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 .
This office action is in regard to the application filed on August 19, 2021 and in response to Applicant’s Amendments and Arguments/Remarks filed on January 27, 2026.
Status of Application
The amendment filed January 27, 2026 has been entered. Claims 31-55 are currently pending in the application; claims 1-30 are canceled. Claim 31 has been amended. Claims 31-55 are hereby examined on the merits.
The previous 112(b) rejections of claims 31-55 have been withdrawn in light of applicant’s claim amendments. Claim 55 remains rejected under 112(b) over a new ground of rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 55 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 55 recites that the beverage composition is a carbonated soft drink, a non-carbonated soft drink, a fruit juice, a dairy beverage, a fountain beverage, a coffee, or a tea. This limitation is already exactly recited in the last three lines of claim 31, upon which claim 55 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 31-33, 38-40, 44, 47, and 48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-37, 42-43, and 48-50 of copending Application No. 18/377,803 (reference application) (herein after referred to as ‘803). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 31, claim 31 of ‘803 claims a taste modulator composition comprising a first, second, and optionally third taste modulator component. Claims 31, 42, and 43 of ‘803 claims all of the limitations of instant claim 31. A food as claimed in claim 43 of ‘803 is not patentably distinct from the beverage as claimed in claim 31 of the instant application.
Claims 32, 33, 38, 39, 40, and 34 are duplicates of claims 32-37 respectively, of ‘803.
Claims 44, 47, and 48 are duplicates of claims 48-50, respectively, of ‘803.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 31-50 and 52-55 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US PG Pub. 2007/0116819; listed in IDS dated June 27, 2023), herein after referred to as Prakash.
Regarding claims 31-33, 38-40, 43, and 55, Prakash discloses a beverage (claim 78) comprising:
a high-potency sweetener (i.e., a sweetening agent) (claim 39) that is rebaudioside A (i.e., a non-caloric sweetener) (claim 44); and
a sweet taste improving composition (i.e., a taste modulator composition) (claim 39) comprising of at least two sweet taste improving compositions (claim 48) and optionally a third sweet taste improving composition (claim 49), consisting essentially of
at least one inorganic salt (claim 58) in the form of inorganic chloride (i.e., a first, second, and optionally third taste modulator component consisting essentially of a respective first, second, and/or third salt) of magnesium chloride (i.e., a first cation Mg2+ and a first anion), calcium chloride (i.e., a second cation Ca2+ and a second anion), and optionally potassium chloride (i.e., a third cation K+ and a third anion) (claim 63);
wherein the sweet taste improving inorganic salts (i.e., first, second, and optional third taste modulator components) are each present in an amount in the range of 25-5,000 ppm [0842], which is equivalent to 0.26-53 mM for magnesium chloride (i.e., the first taste modulator component), 0.23-45 mM for calcium chloride (i.e., the second taste modulator component), and 0.34-67 mM for potassium chloride (i.e., the optional third taste modulator component) (Examiner’s note: Per the specification of Prakash, ppm is equivalent to mg/L [0773], so amounts in ppm were first converted to mg/L and then converted to molarity using each respective molar mass);
wherein the rebaudioside A (i.e., non-caloric sweetening agent) is present in an amount of 100-3,000 ppm (equivalent to 100-3,000 mg/L) ([0838]; [0876]); and
wherein the beverage is a fruit juice (claim 85).
The concentrations of the first, second, and third taste modulator components, as well as the amount of the non-caloric sweetening agent, as taught by Prakash and set forth above, overlap with or lie inside the respective claimed ranges of instant claims 31-33, 38-40, and 43. Where the claimed ranges 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). See MPEP 2144.05.I.
The limitation of “wherein the at least one caloric sweetening agent is present in an amount of from about 1 wt.% to about 15 wt.%” is met through the rejection of the limitation of “a sweetening agent selected from at least one non-caloric sweetener, at least one caloric sweetener, and combinations thereof.” This limitation requires the selection of a non-caloric sweetener, a caloric sweetener, or a combination thereof; by selecting a non-caloric sweetener to meet the claim limitation, the later limitation regarding the amount of the caloric sweetener is also considered to be met.
Regarding claims 34-35, Prakash teaches magnesium chloride as a taste modulator (claim 63), thus the first anion is chloride.
Regarding claims 36-37, Prakash teaches calcium chloride as a second taste modulator (claim 63), thus the second anion is chloride.
Regarding claims 31-42, Prakash teaches potassium chloride as a third taste modulator (claim 63), thus the third anion is chloride.
Regarding claim 44, Prakash teaches that the beverage composition (claim 78) comprising a sweetener (i.e., a sweetening agent) (claim 39) that is a natural high-potency sweetener (claim 44).
Regarding claim 45, Prakash teaches that the beverage composition comprises a polyol sweetener that is erythritol (claim 52).
Regarding claim 46, Prakash teaches that the beverage composition comprises erythritol (i.e., a polyol sweetener) (claim 52) and rebaudioside A (i.e., a natural HP sweetener) (claim 44).
Regarding claims 47-49, Prakash teaches that the beverage composition comprises rebaudioside A (claim 44), which is a stevia sweetener.
