DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 11/14/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 15 and 21
Withdrawn claims: None
Previously canceled claims: 1-14, 16-20, 22, and 23
Newly canceled claims: None
Amended claims: 15
New claims: 24-26
Claims currently under consideration: 15, 21, and 24-26
Currently rejected claims: 15, 21, and 24-26
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 15, 21, and 24-26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Prakash et al. (U.S. 2007/0128311 A1).
Regarding claim 15, Prakash et al. discloses a low-calorie sweetener composition ([0896]) comprising a combination of 0.2% (w/w) or more of an NHPS that may be rebaudioside A ([0900], [0048], [0068]-[0069]), 1% (w/w) or more of invert sugar and 90% (w/w) or more of sucrose ([0896]-[0897], where the bulking agent may be sucrose, invert sugar, or a combination of the two; [0900], where 1-10% (w/w) of the NHPS would leave the remaining 90-99% (w/w) of the material to be any combination of invert sugar and sucrose) on a dry weight basis ([0900]), wherein the low-calorie sweetener composition provides a sweetness profile identical to sucrose ([0018], [0020], [0043], [0120], [0143]). The disclosure of Prakash et al. is not considered to disclose the claimed ranges with sufficient specificity to anticipate the claimed composition, which is thus rejected under 35 U.S.C. § 103(a) instead of 35 U.S.C. § 102(b). MPEP 2131.03 II.
As for claim 21, Prakash et al. discloses the rebaudioside A as having a purity of at least about 98% ([0056]).
As for claim 24, Prakash et al. discloses the low-calorie sweetener composition ([0896]) comprising a combination of 0.25% (w/w) or more of an NHPS that may be rebaudioside A ([0900], [0048], [0068]-[0069]), 1.5% (w/w) or more of invert sugar and 97% (w/w) or more of sucrose ([0896]-[0897], where the bulking agent may be sucrose, invert sugar, or a combination of the two; [0900], where 1-10% (w/w) of the NHPS would leave the remaining 90-99% (w/w) of the material to be any combination of invert sugar and sucrose) on a dry weight basis ([0900]). The disclosure of Prakash et al. is not considered to disclose the claimed ranges with sufficient specificity to anticipate the claimed composition, which is thus rejected under 35 U.S.C. § 103(a) instead of 35 U.S.C. § 102(b). MPEP 2131.03 II.
As for claim 25, the disclosure of invert sugar and sucrose in Prakash et al. ([0897]) are considered to encompass pure components. Such pure components would be indistinguishable from nitrogen-purged components. The claimed limitations that the “invert sugar comprises nitrogen-purged invert sugar” and “the sucrose comprises nitrogen-purged sucrose” would thus be obvious to a skilled practitioner.
As for claim 26, the disclosure of invert sugar and sucrose in Prakash et al. ([0897]) are considered to encompass pure components. Such pure components would be indistinguishable from deoxygenated components. The claimed limitations that the “invert sugar comprises deoxygenated invert sugar” and “the sucrose comprises deoxygenated sucrose” would thus be obvious to a skilled practitioner.
Double Patenting
Claims 15, 21, and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,531,683 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently-claimed compositions require the same components as those of claim 1 of the ‘683 patent and would be obvious in view of the patented composition. Dependent claims 15 and 2 are essentially identical. Claim 24 is slightly narrower than claim 15 and would be obvious according to the same rationale as that for claim 15. Claims 25 and 26 require implicit method steps that are disclosed in the method of claim 1.
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 15 and 21 over Prakash et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the previously-cited paragraphs of Prakash et al. do not render the presently-claimed composition obvious (Applicant’s Remarks, p. 6, ¶2).
The claims as presently amended necessitated updated claim rejections. The disclosure in Prakash et al. of tabletop sweetening compositions ([0896]-[0906]) renders the claimed compositions obvious as detailed above in the claim rejections.
Applicant then asserted that Prakash et al. fails to teach or suggest the claimed composition because it does not provide “any guidance for selecting and combining the particular carbohydrates (i.e., invert sugar and sucrose) with Rebaudioside A as the NHPS” (Applicant’s Remarks, p. 6, ¶3 – p. 7, ¶1).
However, MPEP 2131.02 states: “when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named”. Prakash et al. explicitly recites rebaudioside A, invert sugar, and sucrose as being combined to form the composition, which is adequate to render the claimed mixture obvious. That Prakash et al. additionally discloses other components does not render the claimed mixture of components non-obvious.
Applicant then argued that Prakash et al. “does not teach, enable, or provide sensory or experimental data demonstrating that selecting invert sugar at the claimed low concentrations together with Rebaudioside A and sucrose yields a sweetness profile identical to sucrose” (Applicant’s Remarks, p. 7, ¶2). Applicant asserted that Prakash et al. does not provide examples of the claimed composition, crystallization data, or sensory testing (Applicant’s Remarks, p. 7, ¶3 – p. 8, ¶1).
