out on the internal contact surface of the first chewing gum processing machinery and wherein the stickiness is reduced by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, to an amount equivalent sorbitol-containing composition of a chewing gum core and/or to an amount equivalent maltitol-sorbitol-mixture-containing composition of a chewing gum core in claim 12, it is noted that this recitation relates to a resulting effect of practicing the claimed method step. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, a reduced stickiness by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, sorbitol-containing composition of a chewing gum core, and/or maltitol-sorbitol-mixture containing composition of a chewing gum core would naturally occur from said method since Hatae teaches a method that is substantially similar to the presently claimed method as addressed above and Hatae teaches mechanically kneading (step c) (P2, top; and P4, bottom). Additionally, the stickiness of the chewing gum composition is a function of the ingredients present and the quantities thereof and the claimed ingredients and the respective amounts have been taught in Hatae as previously demonstrated. Further, evidence is provided by Yatka WO 9115941 (hereinafter “Yatka”) and Richey et al. US 5399365 (hereinafter “Richey”). Yatka and Richey are merely used to show that the addition of isomaltulose to the chewing gum base reduces stickiness of the chewing gum to the machinery. As evidenced by Yatka (P13, bottom - P14, top) and Richey (C5, L65-C6, L22), the addition of isomaltulose (palatinose) to the chewing gum base reduces stickiness of the chewing gum to the machinery.
Regarding the recitation of d) coating the isomaltulose-containing composition of a chewing gum core with a rolling compound, and wherein the isomaltulose-containing composition of a chewing gum core is shaped into a form of a sheet or a stick in claim 12, Hatae teaches rolling and shaping the chewing gum product (P4, bottom).
However, Hatae does not expressly disclose coating the chewing gum with a rolling compound or shaping it into a form of a sheet or a stick.
Broderick teaches a chewing gum product. The chewing gum product has a core portion comprising a chewing gum base, sweetener, and flavoring, and further having deposited on the surface of said core portion a rolling compound. The chewing gum is manufactured by mixing the chewing gum ingredients, dusting with a rolling compound, and shaping into the desired form such as by rolling into sheets and cutting into sticks (P1, L4; P3, L22-26; P4, L2-4; P6, L29-35; and P11, L9-12).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, given the teachings of Broderick, to select a rolling compound based in its suitability for its intended use as well as to shape the chewing gum into a sheet or a stick in the method of Hatae with the expectation of successfully preparing a functional chewing gum product. One of ordinary skill in the art would have been motivated to do so because Hatae and Broderick similarly teach preparing chewing gum products by mixing gum base, flavoring, and sweetener, rolling, and shaping the chewing gum product, Broderick teaches the rolling compound makes the gum more manageable during processing, including rolling, and prevents the chewing gum from sticking to the fingers or wrapper (P1, L10-16), said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results, and such modification would involve a mere change in configuration. There would have been a reasonable expectation of success with said modification. 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). It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With respect to claim 13, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of comprising the further step of subjecting the isomaltulose-containing composition of a chewing gum core to a contact surface of a second chewing gum processing machinery in claim 13, modified Hatae teaches this limitation since Hatae teaches the chewing gum core composition containing palatinose was extruded from an extruder (P4, bottom).
With respect to claims 16-18, modified Hatae is relied upon for the teaching of the process of claims 12 and 13 as addressed above.
Regarding the recitation of wherein the first chewing gum processing machinery is a kneader in claim 16, wherein the second chewing gum processing machinery is an extruder in claim 17, and wherein the first chewing gum processing machinery is a kneader and the second chewing gum processing machinery is an extruder in claim 18, modified Hatae teaches these limitations since Hatae teaches processing the chewing gum in a kneader and an extruder (P2, top; and P4, bottom).
With respect to claim 19, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein the at least one additive is at least one water insoluble chewing gum base component in claim 19, modified Hatae teaches this limitation since Hatae teaches the chewing gum base includes a gum base such as polyvinylacetate, ester gum, chicle, and polyisobutylene (P1, bottom).
With respect to claim 20, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein the at least one additive of the chewing gum base composition provided in step b) is selected from the group consisting of at least one sweetener component, at least on high intensity sweetener component, at least one flavouring component, and at least one colouring component in claim 20, modified Hatae teaches this limitation since Hatae teaches adding flavoring. Additionally, Hatae teaches a coloring agent and another sweetening agent may be used, if desired (P2, top; and P3, top).
With respect to claim 23, Hatae teaches mechanically kneading gum ingredients to produce a chewing gum with advantages (P2, top; and P4, all).
