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 Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 03/13/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims: the 35 U.S.C. 103 rejections of claims 1, 3-6, 9-12, 15-24, 29, and 32 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3-6, 9-12, 15-24, and 26-32
Withdrawn claims: None
Previously canceled claims: 2, 7, 8, 13, 14, and 25
Newly canceled claims: 1, 3-6, 9-12, 15-24, 29, and 32
Amended claims: 26, 30, and 31
New claims: 33-44
Claims currently under consideration: 26-28, 30, 31, and 33-44
Currently rejected claims: 26-28, 30, 31, and 33-44
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/13/2026 has been entered.
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 26-28, 30, and 33-39 are rejected under 35 U.S.C. 103 as being unpatentable over Markosyan et al. (U.S. 2017/0303565 A1) in view of Gerwig et al. (Gerwig, G. J., et al., “Stevia Glycosides: Chemical and Enzymatic Modifications of Their Carbohydrate Moieties to Improve the Sweet-Tasting Quality,” Advances in Carbohydrate Chemistry and Biochemistry, Vol., 73, 1-72 (2016)).
As for claim 26, Markosyan et al. discloses a method for producing a sweetened composition (Abstract), the method comprising contacting a high intensity sweetener glycoside with an enzyme ([0126]-[0128], [0133]-[0134], [0137], [0143]-[0144], [0169]). The composition may further comprise prebiotic functional ingredients ([0277]), such that the composition would constitute a prebiotic composition.
Markosyan et al. does not specifically disclose that the method is effective to galactosylate and/or fructosylate the glycoside in the presence of sucrose and/or lactose or that the method simultaneously produces galactooligosaccharides or fructooligosaccharides.
However, Gerwig et al. discloses galactosylation of a steviol glycoside using E. coli as the enzyme/microorganism and lactose as the donor substrate (p. 48 – p. 49, § 7.5 β-Galactosidase Transglycosylation Systems, ¶1, Table 6, where E. coli β-Galactosidase resulted in 12.5% of No. 99, which shows the glycoside has been galactosylated).
It would have been obvious to one having ordinary skill in the art to perform a galactosylation modification of the steviol glycosides taught in Markosyan et al. according to the instruction of Gerwig et al. Since Markosyan et al. discloses fairly broadly that various target steviol glycosides may be obtained via the use of numerous different carbohydrate starting compositions ([0133]-[0134], [0137]) and different microorganisms ([0168]-[0169]), a skilled practitioner would be motivated to consult Gerwig et al. for more specific instruction in order to clarify the broad teaching in Markosyan et al. Gerwig et al. teaches that galactosylation occurs when using E. coli as the microorganism and lactose as the donor substrate (p. 48 – p. 49, § 7.5 β-Galactosidase Transglycosylation Systems, ¶1, Table 6). Markosyan et al. similarly teaches lactose as a carbohydrate starting composition ([0137]) together with a steviol glycoside ([0144]-[0145]) with E. coli as the microorganism ([0168]-[0169]). As such, a skilled practitioner would reasonably expect that selecting such components as taught in Markosyan et al. would result in the galactosylation of the steviol glycoside. The claimed composition would thus be obvious to a skilled practitioner.
Gerwig et al. also discloses enzymatic modifications of steviol glycosides in the presence of sucrose and lactose resulting in a mixture of glycosylated products (p. 29, ¶3 – p. 30, ¶1). Gerwig et al. further discloses an experiment wherein a steviol glycoside is subjected to enzymatic glucosylation, wherein large amounts of oligosaccharide by-products were produced (p. 33, ¶3).
It would have been obvious to one having ordinary skill in the art to perform the method of Markosyan et al., wherein fructooligosaccharides are produced concurrently with the enzymatic modification of the steviol glycoside. Since Markosyan et al. is relatively broad in terms of the types of starting materials and modifications that may be performed ([0132]-[0145]) and indicates that “residual reaction products” may be produced ([0219]), a skilled practitioner would be motivated to consult Gerwig et al. for additional clarification in terms of what types of residual reaction products may be produced and whether the mixture may need additional treatment/purification before use as a sweetener. Since Gerwig et al. clarifies that oligosaccharides may be produced concurrently with the enzymatic modification of the steviol glycoside and suggests that the oligosaccharides produced are polymers of the carbohydrates that are present in the starting material (p. 33, ¶3) and Markosyan et al. discloses that both fructose and fructooligosaccharides may be in the starting composition ([0137]), the production of fructooligosaccharides as part of the enzymatic modification process would be obvious.
As for claim 27, Markosyan et al. discloses the high intensity sweetener glycoside is a steviol glycoside ([0144], [0130]).
As for claim 28, Markosyan et al. discloses the high intensity sweetener glycoside is galactosylated and/or fructosylated ([0137], where use of galactose or fructose as a starting composition would result in galactosylation or fructosylation of the sweetener glycoside). Markosyan et al. discloses the enzymes used may be from Aspergillus sp. ([0168]-[0171]), which renders the use of carbohydrase mixtures from Aspergillus sp. obvious.
