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 November 9, 2025 is acknowledged. Claims 1-3, 23-33, 35, 37, and 38 are pending in the application. Claims 4-22, 34, 36, and 39 have been cancelled.
Claim Objections
Claims 1, 26-30, 32, and 38 are objected to because of the following informalities:
In claim 1 at line 4, it is suggested to remove the period “.” after “(v)” and before “optionally”.
In claim 26 at line 2, the claim includes the claim amendment “4.3” and has the status identifier of “Currently amended”. However, this amendment has been made to the previous version of the claim in the claim set dated March 31, 2025 which is considered as the immediate prior version of the claims.
In claim 27 in line 2, it is recommended to insert a comma “,” after “a stevioside” and before “the stevioside”.
In claim 28 in line 2, it is suggested to insert a comma “,” after “a rebaudioside” and before “the rebaudioside”.
Claim 29 is not reflective of the previous claim 29 in the claim set dated March 31, 2025 which is considered as the immediate prior version. In the current claim set of November 9, 2025, claim 29 recites “The beverage of claim 28 wherein the rebaudioside is rebaudioside D”. However, it is noted that the amendment “28” at line 1 of the current claim set has been made in the previous version of the claim dated March 31, 2025. Additionally, the current claim set inadvertently omits “rebaudioside” and before “
Claim 30 is not reflective of the previous claim 30 in the claim set dated March 31, 2025 which is considered as the immediate prior version. In the current claim set at line 3 of claim 30, a comma “,” after “rebaudioside” and before “(iii)” was inserted, but the appropriate claim marking(s) (i.e., underlining) of the newly added comma has inadvertently been omitted.
In claim 30 at the end of line 3, it is suggested to remove the comma“,” after “optionally”.
In claim 30 at line 4, it is suggested to replace the semicolon “;” with a comma “,” after “colorant” and before “(iv)”.
In claim 30 at the end of line 4, it is suggested to remove the period “.” after “(v)”.
In claim 32 at line 1, it is suggested to insert “of” after “amount” and before “glucose”.
In claim 38 at line 1, it is recommended to insert a comma “,” after “flavorant” and before “wherein”.
Applicant is reminded that amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered). All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” See MPEP 714.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Hermansen et al. US 20040081712 (hereinafter “Hermansen”).
With respect to claim 1, Hermansen teaches a drink comprising sweeteners (paragraphs [0124] and [0161]-[0163]).
Regarding the recitation of “for oral consumption in the preamble of claim 1, 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 (i) glucose, (ii) a non-fructose producing high potency sweetener, (iii) optionally a glucose-based sugar polymer, (iv) optionally a non-synthetic colorant, and (v) optionally a flavorant in claim 1, Hermansen teaches the drink comprises glucose, a substance extracted from Stevia rebaudiana such as stevioside or a rebaudioside (non-fructose producing high potency sweetener), and optionally flavoring agents (paragraphs [0088], [0089], [0106], [0124], [0161]-[0163], [0177], and [0179]-[0180]).
Regarding the recitation of wherein the beverage comprises less than 0.002 molar of high fructose corn syrup, sucrose, or any form of fructose or fructose-containing saccharide in claim 1, Hermansen is silent with respect to the presence of high fructose corn syrup, sucrose, and any form of fructose or fructose-containing saccharide in the drink (paragraphs [0088], [0089], [0124], [0161]-[0163], [0177], and [0179]).
Regarding the recitation of wherein the molar ratio of glucose to non-fructose producing high potency sweetener in the beverage is about 600/0.007 (6000/0.07) to about 100/0.07 and wherein the concentration of glucose in the beverage is 0.7 molar or less in claim 1, Hermansen teaches 0 to 16.7 mmol/L glucose and 10-9 to 10-3 mol/L stevioside were used in the preparation which is equal to a molar ratio of glucose to stevioside of up to about 1,169,000/0.07 (calculated from (0.0167 mol glucose /1x10-9 mol stevioside) x (70,000,000/70,000,000)) (paragraphs [0181] and [0188]). The range of Hermansen 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).