Regarding claim 50, Prakash teaches that rebaudioside A (i.e., non-caloric sweetening agent) is present in the beverage composition at an amount of 100-3,000 ppm (i.e., 100-3,000 mg/L) [0838, 0876], which overlaps with the claimed range of 50-1000 mg/L. Where the claimed ranges 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). See MPEP 2144.05.I.
Regarding claim 52, Prakash teaches that the beverage composition comprises a synthetic HP sweetener that is sucralose or neotame (claim 45).
Regarding claim 53, Prakash teaches that the beverage composition comprises a synthetic HP sweetener that is neotame (claim 45) and that neotame is present in an amount of 1-20 ppm (equivalent to 1-20 mg/L) [0877]. The amount of neotame taught by Prakash overlaps with the claimed range of 1-10 mg/L. Where the claimed ranges 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). See MPEP 2144.05.I.
Regarding claim 54, Prakash teaches that compositions containing natural HP sweeteners, synthetic HP sweeteners, and taste modulators (i.e., a beverage composition) have a pH in the range of 2-5 [0861], which overlaps with the claimed range of 2.5-7. Where the claimed ranges 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).
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US PG Pub. 2007/0116819; listed in IDS dated June 27, 2023), as applied to claim 48 above, and further in view of Purkayastha (US PG Pub. 2013/0316043; cited on PTO-892 dated Feb. 28, 2024).
Prakash teaches the beverage composition as set forth above with regard to claim 48.
Prakash does not teach that the beverage composition further comprises one or more glucosylated steviol glycosides.
Purkayastha, in the same field of invention, teaches a beverage composition comprising glucosylated steviol glycosides [0011]. Purkayastha offers the motivation that glucosylated steviol glycosides can enhance and modify the intensity of tastes and flavors in a beverage product ([0010]-[0011]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the beverage composition of Prakash by incorporating the glucosylated steviol glycosides of Purkayastha. One would have been motivated to make this modification for the benefit of modifying tastes and flavors in beverage compositions.
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejections of claims 31-55 from the previous office action and therefore these rejections have been withdrawn. However, claim 55 remains rejected under 112(b) over a new ground of rejection.
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that Prakash does not teach any combination of sodium chloride, potassium chloride, calcium chloride, and magnesium chloride because Prakash states, in claim 63, “wherein the at least one inorganic chloride comprises a sodium, potassium, calcium, or magnesium chloride.” Accordingly, Applicant argues that Prakash also does not teach the combination of these chlorides at the claimed and taught concentration ranges (Remarks, p.8-10).
This argument is not persuasive. Claim 63 (which depends from claim 62) of Prakash discloses “at least one inorganic chloride” from the cited list. Therefore, where Prakash discloses one or more chlorides to be selected from a suitable list, Prakash teaches a combination of these chlorides, at each taught concentration range, when more than one inorganic chloride is desired. A person of ordinary skill in the art would have sufficient suggestion/motivation from Prakash to combine one or more of the chlorides disclosed by Prakash because Prakash teaches at least one of these chlorides. It would require no more than routine experimentation to select two, or optionally three, of these chlorides to combine together into the composition.
Applicant argues that the previous arguments regarding the synergistic effect of data from the instant specification’s examples, and the data itself, was not addressed in the Response to Arguments in the previous Office Action. Applicant again argues that the synergy of the combination of the taste modulator components as claimed do not naturally flow from the prior art and that Prakash does not teach this synergy (Remarks, p. 10-11).
This argument is not persuasive. The data and examples were addressed in the previous Office Action: it was stated that the examples in the instant specification did not show convincing evidence of unexpected results or criticality. Where Prakash teaches the combination of chlorides as claimed, the recognition of enhanced sweetness intensity and mouthfeel intensity and the reduction of sweetness linger and sweetness desensitization as in Example 10.2 of the instant specification is not evidence of unexpected results or criticality but instead merely the recognition of other advantages that would also occur in the teachings of Prakash.
Applicant argues that a fatty acid is functionally required in Prakash while the taste modulator composition of the instant claims consists essentially of the first and second modulator component, and optionally a third modulator component (Remarks, p. 11).
This argument is not persuasive. The fatty acid of Prakash is required in the functional sweetened composition, the functional sweetened composition of which comprises a sweetenable composition, at least one fatty acid, at least one high-potency sweetener, and at least one sweet taste improving composition (claim 38). The functional sweetened composition of Prakash reads on the beverage composition of the instant claims and the sweet taste improving composition of Prakash reads on the taste modulator composition of the instant claims. Therefore, the fatty acid of Prakash is not a component of the taste modulator composition but of the overall product. The beverage composition of the instant claims comprises a sweetening agent and a taste modulator composition and is also open ended as to other components being present in the beverage composition. Thus, a composition comprising a fatty acid, sweetening agent, and taste modulator composition still reads on the instant claims.
Applicant argues that “any obviousness rejection based on Logan and Weber would improperly rely on hindsight reasoning” and that only with the benefit of hindsight could the “Examiner reach the conclusion that Applicant’s pending independent Claim 1 is obvious” (Remarks, p. 11-12).
It seems this paragraph was erroneously added to these argument as there is no Logan and Weber reference(s) in any rejection and claim 1 is canceled in the instant application. In any case, if Applicant intended to argue improper hindsight reasoning based on Prakash: it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791