DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 08/26/2026 is acknowledged.
The rejections of claims 72-74, 79-83, 86, 87, and 89 have been withdrawn due to cancellation of the claims.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 72-74, 79-83, 86, 87, and 89
Withdrawn claims: None
Previously canceled claims: 1-71, 75-78, 84, 85, and 88
Newly canceled claims: 72-74, 79-83, 86, 87, and 89
Amended claims: None
New claims: 90-109
Claims currently under consideration: 90-109
Currently rejected claims: 90-109
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 90-109 are rejected under 35 U.S.C. 103 as being unpatentable over Riess et al. (U.S. 2010/0151055 A1).
Regarding claim 90, Riess et al. discloses a sweetness-enhancing mixture ([0010]-[0011]) that may consist of phloretin ([0025], [0039]), naringenin ([0016], [0032]), and one additional sweet substance ([0012]-[0014]), where the sweet substance may be a sweet-tasting carbohydrate ([0012], [0117]). Regarding the sweetener being a carbohydrate, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of a sweet-tasting carbohydrate, such as sucrose, as the sweetener of the substance mixture would thus be obvious.
As for claims 91 and 92, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 93, Riess et al. discloses that the ratio between the sweet substance and naringenin may range from 1:10 to 1000:1 ([0083]) and the ratio between phloretin and that previous combination may range from 3:1 to 1:1000 ([0084]). Such ratios include an embodiment wherein the phloretin and naringenin are in a weight ratio of about 1:1, which renders the claimed ratio obvious.
As for claim 94, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 95, Riess et al. discloses that the weight ratio of the combination of phloretin and naringenin to the sweetener is in the range of about 40:60 to about 60:40 ([0083]- [0084], where an embodiment consisting of 1 part phloretin, 1 part naringenin, and 2 parts sweetener falls within the claimed range and the disclosed ranges).
As for claim 96, Riess et al. discloses that phloretin is present in an amount of about 25 wt.%, naringenin is present in an amount of about 25 wt.%, and the sweetener is present in an amount of about 50 wt.% ([0083]- [0084], where an embodiment consisting of 1 part phloretin, 1 part naringenin, and 2 parts sweetener meets the claimed concentrations and falls within the disclosed ranges).
Regarding claim 97, Riess et al. discloses a beverage ([0097], [0102]) that may consist of a mixture ([0091], [0094], [0010]-[0011]) of phloretin ([0025], [0039]), naringenin ([0016], [0032]), one additional sweet substance ([0012]-[0014]), and water ([0111]), where the sweet substance may be a sweet-tasting carbohydrate ([0012], [0117]). Regarding the sweetener being a carbohydrate, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of a sweet-tasting carbohydrate, such as sucrose, as the sweetener of the substance mixture would thus be obvious. Riess et al. also discloses that the mixture may be present in quantities such that naringenin is present in an amount preferably ranging from 3-150 ppm, and phloretin is present in an amount preferably ranging from 3-100 ppm ([0095]), which renders the claimed ranges of 15-50 ppm phloretin and 15-50 ppm naringenin in a beverage obvious. MPEP 2144.05 I.
As for claim 98, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 99, Riess et al. discloses that the ratio between the sweet substance and naringenin may range from 1:10 to 1000:1 ([0083]) and the ratio between phloretin and that previous combination may range from 3:1 to 1:1000 ([0084]). Such ratios include an embodiment wherein the phloretin and naringenin are in a weight ratio of about 1:1, which renders the claimed ratio obvious.
As for claim 100, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 101, Riess et al. discloses the beverage may be a carbonated soft drink or a flavored water/“near water” beverage ([0103]). Riess et al. further discloses that near water beverages are carbonated drinks that are “only weakly sweetened (less than 5% sucrose…)” ([0104]), which suggests that conventional carbonated soft drinks would be sweetened to a degree that exceeds that of being “only weakly sweetened”, presumably greater than or equal to 5% sucrose. As such, the inclusion of about 5 wt.% sucrose by weight of the beverage would be obvious to a skilled practitioner.
As for claim 102, Riess et al. discloses that the mixture may be present in quantities such that naringenin is present in an amount preferably ranging from 3-150 ppm, and phloretin is present in an amount preferably ranging from 3-100 ppm ([0095]), which renders the claimed values of about 15 ppm phloretin and about 15 ppm naringenin in a beverage obvious. MPEP 2144.05 I.
As for claim 103, Riess et al. discloses that the mixture may be present in quantities such that naringenin is present in an amount preferably ranging from 3-150 ppm, and phloretin is present in an amount preferably ranging from 3-100 ppm ([0095]), which renders the claimed values of about 30 ppm phloretin and about 30 ppm naringenin in a beverage obvious. MPEP 2144.05 I.
