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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-7, 10-11 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application No. 2007/0202243 (ARENZ).
Regarding claims 1 and 2, Arenz et al. teach a liquid isomalt composition comprising glycosylated isomalt components in weight ratios as shown in the Table below:
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314
606
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Additionally, 1-O-alpha-D-glucopyranosyl-D-mannitol (1,1-GPM), 6-O-alpha-D-glucopyranosyl-D-sorbitol (1,6-GPS), (and 1-O-alpha-D-glucopyranosyl-D-sorbitol (1,1-GPS)are added (see [0032])
It is also taught that sorbitol and mannitol can be added (see claims 34 and 35 of ARENZ).
The isomalt compositions of Arenz et al. are considered to be liquid isomalt
compositions, as Arenz et al. teach the sweetener compositions are heated in water to
form hard candies [0072].
As to the ratios of 1,1-GPM, 1,6-GPS, 1,1-GPS, sorbitol and mannitol, ARENZ establishes that the sweeteners are known can be used to produce hard candies. In [0015], the hard candies in accordance with the invention are surprisingly distinguished in the matter of organoleptics experienced as attractive by the consumer by a considerably reduced tendency to recrystallization than known hard candies, specifically than hard candies made from isomalt. Their storage stability is considerably improved, particularly compared with isomalt hard candies. The formation of crystalline areas on the surface of the hard candies as well as opaque zones inside the hard candies is largely or entirely prevented under the invention, or it does not occur until considerably later.
It is noted that it would have been obvious to one skilled in the art to vary the amount of sweetener based on the desired sweetness and attributes of the desired resulting product such as the storage stability.
Generally, 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. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Regarding claim 3, Samples MS 222/4 and MS 222/10 of Arenz et al. contain amounts of 6’-glucosyl-1,1-GPM falling within the claimed range as shown in the table above.
Regarding claim 4, Samples MS 222/4 and MS 222/10 of Arenz et al. contain amounts of 6’-glucosyl-1,6-GPS falling within the claimed range as shown in the table above.
Regarding claim 5, Samples MS 222/4 and MS 222/10 of Arenz et al. contain amounts of 1-glucosyl-1,6-GPS falling within the claimed range as shown in the table above.
Regarding claim 6, Samples MS 222/4 and MS 222/10 of Arenz et al. contain amounts of 6-glucosyl-1,6-GPM falling within the claimed range as shown in the table above.
Regarding claim 7, MS 222/10 at Table 18 of Arenz et al. contains a total of 91.2% 1,6-GPS and 1,1-GPM, falling within the claimed range.
Regarding claim 10, MS 222/10 at Table 18 of Arenz et al. contains 0.04% deoxydisaccharide alcohols, falling within the claimed range.
Regarding claim 11, MS 222/10 at Table 18 of Arenz et al. contains 0.30 % glucosylglycitols, falling within the claimed range.
Regarding claims 14 and 15, Arenz et al. teach their liquid compositions are provided as an aqueous solution or suspension, and evaporated to a water content of less than 5% by weight [0034]. Therefore, the liquid compositions have dry matter content of at 10 to 50 wt. % as claimed.
Regarding claim 16, Arenz et al. teach hard candies, a food, comprising the liquid isomalt composition [0085].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Arenz et al. (US 2007/0202243) in view of Barkalow et al. (US 2007/0184149).
Arenz et al. teach a liquid isomalt composition as detailed above with regard to claim 1.
Arenz et al. teach their compositions can be used as coatings [0037], but are silent as to the isomalt composition being included in chewing gum coatings.
Barkalow et al. teach a chewing gum coating comprising isomalt (Tables 1-2). Therefore, where Arenz et al. teach their composition as suitable to provide a coating composition, it would have been obvious to have utilized the liquid isomalt composition of Arenz et al. to coat the chewing gum of Barkalow et al. as Arenz et al. teach their composition as a coating composition. This would have required no more than routine experimentation, and would have been expected to provide the predictable result of a chewing gum with a stable isomalt coating.
Relevant Art Prior Art Not Relied Upon
US2010/0317746 teaches and isomalt composition comprising 20 to 90% 1,6-GPS and 1,1-GPM [0016].
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive.
The applicant argues that ARENZ does not disclose the claimed percentage of 1,1-GPM and 1,6-GPS. It is also argued that the preferred embodiments of ARENZ teach away from that claimed. The applicant provides the following tables:
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441
489
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471
534
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However, this does not reflect the overall teachings of ARENZ. ARENZ teaches that the amounts of 1,6-GPS and 1,1-GPM are result effective variable. In [0015], the hard candies in accordance with the invention are surprisingly distinguished in the matter of organoleptics experienced as attractive by the consumer by a considerably reduced tendency to recrystallization than known hard candies, specifically than hard candies made from isomalt. Their storage stability is considerably improved, particularly compared with isomalt hard candies. The formation of crystalline areas on the surface of the hard candies as well as opaque zones inside the hard candies is largely or entirely prevented under the invention, or it does not occur until considerably later.
The applicant also argues that the claimed range results in superior properties.
However, there does not seem to be an unexpected result. ARENZ teaches that amounts of 1,6-GPS and 1,1-GPM can be adjusted to optimize storage stabilities.
The applicant is also respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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