Regarding the recitation “of using isomaltulose in a composition of a chewing gum base of a non-coated chewing gum product for reducing stickiness of the composition of a chewing gum base to an internal contact surface of a chewing gum processing machinery” in the preamble of claim 23, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising kneading only isomaltulose present as isomaltulose particles having a diameter of less than 100 µm with a chewing gum base composition to result in an isomaltulose-containing composition having at least 40 weight-% of the isomaltulose based on the total weight of the isomaltulose-containing composition; wherein the kneading is performed on the internal contact surface of a chewing gum processing machinery; and wherein the chewing gum base composition consists of a chewing gum base component and at least one additive selected from the group consisting of sugars, sugar alcohols, intense sweeteners, hydrocolloid, gum base, plastifiers, lubricant, emulsifiers, protein components, milk components, dairy ingredients, fat and fat substitutes, vegetable fat, vitamins, preservatives, aroma, flavourings, colours, TiO2, edible acids, dietary fibres, and combinations thereof, and wherein the amount of isomaltulose is from 40 to 75 weight-% of the isomaltulose-containing composition in claim 23, Hatae teaches mechanically kneading palatinose (isomaltulose) having a particle size of 200 to 300 mesh (between about 44 and 74 microns) with a chewing gum base composition containing gum base and flavoring to provide a chewing gum product having a palatinose (isomaltulose) content of about 9% to about 90% (0.1 to 10 pbw palatinose per 1 pbw gum base = 1 pbw palatinose per 0.1 to 10 pbw gum base and 10 to 100 pbw palatinose per 1 pbw flavor = 1 pbw palatinose per 0.01 to 0.1 pbw flavor; [1 pbw palatinose /{1 pbw palatinose + 0.1 to 10 pbw gum base + 0.01 to 0.1 pbw flavor }] * 100) (P2, bottom – P3, top; and P4, bottom). The palatinose quantity (isomaltulose) of Hatae encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the recitation of wherein the stickiness of the isomaltulose-containing composition on the internal contact surface is reduced by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, to an amount equivalent sorbitol-containing composition of a chewing gum core and/or to an amount equivalent maltitol-sorbitol-mixture-containing composition of a chewing gum core in claim 23, it is noted that this recitation relates to a resulting effect of practicing the claimed method step. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, a reduced stickiness by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, sorbitol-containing composition of a chewing gum core, and/or maltitol-sorbitol-mixture containing composition of a chewing gum core would naturally occur from said method since Hatae teaches a method that is substantially similar to the presently claimed method as addressed above and Hatae teaches mechanically kneading (step c) (P2, top; and P4, bottom). Additionally, the stickiness of the chewing gum composition is a function of the ingredients present and the quantities thereof and the claimed ingredients and the respective amounts have been taught in Hatae as previously demonstrated. Further, evidence is provided by Yatka WO 9115941 (hereinafter “Yatka”) and Richey et al. US 5399365 (hereinafter “Richey”). Yatka and Richey are merely used to show that the addition of isomaltulose to the chewing gum base reduces stickiness of the chewing gum to the machinery. As evidenced by Yatka (P13, bottom - P14, top) and Richey (C5, L65-C6, L22), the addition of isomaltulose (palatinose) to the chewing gum base reduces stickiness of the chewing gum to the machinery.
Regarding the recitation of coating the isomaltulose-containing composition of a chewing gum core with a rolling compound, and wherein the isomaltulose-containing composition is shaped into a form of a sheet or a stick in claim 23, Hatae teaches rolling and shaping the chewing gum product (P4, bottom).
However, Hatae does not expressly disclose coating the chewing gum with a rolling compound or shaping it into a form of a sheet or a stick.
Broderick teaches a chewing gum product. The chewing gum product has a core portion comprising a chewing gum base, sweetener, and flavoring, and further having deposited on the surface of said core portion a rolling compound. The chewing gum is manufactured by mixing the chewing gum ingredients, dusting with a rolling compound, and shaping into the desired form such as by rolling into sheets and cutting into sticks (P1, L4; P3, L22-26; P4, L2-4; P6, L29-35; and P11, L9-12).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, given the teachings of Broderick, to select a rolling compound based in its suitability for its intended use as well as to shape the chewing gum into a sheet or a stick in the method of Hatae with the expectation of successfully preparing a functional chewing gum product. One of ordinary skill in the art would have been motivated to do so because Hatae and Broderick similarly teach preparing chewing gum products by mixing gum base, flavoring, and sweetener, rolling, and shaping the chewing gum product, Broderick teaches the rolling compound makes the gum more manageable during processing, including rolling, and prevents the chewing gum from sticking to the fingers or wrapper (P1, L10-16), said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results, and such modification would involve a mere change in configuration. There would have been a reasonable expectation of success with said modification. 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). It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With respect to claim 25, Hatae teaches producing a chewing gum product (P4, all).
