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 .
Response to Amendment
As a result of the amendments to the claim, all rejections not repeated in this Office Action have been withdrawn.
Claims 1-5, 7-11, 13-15,21, and 23-27 are currently pending in this Office Action.
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.
Claim(s) 1-5, 7-11, 13-15, and 21, 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over Glass (US 4,388,328) in view of Tanaka et al. (US 5,709,895) and Boghani et al. (US 2009/0175982).
Regarding claims 1, 3, 4, 5, 7, 8, 9, 10, 13, 15, Glass teaches a method of forming encapsulated flavor comprising heating a first mixture so as to form a molten mixture, the first mixture includes one or more polyols (sorbitol and mannitol) and while Glass does not expressly disclose the claimed range of polyols, Glass does states “the sorbitol, mannitol and saccharin are combined in a mixture, with reference to the final flavor-containing composite wherein mannitol is present in an amount ranging from about 5% to about 6% by weight thereof, saccharin is present in an amount ranging from about 0.15% to about 0.16% by weight thereof, and sorbitol comprises the balance” (col. 4, lines 1-5) and Example 1 shows the use of about 80% polyols. Thus, Glass discloses polyols present in the claimed range and as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Glass discloses heating the first mixture to a first temperature of “about” 200°C (Col. 2, last paragraph), which is construed to be near the upper limit of the claimed range of 120°C to 180°C. 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). It would have been obvious to one of ordinary skill in the art to determine the optimum temperature of the molten mix to achieve the desired physical properties of the powdered material.
Glass teaches cooling the molten mixture to a first temperature so as to form a cooled molten mixture and adding a flavor to the cooled molten mixture so as to form a second mixture (col. 6, lines 15-40); cooling the second mixture to a second temperature so as to form one or more sheets, the second temperature being different from the first temperature in order to solidify the liquid (col. 6, lines 48-55); and fragmenting (grinding) the one or more sheets so as to form a plurality of encapsulated flavor granules having an average particle size of 18- 25 mesh (707µm to 1mm) (col. 5, line 45-col. 6, line 68 and Examples).
It is noted that Glass teaches encapsulating flavors but not the presently claimed high-intensity sweeteners. However, as it is well-known in the art to encapsulate flavors and sweeteners, the choice to substitute one for the other would have been an obvious choice to one skilled in the art based on the desired encapsulated product. One of ordinary skill would have easily carried out such a substitution and the results would have been predictable.
Moreover, Boghani discloses that a combination of flavorings and high intensity sweeteners, such as neotame (paragraph 103) and sucralose (paragraph 106), may be incorporated in a delivery system (encapsulation, paragraphs 11 and 106) to provide an initial burst of sweetness and/or prolonged sensation of sweetness (paragraph 106). Thus, one of ordinary skill in the art would have been motivated to modify the invention of Glass by encapsulating flavor with other additives, to include high intensity sweeteners, for the purpose of providing an initial burst of sweetness and/or prolonged sensation of sweetness. As to the limitation of cooling the molten mixture to a first temperature between 90°C and 100°C, Boghani incorporates Neotame into a polymer matrix at a temperature of 110°C which is then mixed, cooled, and ground to produce powder (see paragraph 399), and similarly at 80°C (paragraph 400). Since both Glass and Boghani are directed to the encapsulation of flavors, and Boghani suggest encapsulating high intensity sweeteners, it would have been obvious to one of ordinary skill in the art to use known operating temperatures for encapsulating high intensity sweetener to sufficiently encapsulate the flavor within the molten mixture. Since Boghani operates at temperatures both below and above the claimed range, the claimed range is construed to be within the workable range taught by Boghani to operate the encapsulation of neotame.
Glass does not expressly teach heating 0.01wt% to 5wt% of one or more hydrocolloids in the first mixture.
