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 13, 2021 and in response to Applicant’s Amendments and Arguments/Remarks filed on July 8, 2025.
Status of Application
The amendment filed July 8, 2025 has been entered. Claims 1-5 are currently pending in the application. Claims 6-11 are canceled. Claim 1 has been amended. Claims 1-5 are hereby examined on the merits.
Claim Rejections - 35 USC § 103
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ogasawara et al. (US PG Pub. 2003/0175398; cited on PTO-892 dated Jan. 31, 2024), as evidenced by Yale New Haven Health (“Eat Any Sugar Alcohol Lately?” Yale New Haven Hospital; cited on PTO-892 dated April 9, 2025), in view of Nakano et al. (US PG Pub. 2009/0226566; listed on IDS dated Aug. 13, 2021), herein after referred to as Ogasawara, YNHH, and Nakano respectively.
Regarding claims 1-5, Ogasawara discloses an acidic milk drink (i.e., a food/beverage product) containing stevia, vitamins C and E, calcium lactate (i.e., a calcium source) [0027], and polydextrose (i.e., dietary fiber) (Example 3 Table (p. 5)).
Ogasawara also discloses that the beverage product contains 3.0% by weight polydextrose (i.e., dietary fiber) and 0.3% by weight vitamin C (Example 3 Table), both of which fall within each respective claimed range, as well as disclosing that the beverage product, a total of 100 parts, contains 8 parts of a calcium solution, the calcium solution of which contains 5 parts calcium lactate and 95 parts water ([0101]-[0103]). Thus, the total beverage product contains 0.4% by weight calcium lactate (i.e., a calcium source), which falls within the claimed range of 0.1-5% by mass.
Ogasawara discloses that the beverage product contains 3% by weight sugar (i.e., sucrose) and 2% by weight fructose (Example 4 Table), for a total amount of 5% by weight, which falls within the claimed range of 1-20% by mass.
Ogasawara does not teach that the beverage product contains 0.001-0.05% by mass stevia. However, Ogasawara does teach that the beverage product contains 0.01% by weight aspartame (Example 3 Table), as well as that both aspartame and stevia are suitable for inclusion in the invention as high sweetness sweeteners [0027]. Thus, it would have been obvious to one of ordinary skill in the art to have substituted stevia for the aspartame, at the taught percentage, as both are taught as suitable in the invention for the same purpose.
Although Ogasawara does not explicitly teach stevia in combination with polydextrose, one of ordinary skill in the art could “at once envisage” all of the ingredients together in the acidic milk beverage as claimed, given Ogasawara teaches all of the ingredients as claimed. See MPEP 2131.02.II. Thus, the disclosure of Ogasawara renders obvious the instant claims.
The only other sweetness ingredient in the beverage product of Ogasawara is maltitol (Example 3 Table) which is less sweet than sucrose, as evidenced by YNHH (YNHH: p. 4, “Maltitol”). Therefore, maltitol does not have a degree of sweetness of 50 times or more than that of sucrose, and the beverage product taught by Ogasawara contains no sweetness ingredient that has a degree of sweetness of 50 times or more than that of sucrose other than the stevia.
Ogasawara does not teach that the food/beverage product contains solids in an amount of 5 mass% or more and 25 mass% or less.
Nakano, in the same field of invention, teaches an acid milk beverage that contains solids in an amount of 12-17% by mass (claim 1), which lies within the claimed range of 5-25% by mass. Nakano offers the motivation that the taught amount of solids enables the acid milk beverage to have sufficient product quality stability and good flavor without substantial use of a thickening stabilizer [0021]. 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 of Ogasawara by incorporating the solids content of Nakano, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of producing an acid milk drink with sufficient product quality stability.
Modified Ogasawara is silent as to that the degree of sweetness of the food/beverage product, as a relative value when the degree of the sweetness of a 10 mass% aqueous solution of sucrose is 100, is in a range of 112 to 118.
However, where the claimed and prior art products are substantially identical in structure or composition, a prima facie case of obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Since the composition of modified Ogasawara is substantially identical to that of the claimed composition, the prior art product must necessarily possess the same properties and characteristics as the composition claimed. Therefore, the composition taught by modified Ogasawara is considered to possess the degree of sweetness as claimed because the composition is substantially the same and thus must necessarily exhibit the same properties.
Response to Arguments
Applicant's arguments filed July 8, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the Examiner for the following reasons.
Applicant argues that aspartame is present in the composition of Ogasawara, and as such, the previous office action was wrong in the assertion that the composition of Ogasawara contains no sweetness ingredient that has a degree of sweetness of 50 times or more than that of sucrose other than the stevia (remarks, p. 4-5).
This argument is not persuasive. Although the composition of Ogasawara shown in [0083] does include aspartame, it would have been obvious to have replaced that aspartame with stevia, as Ogasawara teaches that both aspartame and stevia are suitable in the invention for the same purpose, as set forth above in the rejection. Therefore, since the aspartame has been replaced with stevia, the composition no longer contains any aspartame, and the only sweetener left in the composition is maltitol, which is less sweet than sucrose.
Applicant argues that the composition of the prior art does not have a degree of sweetness as claimed in the newly amended claim, as well as arguing that the effects resulting from this degree of sweetness should be considered remarkable, as it would not have been obvious to one of ordinary skill in the art (remarks, p. 5-6).
This argument is not persuasive. As set forth above in the rejection, the composition of the prior art is considered to have the degree of sweetness as claimed, since the composition of the prior art and the claimed composition are substantially identical and thus must necessarily exhibit the same properties. Additionally, applicant has also not shown that these effects would also not be present in the composition of the prior art, as would be required to prove a showing of unexpected or critical results. Moreover, even though the prior art does not contemplate reducing off flavors, balancing the degree of sweetness, or favoring sensory properties, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144.IV.
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 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791