Regarding the recitation of “for preparing a chewing gum core of a non-coated chewing gum product” in the preamble of claim 25, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the process comprising: providing a chewing gum base composition consisting of a chewing gum base component and at last one additive selected from the group consisting of sugars, sugar alcohols, intense sweeteners, hydrocolloid, gum base, plastifiers, lubricant, emulsifiers, protein components, milk components, dairy ingredients, fat and fat substitutes, vegetable fat, vitamins, preservatives, aroma, flavourings, colours, TiO2, edible acids, dietary fibres, and combinations thereof; providing isomaltulose in an amount suitable to reduce a stickiness of the chewing gum base composition, wherein the isomaltulose is present as isomaltulose particles having a diameter of less than 100 pm; and kneading the isomaltulose and the chewing gum base composition to obtain an isomaltulose-containing chewing gum core of a non-coated chewing gum product consisting of the chewing gum base composition having the isomaltulose at a concentration of at least 40 weight- % based on the total weight of the chewing gum base composition and the isomaltulose; wherein the kneading is carried out on a first surface of a first chewing gum processing machinery, the first surface being an internal contact surface, and wherein the amount of isomaltulose provided is from 40 to 75 weight-% of the isomaltulose-containing chewing gum core in claim 25, Hatae teaches providing a chewing gum base composition containing gum base and flavoring, providing palatinose (isomaltulose) with a particle size of 200 to 300 mesh (between about 44 and 74 microns) in an amount of 0.1 to 10 parts by weight per part by weight of the gum base, and mechanically kneading the palatinose and chewing gum base composition to provide a chewing gum product having a palatinose content of about 9% to about 90% (0.1 to 10 pbw palatinose per 1 pbw gum base = 1 pbw palatinose per 0.1 to 10 pbw gum base and 10 to 100 pbw palatinose per 1 pbw flavor = 1 pbw palatinose per 0.01 to 0.1 pbw flavor; [1 pbw palatinose /{1 pbw palatinose + 0.1 to 10 pbw gum base + 0.01 to 0.1 pbw flavor }] * 100) (P2, top; P2, bottom – P3, top; and P4, bottom). The palatinose quantity (isomaltulose) of Hatae encompasses the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding the recitation of wherein the stickiness is reduced by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, to an amount equivalent sorbitol-containing composition of a chewing gum core and/or to an amount equivalent maltitol-sorbitol-mixture- containing composition of a chewing gum core in claim 25, it is noted that this recitation relates to a resulting effect of practicing the claimed method step. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, a reduced stickiness by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, sorbitol-containing composition of a chewing gum core, and/or maltitol-sorbitol-mixture containing composition of a chewing gum core would naturally occur from said method since Hatae teaches a method that is substantially similar to the presently claimed method as addressed above and Hatae teaches mechanically kneading (step c) (P2, top; and P4, bottom). Additionally, the stickiness of the chewing gum composition is a function of the ingredients present and the quantities thereof and the claimed ingredients and the respective amounts have been taught in Hatae as previously demonstrated. Further, evidence is provided by Yatka WO 9115941 (hereinafter “Yatka”) and Richey et al. US 5399365 (hereinafter “Richey”). Yatka and Richey are merely used to show that the addition of isomaltulose to the chewing gum base reduces stickiness of the chewing gum to the machinery. As evidenced by Yatka (P13, bottom - P14, top) and Richey (C5, L65-C6, L22), the addition of isomaltulose (palatinose) to the chewing gum base reduces stickiness of the chewing gum to the machinery.
Regarding the recitation of coating the isomaltulose-containing chewing gum core with a rolling compound, and wherein the isomaltulose-containing chewing gum core is shaped into a form of a sheet or a stick in claim 25, Hatae teaches rolling and shaping the chewing gum product (P4, bottom).
However, Hatae does not expressly disclose coating the chewing gum with a rolling compound or shaping it into a form of a sheet or a stick.