Tanaka also teaches a method of producing encapsulated flavor granules wherein flavors and other additives are added to a molten mixture comprising polyols and hydrocolloids, such as gum arabic and teaches the addition of said hydrocolloids improves the moisture-stability of the encapsulant. Tanaka does not expressly disclose the claimed range; however, Tanaka teaches, “It is expected that the use of viscous polysaccharides (for example gum substances, agar, carrageenan, alginic acid, chitin, chitosan) with modified starches further improves the moisture-stability of the resulting capsules via interactions between side chains. As examples of the gum substances, cyamoposis gum, locust bean gum, gum arabic, karaya gum and tragacanth may be cited. When these polysaccharides are used at an excessively high ratio, however, the carbohydrate mixture has an excessively high viscosity and, as a result, the addition of the flavor and the extrusion molding become difficult.” (col. 4, lines 35-60 and col. 5, lines 30-65). Therefore, one of ordinary skill in the art would been motivated to incorporate hydrocolloids in the invention of Glass to improve moisture-stability of the product and would have easily optimized the amount of hydrocolloids needed based on desired viscosity and the molding process. In any case, Tanaka discloses an embodiment comprising about 1.7% gum arabic, thus being within the claimed range (See Example 2, Col. 7, where gum arabic is 30 parts by weight out of a total of 1734 parts). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate 1.7wt% hydrocolloid based on the desired viscosity.
With respect to the limitation “the cooled molten mixture including 0.01 wt% to 45wt% of the one or more high- intensity sweeteners”, Glass does disclose the cooled molten mixture comprises a high-intensity sweetener, saccharin, and the final flavor composition comprises “saccharin is present in an amount ranging from about 0.15% to about 0.16% by weight” (Col. 4, line 3) and Boghani teaches it is obvious to substitute one high intense sweetener (saccharin) for another, “without being limited to particular sweeteners” (paragraph 100). Thus, the cooled molten mixture of Glass includes 0.01 wt% to 45 wt% of the one or more high- intensity sweeteners and it would have been obvious for one to decide on the particular sweetener.
Regarding claim 2, modified Glass is applied as stated above. Tanaka further discloses addition of water, if needed, to the encapsulating mixture to assist in the uniform dispersion of the components (col. 4, line 60). Thus, one would have been motivated to use an amount of water when mixing the components of modified Glass to ensure the uniform dispersion of the materials.
Regarding claim 11, claim 1 is applied as stated above. As Glass discloses “fracturing” and “grinding” the sheet, Glass implies the sheet is brittle. As such, it would have been obvious to cool the sheet to a temperature similar below a glass transition temperature so that the sheet would be brittle and allow for “fracturing” and “grinding”.
Regarding claim 14, claim 1 is applied as stated above. Glass further teaches wherein the method is a batch process (col. 7, line 10).
Regarding claim 21, claim 1 is applied as stated above. Glass does not expressly disclose wherein the third temperature is between 40℃ and 45℃. However, Glass does teach “the mixture is now ready for solidification, and may be molded to a variety of shapes, depending upon the contemplated end use. For example, the composite while still liquid, may be cast upon a flat surface, to form a sheet of material. In commercial processes, casting may be performed against a moving cooled surface, in which case the material will solidify during its travel and form a continuous sheet.” (col. 6, lines 50-55). Therefore, one of ordinary skill in the art would have been motivated the optimize the third temperature to solidify the composition.
Regarding claim 23, the claim is rejected for reasons discussed in Claim 1.
Regarding claim 24, the claim is rejected for reasons discussed in Claim 7.
Regarding claim 25, the claim is rejected for reasons discussed in Claim 9.
Regarding claim 26, the claim is rejected for reasons discussed in Claim 13.
Regarding Claim 27, Glass is silent to wherein the second mixture includes glycerol, propylene glycol, or a combination thereof. However, Boghani, which was relied on to teach a combination of known sweeteners including high-intensity sweeteners as encapsulated sweeteners, further teaches comprising glycerol in combination with other high-intensity sweeteners (see paragraph 107). Therefore, it would have been obvious to one of ordinary skill in the art to further include glycerol based on flavor preference.
Response to Arguments
Applicant’s arguments in the response filed 17 July 2025 has been considered, but is found not persuasive over the prior art.
Applicant argues on the basis that the combination discloses temperature ranges outside of the claimed range. However, the argument is not persuasive because the combination is also directed to an encapsulated sweetener granules. 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). In this case, since the combination also teaches encapsulation of similar sweetener materials, the claimed temperature is not critical over the prior art.
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.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