As for claim 104, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 105, Riess et al. discloses the beverage may be a carbonated soft drink or a flavored water/“near water” beverage ([0103]). Riess et al. further discloses that near water beverages are carbonated drinks that are “only weakly sweetened (less than 5% sucrose…)” ([0104]), which suggests that conventional carbonated soft drinks would be sweetened to a degree that exceeds that of being “only weakly sweetened”, presumably greater than or equal to 5% sucrose. As such, the inclusion of about 5 wt.% sucrose by weight of the beverage would be obvious to a skilled practitioner.
Regarding claim 106, Riess et al. discloses a method for improving taste quality of a beverage comprising adding to the foodstuff ([0097], [0102]) a mixture ([0010]-[0011]) that may consist of phloretin ([0025], [0039]), naringenin ([0016], [0032]), and one additional sweet substance ([0012]-[0014]), where the sweet substance may be a sweet-tasting carbohydrate ([0012], [0117]). Regarding the sweetener being a carbohydrate, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of a sweet-tasting carbohydrate, such as sucrose, as the sweetener of the substance mixture would thus be obvious. MPEP 2144.04 IV C states: “Selection of any order of mixing ingredients is prima facie obvious.” Thus, addition of phloretin and the sweet-tasting carbohydrate prior to the addition of naringenin would be obvious. Riess et al. discloses that the mixture may be present in quantities such that naringenin is present in an amount preferably ranging from 3-150 ppm, and phloretin is present in an amount preferably ranging from 3-100 ppm ([0095]), which renders the claimed values of about 15-50 ppm phloretin and about 15-50 ppm naringenin in a beverage obvious. MPEP 2144.05 I. As for the effect of the method, MPEP 2144 IV states: “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” Thus, it is unnecessary for the reference to specifically recognize that the taste quality of phloretin in particular is improved. As for the relative amounts of naringenin and phloretin, the disclose ranges encompass values that overlap with the maximum claimed naringenin value and the minimum claimed phloretin value, which is presumed to necessarily result in the naringenin being at an amount sufficient to improve the taste quality of phloretin.
As for claim 107, Riess et al. discloses that the ratio between the sweet substance and naringenin may range from 1:10 to 1000:1 ([0083]) and the ratio between phloretin and that previous combination may range from 3:1 to 1:1000 ([0084]). Such ratios include an embodiment wherein the phloretin and naringenin are in a weight ratio of about 1:1, which renders the claimed ratio obvious.
As for claim 108, Riess et al. discloses that the sweet substance is merely required to be “one or more sweeteners” ([0012]), where the following list is merely preferred. MPEP 2123 I states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments.” Riess et al. further teaches that the composition may comprise a sweet-tasting carbohydrate, such as sucrose ([0117]), which is known to be a sweetener and thus falls within the class of components disclosed earlier at paragraph [0012]. Utilization of sucrose as the sweetener of the substance mixture would thus be obvious.
As for claim 109, Riess et al. discloses the beverage may be a carbonated soft drink or a flavored water/“near water” beverage ([0103]). Riess et al. further discloses that near water beverages are carbonated drinks that are “only weakly sweetened (less than 5% sucrose…)” ([0104]), which suggests that conventional carbonated soft drinks would be sweetened to a degree that exceeds that of being “only weakly sweetened”, presumably greater than or equal to 5% sucrose. As such, the inclusion of about 5 wt.% sucrose by weight of the beverage would be obvious to a skilled practitioner.
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 72-74, 79-83, 86, 87, and 89 over Riess et al.: Applicant’s arguments have been fully considered but they are not persuasive. The previously-pending claims were all canceled, so the arguments are being considered in relation to the newly-presented claims that cover comparable embodiments of the claimed invention.
Applicant asserted that new independent claims 90 and 97 use a “consisting of’ transitional phrase and no longer include a limitation to add an optional flavoring ingredient (Applicant’s Remarks, p. 6, ¶2). Applicant indicated the narrower claims were “in response to the Board’s concerns with the previously appealed claims” (Applicant’s Remarks, p. 6, ¶3).
However, the Board decision did not rely solely on the optional flavor ingredients as providing the bitterness that is remedied by the inclusion of naringenin. The omission of the limitation does not render the claims non-obvious. Examiner maintains that the disclosure of Riess et al. provides adequate instruction for deeming the claimed compositions obvious.
Applicant next argued that Riess et al. distinguishes “sweeteners” from sweet-tasting carbohydrates at paragraph [0043] (Applicant’s Remarks, p. 6, ¶4).
Examiner has previously established that sucrose may constitute a sweetener as disclosed in Riess et al., as was affirmed by the Board (Board Decision, p. 11, ¶2 – p. 12, ¶1).
Applicant then again reasserted that unexpected results in reliance on the Third Ley Declaration (Applicant’s Remarks, p. 7, ¶2).
The data in the declaration has been considered previously and was determined to be unpersuasive, as was affirmed by the Board (Board Decision, p. 7, ¶3 – p. 10, ¶2).
Conclusion
Claims 90-109 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
Prosecution Insights