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 10/14/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 and 3-13
Withdrawn claims: None
Previously canceled claims: 2 and 14-19
Newly canceled claims: None
Amended claims: None
New claims: 20-27
Claims currently under consideration: 1, 3-13, and 20-27
Currently rejected claims: 1, 3-13, and 20-27
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 1, 3-13, and 20-27 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (U.S. 2015/0018432 A1).
Regarding claim 1, Prakash et al. discloses a food or beverage ([0030], [0072]) comprising (a) a sweet substance that induces a response through a taste-related molecule other than the sweet taste receptor T1R2/T1R3 (specifically, erythritol and/or D-psicose) ([0030], [0037], [0038], [0040]) in an amount of 0.1 to 20 w/v% (specifically, about 2-15 w/v%) ([0043]), (b) a sodium source that may be sodium malate, sodium tartrate, sodium lactate, or sodium alginate in an amount from 15.5-46 mg/100 ml in terms of sodium (specifically, about 10-5,000 ppm of the salt, or 1-500 mg /100 ml, where salts at such a concentration would cause the sodium concentration specifically to fall within the claimed range) ([0077], [0217]), and (c) a naturally occurring high-intensity sweet substance having a good taste quality (specifically, rebaudioside X, a.k.a., rebaudioside M) in an amount of 20-550 ppm (specifically, 20-30 ppm) ([0030], [0032]), wherein the food is a liquid ([0075]). The disclosed concentration range of the sodium source is not considered sufficiently specific to anticipate the claimed composition, such that the claim is only rejected on the basis of obviousness. MPEP 2131.03 II.
The term “sweet substance that induces a response through a taste-related molecule other than the sweet taste receptor T1R2/T1R3” is not interpreted as implicitly requiring the presence of lactisole or some other sweet taste receptor inhibitor. The claim merely requires a sweet substance that can induce the noted effect. Paragraph [0013] of the specification characterizes the component as being “a sweet substance that can induce a response through a taste-related molecule other than the above T1R2/T1R3”, which is understood as merely indicating the such an effect can be induced by the sweet substance with no additional induction of the response required.
Prakash et al. does not specifically disclose the taste-related molecule other than the sweet taste receptor T1R2/T1R3 as being selected from the claimed list.
However, such taste-related molecules would be inherently present in consumers of the food/beverage. To the extent the claimed combination of ingredients induces a response through a particular taste-related molecule, such response would be an inherent effect. MPEP 2112.01 II (“if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”). Nothing in the claimed food/beverage composition is altered in terms of which taste-related molecules the composition may induce a response from. As such, the induction of a response from any of GLUTs, SGLTs, or Kir6.1/SUR1 complex would be obvious.
As for claims 3-5, Prakash et al. discloses the composition as comprising erythritol ([0038]) and/or D-psicose ([0040]), which renders obvious the limitations of ingredient (a) being a non-calorie sweetener (claim 3) that is a non-calorie sugar alcohol or hexose (claim 4) that is erythritol or D-allulose (i.e., D-psicose) (claim 5).
As for claims 6 and 7, Prakash et al. discloses ingredient (a) as being a calorie sweetener (claim 6) that is sucrose ([0038]) (claim 7).
As for claim 8, Prakash et al. discloses ingredient (c) as being rebaudioside M (i.e., rebaudioside X) ([0030]).
As for claims 9 and 10, Prakash et al. discloses the beverages may be “zero-calorie”, which is defined as having less than about 5 calories per 8 oz. serving ([0100]), which would include zero calories per serving. Such instruction effectively constitutes at least the disclosure of a range of calories from 0 to some amount above 0, which renders obvious the claimed ranges of 0 to 5 Kcal/100 ml (claim 9) and a total energy of greater than 0 and less than 24 Kcal/100ml (claim 10).
As for claim 11, Prakash et al. discloses the sweetener may be present in the composition in an amount of about 2-15 w/v% ([0043]) and the rebaudioside X may be present in an amount of about 20-30 ppm ([0030]) resulting in a ratio of rebaudioside X to sweetener of 20 ppm:2%, or 1:1000, which renders obvious the claimed range of ratios of 1:10,000 to 1:5.
