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 01/24/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment of the claims: the objections to claims 15 and 17 have been withdrawn; (2) the 35 U.S.C. 112(b) rejections have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 5, and 8-24
Withdrawn claims: None
Previously canceled claims: 2-4, 6, and 7
Newly canceled claims: None
Amended claims: 1, 15, and 17
New claims: None
Claims currently under consideration: 1, 5, and 8-24
Currently rejected claims: 1, 5, and 8-24
Allowed claims: None
Claim Objections
Applicant is advised that should claims 8 and 10 be found allowable, claims 15 and 17 will be objected to under 37 CFR 1.75 as being substantial duplicates thereof, respectively. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1, 8-10, 15-17, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2017/031301 A1).
Regarding claim 1, Kim et al. discloses a method of preparing a concentrated solution having about 15-26 wt% steviol glycoside content (specifically, about 5-40% by weight), the method comprising: (i) heating a volume of solvent consisting of propylene glycol or other polyols to a temperature from about 70-110°C to provide heated solvent (specifically, about 70-90°C), (ii) adding a steviol glycoside blend and mixing to provide a clear concentrate, (iii) cooling the concentrate to provide a final concentrate (p. 5, l. 24 – p. 6, l. 17), wherein the steviol glycoside blend comprises at least about 80% rebaudioside M by weight and has a total steviol glycoside content of about 95% by weight (p. 3, ll. 12-18). Kim et al. further discloses the polyol may be glycerol (p. 10, ll. 7-8). Kim et al further discloses repeated cycles of heating, cooling, and subsequent heating (p. 7, ll. 2-3), wherein heating may be at a temperature in the range of about 70-110°C (p. 5, ll. 29-30). Kim et al. also discloses that the final concentrate is clear by visual inspection for at least about 24 days after preparation (p. 6, ll. 13-14).
Kim et al. does not disclose the final heating step as being for about 2-24 hours.
Regarding the heating step, though, Kim et al. does indicate that the mixture is “agitated continuously until the steviol glycoside is completely dissolved” (p. 6, ll. 2-3), which suggests that the heat is likewise applied as necessary until the steviol glycoside is completely dissolved. Since no requirement regarding the scale of the mixture is presently required, a skilled practitioner would readily recognize that larger concentrations of steviol glycoside may require longer heating periods. As such, manipulation of the heating time as necessary to ensure complete dissolution of the steviol glycoside is considered to be well within the routine experimentation characteristic of the art. The claimed heating time of about 2-24 hours is thus considered obvious to a skilled practitioner.
As for claims 8 and 15, Kim et al. discloses a beverage syrup comprising the final concentrate prepared by the method of claim 1 (p. 10, ll. 13-19).
As for claim 9, Kim et al. discloses the beverage syrup as further comprising an additive (specifically, flavor) (p. 10, ll. 13-19).
As for claims 10 and 17, Kim et al. discloses a method of making a beverage syrup comprising combining a final concentrate according to claim 1 with an additive (specifically, flavor) (p. 10, ll. 13-19).
As for claim 16, Kim et al. discloses the beverage syrup as further comprising an additive (specifically, flavor) (p. 10, ll. 13-19).
As for claim 22, Kim et al. discloses repeating a cycle of heating, shaking, and cooling a solution (p. 7, ll. 1-3), wherein the heating step occurs without stirring.
As for claim 23, as discussed previously in relation to claim 1, Kim et al. indicates that the mixture is “agitated continuously until the steviol glycoside is completely dissolved” (p. 6, ll. 2-3), which suggests that the heat is likewise applied as necessary until the steviol glycoside is completely dissolved. Since no requirement regarding the scale of the mixture is presently required, a skilled practitioner would readily recognize that larger concentrations of steviol glycoside may require longer heating periods. As such, manipulation of the heating time as necessary to ensure complete dissolution of the steviol glycoside is considered to be well within the routine experimentation characteristic of the art. The claimed heating time of about 5-24 hours is thus considered obvious to a skilled practitioner.
As for claim 24, Kim et al. discloses cooling to room temperature (p. 6, ll. 12-13).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2017/031301 A1) in view of Given et al. (U.S. 2015/0289548 A1).
Regarding claim 5, Kim et al. discloses the method of claim 1.