With respect to claim 2, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein the beverage is a carbonated beverage, a still beverage, a juice, a water beverage, a tea beverage, a beverage obtained from a sachet, a beverage obtained from a syrup mix, or a beverage obtained from a concentrate or syrup in claim 2, Hermansen teaches the drink is a water, tea, juice or may be obtained from a packaged powdery mixture in combination with a liquid (paragraphs [0161] and [0162]).
With respect to claim 3, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein the non-fructose producing high potency sweetener is selected from the group consisting of a stevioside, a rebaudioside, a mogroside, sucralose, acesulfame-K, cyclamate, aspartame and combinations thereof in claim 3, Hermansen teaches the drink comprises a substance extracted from Stevia rebaudiana such as stevioside or a rebaudioside and may also include aspartame (paragraphs [0088], [0089], [0106], [0124], [0177], [0179], and [0180]).
With respect to claim 23, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein said beverage comprises less than 1 gram per serving of high fructose corn syrup, sucrose, or any form of fructose or fructose-containing saccharide in claim 23, Hermansen is silent with respect to the presence of high fructose corn syrup, sucrose, and any form of fructose or fructose-containing saccharide in the drink (paragraphs [0088], [0089], [0124], [0161]-[0163], [0177], and [0179]).
With respect to claim 24, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein the beverage comprises less than about 0.6 M glucose in claim 24, Hermansen teaches the preparation comprises 0-16.7 mmol/L of glucose (paragraphs [0180] and [0188]).
With respect to claim 25, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein the glucose comprises not less than 10% of the beverage caloric value in claim 25, Hermansen teaches the drink comprises glucose and a substance extracted from Stevia rebaudiana such as stevioside or a rebaudioside (non-fructose producing high potency sweetener), and it is understood that glucose provides all of the calories to the beverage and the substance extracted from Stevia rebaudiana does not contribute to the caloric value of the drink (paragraphs [0088], [0089], [0106], [0124], [0161]-[0163], [0177], and [0179]-[0180]).
With respect to claim 26, Hermansen is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the recitation of wherein the pH of the beverage is about 2.7 to 4.3 in claim 26, Hermansen does not expressly disclose the pH of the drink. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH in Hermansen with the expectation of successfully preparing a functional drink product. One of ordinary skill in the art would have been motivated to do so because Hermansen teaches the drink may be a juice (paragraphs [0161]-[0162]) and it is well understood in the art that juices have an acidic pH typically in the range of about 2 to about 4, the pH of the drink is a function of its ingredients and Hermansen teaches conventional additives may be included (paragraph [0124]), and it is understood that 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).
With respect to claim 27, Hermansen is relied upon for the teaching of the beverage of claim 3 as addressed above.
Regarding the recitation of wherein when the high potency sweetener is a stevioside, the stevioside concentration in the beverage ranges from 0.1 millimolar to 1.0 millimolar in claim 27, Hermansen teaches using stevioside in concentrations of 10-9 to 10-3 mol/L (0.000001 millimolar to 1 millimolar) and encompasses the presently claimed range (paragraphs [0180] and [0181]). 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).
With respect to claim 28, Hermansen is relied upon for the teaching of the beverage of claim 3 as addressed above.
Regarding the recitation of wherein when the high potency sweetener is a rebaudioside, the rebaudioside concentration in the beverage ranges from 0.1 millimolar to 1.0 millimolar in claim 28, Hermansen teaches using a substance extracted from Stevia rebaudiana, such as stevioside or rebaudioside, in concentrations of 10-9 to 10-3 mol/L (0.000001 millimolar to 1 millimolar) and encompasses the presently claimed range (paragraphs [0088], [0089], [0180] and [0181]). 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).
With respect to claim 29, Hermansen is relied upon for the teaching of the beverage of claim 28 as addressed above.
Regarding the recitation of wherein the rebaudioside is rebaudioside D in claim 29, Hermansen teaches the substance extracted from Stevia rebaudiana used in the drink may include rebaudioside D (paragraphs [0088], [0089], [0106], [0161]-[0163], [0177], and [0179]-[0180]).
Claims 30-33, 35, and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Hermansen et al. US 20040081712 (hereinafter “Hermansen”) in view of Markosyan EP 2486806 (hereinafter “Markosyan”).
