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 Response and Amendment after Non-Final Office Action filed 07/09/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment of the claims and/or persuasive remarks: (1) the objections to claims 113-119 have been withdrawn; and (2) the 35 U.S.C. 112(d) rejections of claims 113 and 117 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 111-124
Withdrawn claims: None
Previously canceled claims: 1-110
Newly canceled claims: None
Amended claims: 111 and 113-119
New claims: 125-128
Claims currently under consideration: 111-128
Currently rejected claims: 111-128
Allowed claims: None
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 111-128 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (U.S. 2015/0017284 A1).
Regarding claim 111, Prakash et al. discloses a sweetened composition comprising a sweetener ([0299]-[0302]; [0305]-[0306]) in an amount having a sweetness equal to or greater than 1.5% (w/v) sucrose equivalence ([0585], where the composition may comprise 100-140,000 ppm, or 0.01-14% w/v, of a carbohydrate sweetener; [0306], where the carbohydrate sweetener may be sucrose) and a sweetness enhancer comprising neomogroside in an amount of 15-50 ppm (specifically, about 0.01-3,000 ppm) ([0305]-[0309]). The disclosure of Prakash et al. is not considered to disclose the claimed ranges with sufficient specificity to support an anticipation rejection under 35 U.S.C. § 102(a)(1), so the rejection is under 35 U.S.C. § 103 on the basis of obviousness. MPEP 2131.03 II. The sweetness of the neomogroside is an inherent property. MPEP 2112.01 II (“A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”). The claimed concentration range is considered to necessarily meet the claimed sweetness limitation of a sweetness less than 1.5% (w/v) sucrose equivalence. Since Prakash et al. discloses the claimed concentration, the claimed property is considered to be implicitly disclosed as well.
As for claim 112, Prakash et al. discloses the sweetness enhancer as being present in a total amount ranging from 15-35 ppm (specifically, about 0.01-3,000 ppm) ([0309]).
As for claim 113, Prakash et al. discloses the sweeteners as being nutritive ([0306]).
As for claim 114, Prakash et al. discloses the nutritive sweetener as being sucrose ([0305]-[0306]).
As for claim 115, Prakash et al. discloses the composition as being a beverage ([0576], [0585]).
As for claim 116, Prakash et al. discloses the sweetness enhancer “can be provided as a pure compound” ([0309]), which renders the claimed range of at least 80 wt% pure obvious.
As for claim 117, Prakash et al. discloses the sweeteners as being nutritive ([0306]).
As for claim 118, Prakash et al. discloses the nutritive sweetener as being sucrose ([0305]-[0306]).
As for claim 119, Prakash et al. discloses the sweetness enhancer “can be provided as a pure compound” ([0309]), which renders the claimed range of at least 80 wt% pure obvious.
As for claim 120, Prakash et al. discloses a method comprising adding neomogroside in an amount of 15-50 ppm ([0305]-[0309]) to a sweetened composition ([0299]-[0302], [0577]). Although Prakash et al. does not explicitly disclose the neomogroside as being added as a “sweetness enhancer”, the disclosed method is adequate to render the claimed method obvious. MPEP 2144 IV (“The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”).
As for claim 121, Prakash et al. discloses the sweetness enhancer as being present in a total amount ranging from 15-35 ppm (specifically, about 0.01-3,000 ppm) ([0309]).
As for claim 122, Prakash et al. discloses the composition as being a beverage ([0576], [0585]).
As for claim 123, Prakash et al. discloses the sweetness enhancer “can be provided as a pure compound” ([0309]), which renders the claimed range of at least 80 wt% pure obvious.
As for claim 124, Prakash et al. discloses the sweetness enhancer “can be provided as a pure compound” ([0309]), which renders the claimed range of at least 80 wt% pure obvious.
As for claim 125, Prakash et al. discloses the sweetener as being non-nutritive ([0299]).
As for claim 126, Prakash et al. discloses the non-nutritive sweetener as being a steviol glycoside ([0299]).
As for claim 127, Prakash et al. discloses the sweetener as being non-nutritive ([0299]).
As for claim 128, Prakash et al. discloses the non-nutritive sweetener as being a steviol glycoside ([0299]).
Response to Arguments
Claim Objections: Applicant has overcome the objections of claims 113-119 based on amendment to the claims. Accordingly, the claim objections have been withdrawn.
Claim Rejections - 35 U.S.C. § 112: Applicant has overcome the 35 U.S.C. § 112(d) rejections of claims 113 and 117 based on amendments to the claims. Accordingly, the 35 U.S.C. § 112(d) rejections have been withdrawn.
Claim Rejections - 35 U.S.C. § 103 of claims 111-124 over Prakash et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the inclusion of a sweetener below 1.5% (w/v) sucrose equivalence is not taught by Prakash et al. (Applicant’s Remarks, p. 7, ¶1-¶2). Applicant asserted that Prakash et al. is directed toward rebaudioside M solubility issues but does not provide motivation for adding mogroside sweetener in an amount having a sweetness less than 1.5% (w/v) sucrose equivalence—i.e., as a sweetness enhancer (Applicant’s Remarks, p. 7, ¶3 – p. 9, ¶1). Applicant argued that paragraphs [0306]-[0309] of Prakash et al. recite laundry lists of sweeteners without additional instruction for selecting any particular sweetener (Applicant’s Remarks, p. 9, ¶2) and that the disclosed range of 0.1-3,000 ppm “does not provide motivation to select a specific additional sweetener from the laundry list” (Applicant’s Remarks, p. 9, ¶3). Applicant concluded by asserting that sweetener ingredient manipulation requires complex analysis and that mogroside sweetness enhancers are not enabled by Prakash et al. (Applicant’s Remarks, p. 10, ¶1).
However, claim 111 is merely directed to a composition comprising at least two components. The claim is not limited to comprising only those two components. The characterizations of the two components as a “sweetener” and a “sweetness enhancer” do not materially affect the patentability analysis. MPEP 2144 IV (“The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”).
Further, the disclosed concentration range for the neomogroside of 0.1-3,000 ppm is adequate to deem the claimed concentration range obvious. MPEP 2144.05 I (“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”). It does not matter that certain concentrations within the range may be deemed to result in the component being below 1.5% (w/v) sucrose equivalence, since Prakash et al. indicates sweetener components may be used in combination ([0305]), such that the combined sweetness may still be perceived—whether directly or via sweetness enhancement. The concentration range per se is interpreted as fairly teaching that any such concentrations within it are suitable. No additional motivation is necessary for selecting concentrations that fall within the disclosed range.
Also, no additional instruction is necessary for selecting neomogroside from among the disclosed components, since it is specifically recited in the reference. MPEP 2131.02 II (“when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”).
Lastly, the breadth of the claims undermines Applicant’s argument regarding Prakash et al. being enabling or not. None of the present claims require the exclusion of any material that could affect sweetness. Claim 111 also does not require any attribute of the sweetener component beyond being present above a minimum sweetness threshold. Prakash et al. is arguably even more specific than the present independent claims, since it at least recites specific components. Applicant’s comparison to prior cases requiring the identification of functional antibodies does not account for the difference in complexity between the asserted example and mixtures of sweeteners. Both Prakash et al. and the present claims consider the formulation of sweetener mixtures to fall within the ordinary skill in the art.
For all these reasons, Applicant’s arguments are unpersuasive.
The rejections of claims 111-124 have been maintained herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Claims 111-128 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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