Kim et al. does not disclose the shear rate of mixing as being from 1 to about 5000 s-1.
However, Given et al. discloses a similar composition wherein a steviol glycoside is dissolved in propylene glycol at elevated temperature ([0032]-[0034]) and further teaches that “[t]he stirring rate of the solution is at a rate such that enough turbulence is generated to keep the solution mobile”, including up to a rate of “vigorously stirred” ([0034]).
It would have been obvious to one having ordinary skill in the art to mix the composition of Kim et al. at a shear rate of 1 to about 5000 s-1. Kim et al. does not specifically provide details for mixing (p. 6, l. 2), which would prompt a practitioner to consult Given et al. Since Given et al. indicates that the stirring rate must at least be adequate to keep the solution mobile ([0034]), which is understood as imparting a shear rate that would at least overlap the lower end of the claimed range, mixing at the claimed shear rate of 1 to about 5000 s-1 would be obvious to a skilled practitioner.
Claims 11-14 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2017/031301 A1) in view of Lee (U.S. 2015/0223510 A1).
Regarding claim 11, Kim et al. discloses the method of claim 10. Kim et al. also discloses that the syrup may be used as a beverage sweetener in soft drinks (i.e., carbonated drinks) (p. 4, ll. 17-19).
Kim et al. does not specifically disclose the claimed method of diluting the syrup.
However, Lee discloses that the traditional method of producing carbonated soft drinks involves diluting one part syrup with five parts water ([0006]).
It would have been obvious to one having ordinary skill in the art to dilute the composition of Kim et al. according to the process disclosed in Lee. Since Kim et al. discloses that the steviol glycoside syrup is useful as a sweetener for soft drinks (p. 4, ll. 17-19) but the reference does not specifically disclose a method for producing such beverages, a skilled practitioner would be motivated to consult Lee for more specific instruction regarding such use of a sweetener syrup. Since Lee discloses that such syrups are traditionally used to produce soft drinks via diluting one part syrup with five parts water ([0006]), the claimed method step of mixing the beverage syrup with diluting water in a ratio that is in the range of 1:3 to 1:8 to provide a beverage would be obvious to a skilled practitioner.
As for claim 12, Lee discloses the beverage is a carbonated beverage and the diluting water may be carbonated water ([0006], [0035]-[0037]).
As for claim 13, Lee discloses the beverage may be a low-calorie beverage ([0008], [0012]).
As for claim 14, Lee discloses the beverage may be a soft drink ([0002]).
Regarding claim 18, Kim et al. discloses the method of claim 17. Kim et al. also discloses that the syrup may be used as a beverage sweetener in soft drinks (i.e., carbonated drinks) (p. 4, ll. 17-19).
Kim et al. does not specifically disclose the claimed method of diluting the syrup.
However, Lee discloses that the traditional method of producing carbonated soft drinks involves diluting one part syrup with five parts water ([0006]).
It would have been obvious to one having ordinary skill in the art to dilute the composition of Kim et al. according to the process disclosed in Lee. Since Kim et al. discloses that the steviol glycoside syrup is useful as a sweetener for soft drinks (p. 4, ll. 17-19) but the reference does not specifically disclose a method for producing such beverages, a skilled practitioner would be motivated to consult Lee for more specific instruction regarding such use of a sweetener syrup. Since Lee discloses that such syrups are traditionally used to produce soft drinks via diluting one part syrup with five parts water ([0006]), the claimed method step of mixing the beverage syrup with diluting water in a ratio that is in the range of 1:3 to 1:8 to provide a beverage would be obvious to a skilled practitioner.
As for claim 19, Lee discloses the beverage is a carbonated beverage and the diluting water may be carbonated water ([0006], [0035]-[0037]).
As for claim 20, Lee discloses the beverage may be a low-calorie beverage ([0008], [0012]).
As for claim 21, Lee discloses the beverage may be a soft drink ([0002]).
Response to Arguments
Claim Objections: Applicant has overcome the objections of claims 15 and 17 based on amendments to the claims. Accordingly, the claim objections have been withdrawn.
Claim Rejections - 35 U.S.C. § 103 of claims 1, 8-10, 15-17, and 22-24 over Kim et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Examiner’s “interpretation” of Kim et al. changed as of the Office Action filed 07/25/2025 compared to the earlier Office Actions (Applicant’s Remarks, p. 6, ¶2).