Broderick teaches a chewing gum product. The chewing gum product has a core portion comprising a chewing gum base, sweetener, and flavoring, and further having deposited on the surface of said core portion a rolling compound. The chewing gum is manufactured by mixing the chewing gum ingredients, dusting with a rolling compound, and shaping into the desired form such as by rolling into sheets and cutting into sticks (P1, L4; P3, L22-26; P4, L2-4; P6, L29-35; and P11, L9-12).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, given the teachings of Broderick, to select a rolling compound based in its suitability for its intended use as well as to shape the chewing gum into a sheet or a stick in the method of Hatae with the expectation of successfully preparing a functional chewing gum product. One of ordinary skill in the art would have been motivated to do so because Hatae and Broderick similarly teach preparing chewing gum products by mixing gum base, flavoring, and sweetener, rolling, and shaping the chewing gum product, Broderick teaches the rolling compound makes the gum more manageable during processing, including rolling, and prevents the chewing gum from sticking to the fingers or wrapper (P1, L10-16), said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results, and such modification would involve a mere change in configuration. There would have been a reasonable expectation of success with said modification. 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). It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With respect to claim 26, modified Hatae is relied upon for the teaching of the process of claim 25 as addressed above.
Regarding the recitation of further comprising subjecting the isomaltulose-containing chewing gum core to a second contact surface of a second chewing gum processing machinery in claim 26, modified Hatae teaches this limitation since Hatae teaches the chewing gum product containing palatinose was extruded from an extruder (P4, bottom).
With respect to claims 27-29, modified Hatae is relied upon for the teaching of the process of claims 25 and 26 as addressed above.
Regarding the recitation of wherein the first chewing gum processing machinery is a kneader in claim 27, wherein the second chewing gum processing machinery is an extruder in claim 28, and wherein the first chewing gum processing machinery is a kneader and the second chewing gum processing machinery is an extruder in claim 29, modified Hatae teaches these limitations since Hatae teaches processing the chewing gum product in a kneader and an extruder (P2, top; and P4, bottom).
With respect to claim 30, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein the isomaltulose is the only sweetening agent present in the composition of a chewing gum core obtained in c) in claim 30, modified Hatae teaches this limitation since Hatae teaches another sweetening agent may be used, if desired (P3, top).
With respect to claim 33, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein the isomaltulose provided in step a) and the chewing gum base composition provided in step b) are heated to a temperature from 30⁰C to 70⁰C during the kneading in step c) in claim 33, modified Hatae teaches this limitation since Hatae teaches kneading the gum base composition and the palatinose at 40⁰C to 70⁰C (P4, bottom).
With respect to claim 35, modified Hatae is relied upon for the teaching of the process of claim 12 as addressed above.
Regarding the recitation of wherein the chewing gum base composition includes, in addition to the isomaltulose, at least 20 wt% of at least one of sorbitol and maltitol in claim 35, Hatae teaches the chewing gum base composition may comprise known a sweeten agent, such as sorbitol, in addition to palatinose (isomaltulose) (P3, middle).
Hatae does not expressly disclose the quantity of the sorbitol. However, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the amount of sorbitol in the chewing gum base composition of Hatae through routine experimentation with the expectation of successfully preparing an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because the amount of sorbitol present in the composition is a matter of choice and is contingent upon the desired sweetness of the chewing gum base composition, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
Claims 14 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hatae et al. JP 57-086246 (hereinafter “Hatae”) (refer to corresponding machine translation) in view of Broderick et al. WO 8907895 (hereinafter “Broderick”) as applied to claims 12 and 13 above, and in further view of Degady et al. US 5792495 (hereinafter “Degady”).
With respect to claims 14 and 15, modified Hatae is relied upon for the teaching of the process of claims 12 and 13 as addressed above.
Regarding the recitation of wherein the internal contact surface of the first chewing gum processing machinery and a contact surface of the second chewing gum processing machinery are made of steel in claim 14 and wherein the internal contact surface of the first chewing gum processing machinery and the contact surface of the second chewing gum processing machinery are made of stainless steel in claim 15, Hatae does not expressly disclose the internal contact surface of the first chewing gum processing machine and the contact surface of the second chewing gum processing machinery are made of steel or stainless steel.
Degady teaches a process for producing chewing gum products. Parts of the system which come in contact with the gum material are made of stainless steel (C1, L5-7; and C8, L1-5).