With respect to claim 30, Hermansen teaches a drink comprising sweeteners (paragraphs [0124] and [0161]-[0163]).
Regarding the recitation of “for oral consumption in the preamble of claim 30, 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 an exogenous sweetening system comprising (i) glucose, (ii) a non-fructose producing high potency sweetener comprising a mogroside and a rebaudioside, (iii) optionally a non-synthetic colorant, (iv) optionally a glucose-based sugar polymer, and (v) optionally a flavorant in claim 30, Hermansen teaches the drink comprises glucose, a substance such as a rebaudioside (non-fructose producing high potency sweetener), and optionally flavoring agents (paragraphs [0088], [0089], [0106], [0124], [0161]-[0163], [0177], and [0179]-[0180]).
However, Hermansen does not expressly disclose the drink comprises a mogroside.
Markosyan teaches sweeteners from the extract of Stevia rebaudiana, such as rebaudioside. The sweeteners may be combined with other sweeteners, such as glucose and mogrosides, and the sweeteners may be applied to beverages (paragraphs [0001], [0018]-[0019], [0024], [0034], and [0036]-[0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Markosyan, to select mogroside based in its suitability for its intended use as an additional sweetener in the drink of Hermansen with the expectation of successfully preparing a drink. One of ordinary skill in the art would have been motivated to so because Markosyan and Hermansen similarly teach drinks comprising similar sweetening ingredients, Hermansen teaches the drink may optionally comprises one or more additional sweeteners (paragraph [0124]), beverages comprising rebaudioside and mogroside were known in the art before the effective filing date of the claimed invention as shown in Markosyan, and said combination would amount to the 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. 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 the recitation of wherein the beverage comprises less than 0.002 molar of HFCS/high fructose corn syrup, sucrose, or any form of fructose or fructose-containing saccharide in claim 30, Hermansen is silent with respect to the presence of high fructose corn syrup, sucrose, and any form of fructose or fructose-containing saccharide in the drink (paragraphs [0088], [0089], [0124], [0161]-[0163], [0177], and [0179]).
Regarding the recitation of the concentration of glucose in the beverage ranges from 0.1 molar to 0.7 molar and the rebaudioside and mogroside concentration in the beverage ranges from 0.1 millimolar to 1.0 millimolar in claim 30, modified Hermansen teaches this limitation since Hermansen as modified by Markosyan teaches a beverage comprising glucose, a rebaudioside, and mogroside as addressed above, and Hermansen teaches using a substances, such as rebaudioside, in concentrations of
10-9 to 10-3 mol/L (0.000001 millimolar to 1 millimolar) (paragraphs [0088], [0089], [0180] and [0181]) as well as the drink comprises up to 30 weight percent of a carbohydrate source (up to 300 g of glucose/L of beverage or up to about 1.67 molar calculated from (300 g of glucose/L of beverage) x (1 mole glucose/180.16 g)) (paragraphs [0106], [0125], [0161]-[0163], [0177], and [0179]). 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).
With respect to claim 31, modified Hermansen is relied upon for the teaching of the beverage of claim 30 as addressed above.
Regarding the recitation of wherein the beverage comprises less than about
0.6 M glucose in claim 31, modified Hermansen teaches this limitation since Hermansen teaches the drink comprises up to 30 weight percent of a carbohydrate source (up to 300 g of glucose/L of beverage or up to about 1.67 molar calculated from (300 g of glucose/L of beverage) x (1 mole glucose/180.16 g)) (paragraphs [0106], [0125], [0161]-[0163], [0177], and [0179]). 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).
With respect to claim 32, modified Hermansen is relied upon for the teaching of the beverage of claim 30 as addressed above.
Regarding the recitation of wherein the amount of glucose per serving of the beverage is 40 g or more in claim 32, modified Hermansen teaches this limitation since Hermansen teaches the drink comprises up to 30 weight percent of a carbohydrate source (up to 300 g/L of glucose) and encompasses the presently claimed range (paragraphs [0106], [0125], [0161]-[0163], [0177], and [0179]). 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).