As for claim 30, Markosyan et al. discloses the composition only optionally contains galactose and or fructose ([0137]) such that any galactosylation or fructosylation is effectively disclosed as ranging from 0% to some amount greater than 0%, which renders the claimed limitations of the sweetened prebiotic composition being “up to about 5 % galactosylated and/or up to about 5 % fructosylated” obvious.
As for claim 33, Markosyan et al. discloses the high intensity sweetener glycoside is rebaudioside A ([0147]).
As for claims 34 and 35, Gerwig et al. discloses the glycosides as being modified by up to about 3 units of galactose (claim 34) and up to about 4 units of galactose (claim 35) (p. 48 – p. 49, § 7.5 β-Galactosidase Transglycosylation Systems, ¶1, Table 6, No. 99, where one galactose unit has been added).
As for claim 36, Markosyan et al. discloses the method of claim 26, wherein the steviol glycoside may be fructosylated with fructose ([0137], where use of fructose as a starting composition would result in fructosylation of the sweetener glycoside). Markosyan et al. further discloses that the starting composition may also comprise “steviol glycoside(s)” ([0144]), which is defined as including rubusoside ([0130]) that contains two glucose units ([0131]), which can be glycosylated into rebaudioside M that contains six glucose units ([0131], Fig. 2). Such a glycosylation would constitute a modification of 4 units.
Markosyan et al. does not explicitly disclose steviol glycosides that have been modified by 4 or more units of galactose or fructose.
However, since Markosyan et al. discloses that fructosylation may be one of the modifications that is performed on steviol glycoside starting material ([0137]) and that modification with glucose may be in an amount of up to 4 units, it would be obvious to a skilled practitioner to modify the starting steviol glycoside with up to 4 units of fructose as well.
As for claim 37, Markosyan et al. discloses the composition may comprise a target steviol glycoside and “steviol glycosides and/or residual reaction products” ([0219]), which constitutes “a mixture of steviosides having different modifications” as claimed.
As for claim 38, Markosyan et al. discloses the method of claim 37, as well as that the high intensity sweetener glycoside has been fructosylated ([0133], [0137], where use of fructose as a starting composition would result in fructosylation of the sweetener glycoside) and that the starting composition may also comprise “steviol glycoside(s)” ([0144]), which is defined as including rebaudioside A ([0130]). Markosyan et al. thus effectively discloses rebaudioside A with 1 unit of fructose as claimed.
As for claim 39, Markosyan et al. discloses the method of claim 37, as well as that the high intensity sweetener glycoside has been galactosylated ([0133], [0137], [0144]-[0145], [0169]) and that the starting composition may also comprise “steviol glycoside(s)” ([0144]), which is defined as including rebaudioside A ([0130]). Markosyan et al. thus effectively discloses rebaudioside A with 1 unit of galactose as claimed in option (ii).
Claims 31 and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Markosyan et al. (U.S. 2017/0303565 A1) in view of Gerwig et al. (Gerwig, G. J., et al., “Stevia Glycosides: Chemical and Enzymatic Modifications of Their Carbohydrate Moieties to Improve the Sweet-Tasting Quality,” Advances in Carbohydrate Chemistry and Biochemistry, Vol., 73, 1-72 (2016)) as applied to claims 26 and 33 above, and further in view of Prakash et al. (U.S. 2014/0343262 A1).
Regarding claim 31, Markosyan et al. and Gerwig et al. disclose the method of claim 26.
The cited prior art does not disclose the sweetener glycoside as including a mogroside that is enzymatically modified.
However, Prakash et al. discloses mogroside V ([0248]) that may be enzymatically modified ([0249]).
It would have been obvious to one having ordinary skill in the art to produce the composition of Markosyan et al. comprising an enzymatically modified mogroside. Markosyan et al. discloses that mogrosides may be combined with the enzymatically-modified steviol glycosides produced according to the process disclosed therein ([0268]). Markosyan et al. also discloses broadly that the starting composition may comprise organic compounds generally ([0133]), which would prompt a skilled practitioner to consider how the enzymatic treatment may affect such compounds in the reaction mixture. A skilled practitioner would thus be motivated to consult Prakash et al. for further instruction regarding whether mogrosides may be affected by the enzymatic treatment. Since Prakash et al. discloses that mogrosides may also be modified by enzymatic treatment to achieve compounds having varying numbers of glycosidic residues ([0248]-[0249]), a skilled practitioner would find the incorporation of a mogroside into the reaction mixture of Markosyan et al. to be obvious in order to glycosylate the mogroside compounds. The claimed limitation that the sweetener glycoside comprises a mogroside would thus be obvious to a skilled practitioner.
Regarding claim 40, Markosyan et al. and Gerwig et al. disclose the method of claim 33.
The cited prior art does not disclose the composition as comprising a mixture of mogrosides having different modifications.
However, Prakash et al. discloses mogroside IV and mogroside V ([0248]) that may be enzymatically modified ([0249]).