It would have been obvious to one having ordinary skill in the art at the time the invention was made, given the teachings of Degady, to use any suitable chewing gum manufacturing equipment, including first and second chewing gum processing machinery comprising stainless steel internal contact surfaces, in the method of modified Hatae with the expectation of successfully preparing a functional chewing gum product. One of ordinary skill in the art would have been motivated to do so because Degady and Hatae similarly teach mechanically preparing chewing gum products, the internal contact surfaces of a first and second chewing gum processing machinery made of stainless steel were well known in the art at the time the invention was made as evidenced by Degady, Degady teaches using processing machinery with internal contact surfaces comprising stainless steel for ease of cleaning and sanitizing during the preparation of chewing gum (C8, L1-5), and said combination would amount to use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification.
Response to Arguments
Applicant’s remarks filed December 19, 2025 are acknowledged.
Due to the amendments in the claims, the claim objections in the previous Office Action have been withdrawn (P8).
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues the narrower range of 40-75 weight % of isomaltulose, as recited in amended claim 12, is not obvious in light of the prior art cited, including Hatae. The particular concentration of 40 to 75 weight % isomaltulose in the chewing gum core composition achieves the result of reducing the amount of chewing gum mass that sticks to the wall of the kneader in a manner that is not predictable from the broader ranges cited in the prior art, including the 9-90 weight % range disclosed by Hatae. While a 9-90 weight % range of isomaltulose is disclosed in Hatae, it is a broad, general range that provides no indication or preference for the specific sub-range of 40 to 75 weight % that is critical to the claimed process. The Examiner has failed to address the unexpected technical effect achieved by the specific range claimed in amended claim 12-namely, the reduction in stickiness-which is not suggested or predictable based on the disclosure of Hatae. The prior art teaches no reason or motivation for a skilled person to select 40 to 75 weight % of isomaltulose specifically, particularly when the broader range (9-90 wt%) encompasses a much wider spectrum of concentrations. The criticality of the range lies in the unexpected improvement in processing characteristics, which was not suggested by the prior art. The prior art does not teach or suggest that the isomaltulose content within this specific narrow range can achieve the optimal combination of properties-such as reduced stickiness and efficient processing-that are achieved by the 40-75 wt% range.
Examiner disagrees. As previously addressed, Hatae teaches providing palatinose (isomaltulose) an amount of 0.1 to 10 parts by weight per part by weight of the gum base and preparing a chewing gum product having a palatinose content of about 9% to about 90% (0.1 to 10 pbw palatinose per 1 pbw gum base = 1 pbw palatinose per 0.1 to 10 pbw gum base and 10 to 100 pbw palatinose per 1 pbw flavor = 1 pbw palatinose per 0.01 to 0.1 pbw flavor; [1 pbw palatinose /{1 pbw palatinose + 0.1 to 10 pbw gum base + 0.01 to 0.1 pbw flavor }] * 100) (P3, top). The range of palatinose (isomaltulose) in Hatae encompasses the claimed range. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the range disclosed in the prior art. e.g., In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). “
As shown above, the prior art explicitly teaches a range of isomaltulose (about 9% to about 90%) that significantly overlaps with the claimed range (40-75%). Thus, burden is shifted to Applicant to establish that the range disclosed by the prior art would not yield the same beneficial results. It is the position of the Examiner that since Hatae explicitly achieves an overlapping isomaltulose range, one of ordinary skill in the art would reasonably conclude that the same beneficial results as Applicant would be attained therein, absent a showing of evidence to the contrary. Additionally, the art is well-aware of the benefits imparted by the same ingredients, employed in the same or overlapping concentrations.
Further, it is noted that this recitation relates to a resulting effect of practicing the claimed method step. Absent any clear and convincing evidence to the contrary, a reduced stickiness by at least 20% in comparison to an amount equivalent maltitol-containing composition of a chewing gum core, sorbitol-containing composition of a chewing gum core, and/or maltitol-sorbitol-mixture containing composition of a chewing gum core would naturally occur from said method since Hatae teaches a method that is substantially similar to the presently claimed method as addressed above and Hatae teaches mechanically kneading (step c) (P2, top; and P4, bottom). Additionally, the stickiness of the chewing gum composition is a function of the ingredients present and the quantities thereof and the claimed ingredients and the respective amounts have been taught in Hatae as previously demonstrated. Further, evidence is provided by Yatka WO 9115941 (hereinafter “Yatka”) and Richey et al. US 5399365 (hereinafter “Richey”). Yatka and Richey are merely used to show that the addition of isomaltulose to the chewing gum base reduces stickiness of the chewing gum to the machinery. As evidenced by Yatka (P13, bottom - P14, top) and Richey (C5, L65-C6, L22), the addition of isomaltulose (palatinose) to the chewing gum base reduces stickiness of the chewing gum to the machinery.
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793