With respect to claim 33, modified Hermansen is relied upon for the teaching of the beverage of claim 30 as addressed above.
Regarding the recitation of wherein the non-fructose producing high potency sweetener comprises rebaudioside D in claim 33, modified Hermansen teaches this limitation since Hermansen teaches the drink comprises rebaudioside D (paragraphs [0088], [0089], [0106], [0161]-[0163], [0177], [0179]-[0181], and [0188]).
With respect to claim 35, modified Hermansen is relied upon for the teaching of the beverage of claim 33 as addressed above.
Regarding the recitation of wherein the beverage comprises other non-fructose high potency sweeteners besides a mogroside and rebaudioside in claim 35, modified Hermansen teaches this limitation since Hermansen teaches the drink comprises a substance extracted from Stevia rebaudiana such as stevioside or a rebaudioside and may also include aspartame (paragraphs [0088], [0089], [0106], [0124], [0161]-[0163], [0177], [0179], and [0180]).
With respect to claim 37, modified Hermansen is relied upon for the teaching of the beverage of claim 30 as addressed above.
Regarding the recitation of wherein the beverage comprises a glucose-based sugar polymer which is selected from the group consisting of maltose, trehalose, malto-oligosaccharide, and isomalto-oligosaccharides, or combinations thereof in claim 37, Hermansen does not expressly disclose the drink comprises the claimed glucose-based sugar polymer.
Markosyan teaches sweeteners from the extract of Stevia rebaudiana, such as rebaudioside. The sweeteners may be combined with other sweeteners, such as glucose, mogrosides, maltose, and maltooligosaccharides, and the sweeteners may be applied to beverages (paragraphs [0001], [0018]-[0019], [0024], [0034], and [0036]-[0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Markosyan, to select maltose and maltooligosaccharides based in their suitability for their intended use as an additional sweetener in the drink of Hermansen with the expectation of successfully preparing a drink. One of ordinary skill in the art would have been motivated to so because Markosyan and Hermansen similarly teach drinks comprising similar sweetening ingredients, Hermansen teaches the drink may optionally comprises one or more additional sweeteners (paragraph [0124]), beverages comprising maltose and maltooligosaccharides were known in the art before the effective filing date of the claimed invention as shown in Markosyan, and said combination would amount to the 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. 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).
With respect to claim 38, modified Hermansen is relied upon for the teaching of the beverage of claim 30 as addressed above.
Regarding the recitation of containing a flavorant, wherein the flavorant is non-synthetic in claim 38, modified Hermansen teaches this limitation since Hermansen teaches the drink comprises one or more flavoring agents and naturally occurring, plant-extractable compounds (paragraphs [0124], [0150], [0151], and [0163]).
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 1-3, 23, 24, 27, 30, 31, and 33-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-9, 11, and 12 of U.S. Patent No. 11,219,229. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application and claims 1 and 11-12 of the patent are directed to a consumer good (composition) comprising an exogenous sweetening system comprising (i) glucose, (ii) optionally a glucose-based sugar polymer, (iii) a non-fructose producing high potency sweetener, (iv) optionally, a non-synthetic colorant, and (v), optionally a flavorant, wherein the consumer good (composition) comprises less than 1 gram per serving of HFCS, sucrose, or any form of fructose or fructose-containing saccharide. A beverage as recited in the instant claims is a sweetened consumer good. Therefore, it would have been obvious to one of ordinary skill in the art to select a beverage as the sweetened consumer good. Patented claim 9 recites the same glucose polymers as instant claim 37. Additionally, the claims in the instant application and patented claims 11 and 12 are directed to compositions that contain stevioside, the same glucose-based sugar polymer, and are essentially free of added fructose. While the molar ratio of glucose to non-fructose producing high potency sweetener is not exactly the same, it would have been obvious to one of ordinary skill in the art to adjust the amount of stevioside with the expectation of successfully preparing an organoleptically desirable beverage.
Response to Arguments
Applicant’s remarks filed November 9, 2025 are acknowledged.
Due to the amendments to the claims as well as Applicant’s arguments, the 35 USC 112 rejection in the previous Office Action has been withdrawn (P5-P10).