It would have been obvious to one having ordinary skill in the art to produce the composition of Markosyan et al. comprising a mixture of mogrosides having different modifications. Markosyan et al. discloses that mogrosides may be combined with the enzymatically-modified steviol glycosides produced according to the process disclosed therein ([0268]). Markosyan et al. also discloses broadly that the starting composition may comprise organic compounds generally ([0133]), which would prompt a skilled practitioner to consider how the enzymatic treatment may affect such compounds in the reaction mixture. A skilled practitioner would thus be motivated to consult Prakash et al. for further instruction regarding whether mogrosides may be affected by the enzymatic treatment. Since Prakash et al. discloses that mogrosides may also be modified by enzymatic treatment to achieve compounds having varying numbers of glycosidic residues ([0248]-[0249]), a skilled practitioner would find the incorporation of a mixture of mogrosides into the reaction mixture of Markosyan et al. to be obvious in order to glycosylate the mogroside compounds. The claimed limitation that the composition comprises a mixture of mogrosides having different modifications would thus be obvious to a skilled practitioner.
As for claims 41-43, Prakash et al. discloses the mogrosides as comprising mogroside V ([0248]).
As for claim 44, Prakash et al. discloses that the mogrosides IV and V may be modified by 1-50 glycosides residues that may be galactosyl- or fructosyl- ([0248]-[0249]), which renders obvious the claimed mixture of (i) mogroside IV, (ii) mogroside with 1 unit of galactose, (iii) mogroside V with 2 units of galactose, and (iv) mogroside V with 3 units of galactose.
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 1, 3-6, 9-12, 15-17, 23, 24, and 26-30 over Markosyan et al. and Gerwig et al.; and claims 18-22, 31, and 32 over Markosyan et al., Gerwig et al., and Prakash et al.: Applicant has overcome the 35 U.S.C. § 103 rejections of claims 1, 3-6, 9-12, 15-24, 29, and 32 based on cancellation of the claims. Accordingly, the 35 U.S.C. § 103 rejections have been withdrawn.
For the claims that remain pending, Applicant first argued a practitioner reading Markosyan et al. would not be motivated to consult Gerwig et al., since Markosyan et al. discloses only the addition of glucose to steviol glycosides but not galactose (Applicant’s Remarks, p. 7, ¶2).
However, Markosyan et al. is not limited to the addition of glucose to steviol glycosides, even if the addition of glucose is primarily discussed in the exemplary information. The reference states: “As used herein, ‘biocatalysis’ or ‘biocatalytic’ refers to the use of natural or genetically engineered biocatalysts, such as cells, protein enzymes, to perform single or multiple step chemical transformations on organic compounds. Biocatalysis include fermentation, biosynthesis and biotransformation processes.” Examiner thus maintains that the broad instruction of Markosyan et al. provides adequate motivation for a skilled practitioner to consult a second reference, such as Gerwig et al., for more specific instruction regarding such biocatalytic processes.
Applicant then asserted the alleged benefit of the claimed method of simultaneously producing oligosaccharides and galactosylated/fructosylated sweeteners (Applicant’s Remarks, p. 7, ¶3). Applicant asserted that Gerwig et al. does not disclose that additional galactooligosaccharides or fructooligosaccharides are produced in galactosylation/fructosylation reactions, which allegedly undermines the basis of the present claim rejections (Applicant’s Remarks, p. 7, ¶4 – p. 8, ¶1). Applicant noted that the experiment cited in Gerwig et al. does not involve a galactosylation or fructosylation reaction and asserted that a skilled practitioner would glean nothing from the glycosylation reaction described in the reference that results in maltooligosaccharide by-products (Applicant’s Remarks, p. 8, ¶2).
Examiner maintains that the instruction in Gerwig et al. is instructive as to the “residual reaction products” that would be reasonably expected when producing a composition according to Markosyan et al., particularly for a mixture comprising fructose and fructooligosaccharides as starting components. That Gerwig et al. involves different carbohydrates and enzymes does not preclude consultation of the reference in order to determine likely by-products. Examiner maintains that the combined instruction from both references is adequate to deem the concurrent production of fructooligosaccharides obvious.
Applicant concluded that the present claim rejection relies on improper hindsight (Applicant’s Remarks, p. 8, ¶3).
Examiner maintains that the present claim rejections rely only on knowledge that was within the level of ordinary skill in the art and thus do not rely on improper hindsight rationale.
The rejections of claims 26-28 and 30 have been maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claims 18-22, 31, and 32 over Markosyan et al., Gerwig et al., and Prakash et al.: Applicant has overcome the 35 U.S.C. § 103 rejections of claims 18-22 and 32 based on cancellation of the claims. Accordingly, the 35 U.S.C. § 103 rejections have been withdrawn.
For claim 31 and new claims 33-44, Applicant asserted that Prakash et al. does not remedy the alleged deficiency in the combination of Markosyan et al. and Gerwig et al. (Applicant’s Remarks, p. 8, ¶5).
Examiner maintains that Markosyan et al. and Gerwig et al. are adequate for all that is relied on in the present claim rejections and therefore no such deficiency exists. Prakash et al. is also adequate for all that is relied on in the present claim rejections.
The rejection of claim 31 has been maintained herein.
Conclusion
Claims 26-28, 30, 31, and 33-44 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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