However, Prakash et al. suggests that the disclosed compositions would have a taste profile approaching and mimicking that of sucrose ([0018], [0020], [0043], [0120], [0143]), which is essentially the aim of the entire field of art of natural sucrose substitutes. A mixture that was identical in taste profile to that of sucrose would reasonably be expected where sucrose still comprised over 97% of the material in the composition. Examiner maintains that the disclosure of Prakash et al. is adequate to deem the claimed composition obvious. No additional experimental data confirming the taste attributes of the composition is necessary in the prior art reference.
Applicant alleged that the present claim rejections are improper due to essentially combining unrelated portions of prior art references together (Applicant’s Remarks, p. 8, ¶2). Applicant asserted that the claim rejections do not identify evidence showing that a practitioner would have selected the specifically-claimed combination of components at the claimed concentrations (Applicant’s Remarks, p. 8, ¶3).
However, the present claim rejection relies primarily on the tabletop composition disclosed at [0896]-[0897], [0900]. Rebaudioside A is the primary NHPS discussed throughout the reference. The rejection thus does not rely on improperly formulated obviousness rejection based on combining unrelated elements of the prior art reference. The rejections rely on concentrations that are disclosed, explicitly or implicitly, in Prakash et al. Producing a composition according to Prakash et al. would clearly necessitate selecting components for producing a mixture. The disclosure of alternative components cannot fairly be dismissed as simply being too broad to be of any instructive value. Examiner maintains that the claim rejections are properly constructed and supported by the disclosure of Prakash et al. The claimed “functional roles” do not limit the claimed composition; it is unnecessary that the prior art characterize the components in the same manner as the present claims, so long as the compositional requirements are met. MPEP 2145 II.
Applicant argued that Prakash et al. does not provide organoleptic data analyzing the sweetness profile of the claimed composition (Applicant’s Remarks, p. 8, ¶4). Applicant asserted that the claimed composition exhibits unexpected results in the form of a taste profile that is close to sucrose with sweetness that is two times higher (Applicant’s Remarks, p. 8, ¶4 – p. 9, ¶1).
However, MPEP 716.02(b) I states: “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’” Examiner maintains that the determination that a mixture that comprises at least 97% sucrose tastes identical to 100% sucrose should not be considered unexpected, especially where the additional ingredients are intended to produce a composition that still maintains an overall taste/sweetness profile indistinguishable from sucrose. The assertion of unexpected results is insufficient to overcome the present prima facie showing of obviousness.
Applicant next asserted that the disclosures of Prakash et al. are broad lists that are insufficient to disclose/enable the claimed composition “because they lack any working example or empirical data”, particularly related to component interactions, crystallization control, or organoleptic properties (Applicant’s Remarks, p. 9, ¶2). Applicant asserted that the present specification provides experimental data that “demonstrates operability and superiority over prior art teachings” (Applicant’s Remarks, p. 9, ¶3 – p. 10, ¶1).
However, MPEP 2123 II states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” It is unnecessary for the prior art reference to specifically detail working examples of each combination of components in order to rely on the reference for deeming such combinations obvious. It is also not necessary for the reference to characterize the components as having the same functionality as presently asserted. The claimed composition is indistinguishable from the composition taught in Prakash et al. MPEP 2112.01 II states: “Products of identical chemical composition can not have mutually exclusive properties.” Thus, the claimed composition cannot have “operability and superiority over prior art teachings”, as Applicant asserts, since the comparison is between the same compositions. Further, the disclosure of Prakash et al. is not “genus-level”, as Applicant repeatedly asserts, since all of the claimed components are specifically listed in the cited paragraphs of the reference. The disclosure is merely a listing of species. The potential combinations of components do not render the disclosure as being “genus-level”.
Applicant concluded that the claimed composition is defined by three features—minimum component concentrations, invert sugar functioning as a crystallization inhibitor, and empirical data—that are not taught in Prakash et al. (Applicant’s Remarks, p. 10, ¶2).
Examiner maintains that Prakash et al. discloses composition limitations that render the claimed minimum component concentrations obvious. The functionality of the invert sugar need not be disclosed in the prior art. Data showing sensory and crystallization characteristics also does not need to be disclosed in the prior art. Consideration of the three components together, along with limitations of the present claims, does not cause the claimed compositions to be nonobvious.
The rejections of claims 15 and 21 have been maintained herein.
Double patenting: Applicant deferred responding to the double patenting rejections (Applicant’s Remarks, p. 11, ¶2).
The double patenting rejections are 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 15, 21, and 24-26 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.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793