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues there is limited discussion of any drink in Hermansen. The disclosure of a functional drink is disclosed only at paragraphs [0162]-[0163] of Hermansen. Nothing said in these paragraphs pertain to any concentration limitation of glucose in the drink, a concentration limitation of any fructose producing sugar in the drink, nor a ratio of glucose to non-fructose producing high potency sweetener as recited in the pending claims. The experimental intravenous solutions of Example 1 have nothing to do with the nutritional drink discussed at paragraphs [0162]-[0163] of Hermansen. The in vitro solutions in Example 2 of Hermansen are not a beverage as envisioned by the claims. Treating in vitro concentrations as equivalent to in vivo concentrations found in a beverage makes little sense. Only examples 6, 7, and 8 of Hermansen relate to administration in humans (diabetic patients), and each of these examples involve dietary food supplementation. The Examiner entirely ignores the requirement of independent claim 1 (also a requirement of independent claim 30), and therefore dependent claims 2, 3, and 23-29, that the beverage must contain less than 0.002 molar of high fructose corn syrup, sucrose, or any form of fructose or fructose-containing saccharide, something not taught by Hermansen. Hermansen states that a preferred carbohydrate in his compositions is saccharose (that is table sugar, sucrose, which is metabolized in part to fructose, see [0125]). While Hermansen at paragraph [0106] talks of orally administrating steviol/steviosides to humans, it sets forth no specific drink composition for humans and does not require glucose to be an ingredient in all of such referenced drinks (P10-P17).
Applicant also argues the Examiner does not indicate why one would be motivated to select mogrosides from among the list of possible sweeteners to be added to a beverage containing a steviol extract sweetener, nor why a person of ordinary skill in the art would limit the rebaudioside and mogroside concentration in the beverage from 0.1 millimolar to 1.0 millimolar as recited in independent claim 30, and not mix the same with the high-fructose corn syrup also referenced in Markosyan as another sweetener that can be added to the beverage. Markosyan sets no concentration limits are set with respect to the amount of glucose that may be used in within the disclosed beverages, and Markosyan does not require that glucose even be included in the drinks of EP 2,486,806, as required both of present independent claims 1 and 30. Neither Markosyan nor Hermansen teach using less 0.002 molar of high fructose corn syrup (HFCS), sucrose, or any form of fructose or fructose-containing saccharide, in any drink of their disclosures. Hermansen would allow for high concentrations of sugars, including high fructose corn syrup which it specifically lists as a possible sweetener, to be added to its drink. Markosyan specifically states that high-fructose corn syrup and fructooligosaccharides may be combined with its steviol extract drinks, and does not teach limiting the amount of such in its drinks (P17-P18).
Examiner disagrees. Hermansen or Hermansen in view of Markosyan teaches the presently claimed beverages, and the claimed limitations have not been ignored by the Examiner. As previously addressed, Hermansen teaches a drink comprising sweeteners. The drink comprises glucose, a substance extracted from Stevia rebaudiana such as stevioside or a rebaudioside (non-fructose producing high potency sweetener), and optionally flavoring agents (paragraphs [0088], [0089], [0106], [0124], [0161]-[0163], [0177], and [0179]-[0180]). Hermansen also teaches 0 to 16.7 mmol/L glucose and 10-9 to 10-3 mol/L stevioside were used in the preparation which is equal to a molar ratio of glucose to stevioside of up to about 1,169,000/0.07 (calculated from (0.0167 mol glucose /1x10-9 mol stevioside) x (70,000,000/70,000,000)) (paragraphs [0181] and [0188]).
Although the examples of Hermansen relate to administration of glucose and stevioside by intravenous injection or in vitro to islet cells, Hermansen is not limited to these embodiments since the reference also teaches the substances can be administered orally such as in a drink (paragraphs [0054], [0099], [0100], [0106], and [0161]-[0163]). However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). "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)).