As for claim 12, Prakash et al. discloses the sweetener may be present in the composition in an amount of 0.5-10% ([0043]).
As for claim 13, Prakash et al. discloses ingredient (a) as comprising erythritol ([0038]) and/or D-allulose (i.e., D-psicose) ([0040]) and ingredient (c) as comprising rebaudioside M (i.e., rebaudioside X) ([0030]).
As for claims 20-22, Prakash et al. discloses the food/beverage as comprising “any concentration of sweetener” that may be a natural high potency sweetener other than rebaudioside X/M ([0030], [0037], [0042], [0043]), which renders the claimed ranges of 35-550 ppm (claim 20), 50-550 ppm (claim 21), and 166.5 to 550 ppm (claim 22) obvious.
As for claims 23 and 24, Prakash et al. discloses a sodium source that may be sodium malate, sodium tartrate, sodium lactate, or sodium alginate in an amount from 15.5-34.5 mg/100 ml in terms of sodium (specifically, about 10-5,000 ppm of the salt, or 1-500 mg /100 ml, where salts at such a concentration would cause the sodium concentration specifically to fall within the claimed range) ([0077], [0217])
As for claims 25-27, Prakash et al. discloses the food/beverage as comprising “any concentration of sweetener” that may be the erythritol and/or D-psicose ([0030], [0037], [0038], [0043]), which renders the claimed range of 0.1 to 1.6 w/v% obvious.
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 1 and 3-13 over Prakash et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the claimed range of the sodium source causes unexpected results (Applicant’s Remarks, p. 6, ¶4). Applicant asserted that Prakash et al. “does not focus on the specific concentration range of sodium source” or the concentration range in terms of sodium or any enhancement of the sweetener due to the sodium (Applicant’s Remarks, p. 6, ¶5 – p. 7, ¶1).
However, MPEP 2145 II states: “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” Whether Prakash et al. recognizes an enhancement effect of sodium on the sweetener or specifically discloses any criticality of the sodium source in terms of the concentration of the sodium does not matter. The claim merely requires a composition comprising three components from the three claimed categories at certain concentrations. Further, Prakash et al. need not specifically disclose a preference for concentrations within the claimed range for the sodium source. The broader disclosed range is adequate to deem the claimed range prima facie 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.”). Examiner maintains that Prakash et al. is adequate to deem the claimed composition obvious.
Applicant then asserted the claimed concentration range of sodium is sufficiently specific to provide sweetness enhancement, asserting data from the specification purporting to show that the claimed range of sodium concentrations produces a sweetness enhancement (Applicant’s Remarks, p. 7, ¶2 - ¶3).
However, MPEP 716.02(d) states: “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” The asserted data is not commensurate in scope with the present claims at least because: (i) the experiments analyze only a single naturally occurring high-intensity sweet substance at a single concentration, (ii) the experiments analyze only two substances for ingredient (a) at a single concentration for both substances, (iii) the claims do not require the exclusion of numerous other ingredients that would potentially affect the sweetness perception, such as synthetic sweeteners, flavorings, and sweetness modifiers, and (iv) the experiments only analyze aqueous solutions of the claimed components yet the claim is directed to a food or beverage, which is much broader. The assertion of unexpected results is thus insufficient to overcome the prima facie showing of obviousness.
Applicant then asserted that the overlap between Prakash et al. and the claimed range is relatively small, such that there is no instruction for a practitioner to focus on a narrow portion of the range of Prakash et al. to achieve sweetness enhancement (Applicant’s Remarks, p. 7, ¶4).
As noted previously, though, MPEP 2144.05 I states: “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The degree of overlap does not matter. Further, there is no evidence that the asserted sweetness enhancement would occur over the entire scope of the present claim, such that the asserted effect of sodium on sweetness cannot be said to necessarily occur in numerous embodiments that fall within the scope of the claimed compositions. It is therefore of no consequent whether Prakash et al. provides any specific instruction for arriving at the claimed concentration for the sodium component.
The rejections of claims 1 and 3-13 have been maintained herein.
New claims 20-27 are deemed obvious for the reasons detailed in the claim rejections.
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, 3-13, and 20-27 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793