However, the apparent shift in reading Kim et al. was based on Examiner identifying the sentence in Example 2 of Kim et al. that specifically states: “Other food-grade polyols include glycerol, sorbitol and mannitol.” Earlier Office Actions relied only on the disclosure at page 5, lines 24-25, stating, “it was surprisingly discovered that using propylene glycol, or other polyols”. The change in the claim rejection was thus not based on a change in interpretation of Kim et al. or on hindsight based on Applicant’s disclosure but simply the identification of relevant information that was not identified earlier in prosecution.
Applicant next argued that Kim et al. does not enable the claimed invention, since the reference does not specifically indicate that propylene glycol resulted in a clear, stable solution. (Applicant’s Remarks, p. 6, ¶3 – p. 7, ¶1). Applicant asserted that the comparative examples of Kim et al. contradict the disclosure of the reference that high concentration steviol glycoside solutions may be prepared according to the method (Applicant’s Remarks, p. 7, ¶2).
Examiner maintains that Kim et al. adequately enables the claimed invention. MPEP 2121 I (“When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability.”). Kim et al. states: “In one embodiment, it was surprisingly discovered that using propylene glycol, or other polyols, to solubilize steviol glycoside ingredients, and particularly steviol glycoside blends, provides solubility and clear solution stability to the resulting solution.” (p. 5, ll. 24-26); “The resulting solution is visibly clear, and has a clarity that is similar, substantially equivalent, or equivalent to the clarity of pure water.” (p. 6, ll. 3-4); “The resulting solution remains clear for an extended period of time, ranging from 1 week to over 1 month.” (p. 6, ll. 13-14). Applicant’s discussion of the properties of the Comparative Examples in Kim et al. is inadequate to rebut the presumption of operability of the disclosure, since the Comparative Examples, by nature due to being examples for comparison, were not intended to exhibit the properties of the disclosed invention. Further, all of Applicant’s arguments pertain to propylene glycol instead of glycerol, which is the solvent that is actually claimed.
Also, MPEP 2123 II states: “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” The data in the examples is not read as teaching away from the broader disclosure of Kim et al. that solutions having the disclosed characteristics may be obtained.
Applicant next argued generally that a skilled practitioner would not consider the disclosure of Kim et al. to render the present claims obvious, since none of the examples include glycerol or rebaudioside M (Applicant’s Remarks, p. 7, ¶3). Applicant further alleged that “[n]othing in Kim evidences that solutions greater than even 10 wt% steviol glycoside content could be soluble in propylene glycol, let alone glycerol”. Id.
Again, though, MPEP 2123 II indicates that disclosed examples do not constitute a teaching away from a broader disclosure in the specification. Kim et al. teaches the steviol glycoside may be rebaudioside M (p. 3, ll. 12-18) and that the steviol glycoside concentration may range from 5-40% by weight (p. 6, ll. 15-l7). The reference discloses that the polyol may be glycerol (p. 10, ll. 7-8). Kim et al. further discloses: “In one embodiment, it was surprisingly discovered that using propylene glycol, or other polyols, to solubilize steviol glycoside ingredients, and particularly steviol glycoside blends, provides solubility and clear solution stability to the resulting solution.” (p. 5, ll. 24-26); “The resulting solution is visibly clear, and has a clarity that is similar, substantially equivalent, or equivalent to the clarity of pure water.” (p. 6, ll. 3-4); “The resulting solution remains clear for an extended period of time, ranging from 1 week to over 1 month.” (p. 6, ll. 13-14). Examiner thus maintains that the disclosure of Kim et al. is adequate to deem the present claims obvious. Applicant’s arguments are unpersuasive.
The rejections of claims 1, 8-10, 15-17, and 22-24 have been maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claim 5 over Kim et al. and Given et al., and claims 11-14 and 18-21 over Kim et al. and Lee: Applicant reasserted arguments pertaining to claim 1 (Applicant’s Remarks, p. 8, ¶2, ¶4) that were addressed previously herein and were determined to be unpersuasive.
The rejections of claims 5, 11-14 and 18-21 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 1, 5, and 8-24 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
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