Also, while Hermansen teaches saccharose (glucose + fructose) is a preferred carbohydrate, Hermansen is not limited to using saccharose as the carbohydrate component since Hermansen teaches using glucose in other embodiments (paragraphs [0177] and [0179]-[0180]). Applicant is reminded 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). Additionally, Hermansen teaches saccharose should be limited by using other sweeteners like e.g. aspartame (paragraph [0125]). Further, Hermansen is silent with respect to the presence of high fructose corn syrup, sucrose, and any form of fructose or fructose-containing saccharide in the drink (paragraphs [0088], [0089], [0124], [0161]-[0163], [0177], and [0179]). "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)).
The Examiner recognizes that obviousness may be established by 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 motivation to modify Hermansen is found within the references themselves as well as within the knowledge generally available to one of ordinary skill in the art.
Although Hermansen does not expressly disclose the drink comprises mogroside (claim 30), Markosyan is relied upon for this teaching since Markosyan teaches sweeteners from the extract of Stevia rebaudiana, such as rebaudioside, that may be combined with other sweeteners, such as glucose and mogrosides, and the sweeteners may be applied to beverages (paragraphs [0001], [0018]-[0019], [0024], [0034], and [0036]-[0037]). One of ordinary skill in the art would have been motivated to select mogroside based in its suitability for its intended use as an additional sweetener in the drink of Hermansen with the expectation of successfully preparing a drink because Markosyan and Hermansen similarly teach drinks comprising similar sweetening ingredients, Hermansen teaches the drink may optionally comprises one or more additional sweeteners (paragraph [0124]), beverages comprising rebaudioside and mogroside were known in the art before the effective filing date of the claimed invention as shown in Markosyan, and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. 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).
Markosyan does not disclose all the features of the presently claimed invention. However, Markosyan is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Additionally, as stated in MPEP 2145 III., “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]I is not necessarily that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve the ability to combine their specific structures.”).
Applicant argues the Examiner has failed to provide any basis for why claims 6-8 of US Patent No. 11,219,229 make any of the presently pending claims obvious. The Examiner fails to appreciate the very basis of the invention which has led to the issuance of the basic patent around the world. That is, Applicants have not sought simply and organoleptically desirable beverage in the present claims, but one that meets stringent requirements to provide a drink that avoids common metabolic disease (P18-P20 and P23).
Examiner disagrees. Claims 6-8 of US Patent No. 11,219,229 are relevant to the claimed invention since they teach the consumer good is essentially free of added fructose (claim 6, claimed invention of the instant application includes less than 0.002 molar of fructose), the high potency sweetener is selected from the group consisting of miraculin, monellin, brazzein, curculin, mabinlin, pentadin, and thaumatin or combinations thereof (claim 7, non-fructose producing high potency sweetener), and the non-fructose producing high potency sweetener is within the range of about 20 nanomolar to 500 nanomolar (about 0.02 millimolar to about 0.5 millimolar) (claim 8, claimed invention of the instant application includes from 0.1 millimolar to 1.0 millimolar of non-fructose producing high potency sweetener). Additionally, the non-statutory double patenting rejections are maintained as set forth above.
Applicant argues while Hermansen recommends the use of rebaudioside to treat non-insulin dependent diabetes mellitus, it fails to take account in its compositions that high fructose containing sweeteners themselves lead to fatty liver disease, and late onset diabetes, a plague on society affecting large numbers of people worldwide. Hermansen fails to understand that the after-taste of many artificial sweeteners, and natural sweeteners, such as rebaudiosides, at certain concentrations leave after tastes that reduced their ability to replace natural fructose containing sugars. While Markosyan does recognize the after-taste problem, the reference finds resolution of the problem in increasing rebaudioside B in its steviol extract (see Table 1). Contrary to Examiner’s assertion that a POSA would simply “adjust the amount of stevioside with the expectation of successfully preparing an organoleptically desirable beverage” given other sweeteners in the drink (that is, to adjust the same get the level of sweetness that is pleasing), the present inventors use glucose which they understand can be used by any cell in the body, and which does not need metabolism via the liver. It certainly was not obvious that such a beverage could even be provided, thus the ranges recited in the claims are not simply chosen to provide an “organoleptically desirable beverage” which the Examiner uses to provide motivation leading to the presently claimed drinks (P20-P22).
Examiner disagrees. As previously addressed, the claimed invention is obvious in view of Hermansen and modified Hermansen. Applicant is reminded the mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793