DETAILED ACTION
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 Response and Amendment after Non-Final Office Action filed 03/30/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment: the 35 U.S.C. §112(b) rejections of claims 47-54 have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 29, 35, 37-38, 43-56
Withdrawn claims: None
Previously cancelled claims: 1-28, 30-34, 36, 39-42
Newly cancelled claims: None
Amended claims: 29, 37, 44-45, 47-52
New claims: 55-56
Claims currently under consideration: 29, 35, 37-38, 43-56
Currently rejected claims: 29, 35, 37-38, 43-56
Allowed claims: None
Specification
The specification filed 12/17/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is essentially the entirety of the specification filed 12/17/2025.
Applicant is required to cancel the new matter in the reply to this Office Action.
The Examiner presumes that the specification filed on 12/17/2025 was meant to support another U.S. Patent Application. Therefore, Examiner will continue to refer to the specification filed 09/02/2021 as being the specification for the present application.
Claim Warning
Applicant is advised that should claim 29 be found allowable, claim 35 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 29, 35, 37-38, 43-50, and 53-54 are rejected under 35 U.S.C. 103 as being unpatentable over Nachbagauer (US 2018/0184692).
Regarding claims 29, 35, and 37, Nachbagauer teaches a food or beverage product (corresponding to sweetener composition and the sweetener composition which may also be a beverage) [0017], [0051] comprising: (A) the rare sugar rhamnose; (B) the taste modifying compound hesperetin [0017]; (C) a non-saccharide natural sweet tasting compound selected from the group consisting of steviol glycosides, rebaudiosides, and mixtures thereof, such as rebaudioside A [0021]; sucrose [0046]; and (E) water [0051] as recited in present claims 29 and 37.
Nachbagauer teaches that the product may further comprise tannin in an amount of 25-250 mg/L [0018]. Nachbagauer teaches that the component (C) may comprise 80-99 wt.% rebaudioside A [0040]. Nachbagauer teaches that the concentration of the steviol glycosides, rebaudiosides, and mixtures thereof is 50-70 wt.%; the concentration of hesperetin is 5-35 wt.%; and the concentration of tannin is 5-35 wt.% based on the total concentration of steviol glycosides, rebaudiosides, hesperetin, and tannin [0020]. Nachbagauer also teaches that the total concentration of sucrose and rhamnose in the product may be 5-35 g/L [0053].
From these values, Nachbagauer discloses that the product may comprise claimed components (A)-(D) in concentrations which at least overlap the concentrations recited in present claim 37; and may comprise claimed components (A)-(D) in weight ratios which at least overlap the weight ratios recited in present claim 35. For example, the product of Nachbagauer may comprise: (A) rhamnose in a concentration of 1.0 wt.%; (B) hesperetin in a concentration of 25 ppm; (C) rebaudioside A in a concentration of 88 ppm; and (D) sucrose in a concentration of 1.9 wt.% based on the total weight of the product, which fall within the concentration ranges recited in present claim 37. These concentrations also provide a total concentration of components (A)-(D) of 2.9138 wt.%, which falls within the range of the combined concentrations of (A)-(D) recited in present claim 29. These exemplified concentrations provide weight ratios of: (A) to (B) of 400:1; (A) to (C) of 125:1; (A) to (D) of 1:1.9; and (B) to (C) of 1:3.2, which fall within the ranges recited in present claims 29 and 35. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "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 percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Nachbagauer teaches that the food or beverage product has reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar due to the sweetener composition in the product [0068]. However, Nachbagauer does not specifically disclose that the food or beverage product has a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product as recited by claim 29. However, since Nachbagauer teaches the same food or beverage product comprising the same ingredients as claimed and instantly disclosed, the product of Nachbagauer would necessarily have the claimed features of a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product.
It is noted that claim 29 is a recitation of an inherent characteristic wherein the product of Nachbagauer is capable of comprising the claimed features of a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product, as claimed and as disclosed. Regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, does not render the old composition patentably new to the discoverer.” MPEP §2112.01.I.
Regarding claim 38, Nachbagauer teaches the invention as described above in present claim 37, including that the non-saccharide natural sweet tasting compound is a stevia compound selected from the group consisting of steviol glycosides, rebaudiosides, and mixtures thereof [0017], [0021]. Nachbagauer discloses that steviol glycosides and rebaudiosides include rebaudiosides A, B, C, E, and F, stevioside, dulcoside, rubusoside, and steviolbioside [0043]. Therefore, a skilled practitioner would understand that the stevia compound in the product of Nachbagauer may comprise a steviol glycoside or rebaudioside other than rebaudioside D, thereby rendering the claim obvious.
Regarding claims 43 and 44, Nachbagauer teaches the invention as described above in present claims 29 and 37, including the food or beverage product is free from phyllodulcin [0017].
Regarding claims 45 and 46, Nachbagauer teaches a food or beverage product (corresponding to sweetener composition and the sweetener composition which may also be a beverage) [0017], [0051] comprising: (A) the rare sugars rhamnose or tagatose; (B) the taste modifying compound hesperetin [0017]; (C) a non-saccharide natural sweet tasting compound selected from the group consisting of steviol glycosides, rebaudiosides, and mixtures thereof, such as rebaudioside A [0021]; sucrose [0046]; and (E) water [0051] as recited in present claim 45. Nachbagauer teaches that the product is free from phyllodulcin as recited in present claim 45.
Nachbagauer teaches that the product may further comprise tannin in an amount of 25-250 mg/L [0018]. Nachbagauer teaches that the component (C) may comprise 80-99 wt.% rebaudioside A [0040]. Nachbagauer teaches that the concentration of the steviol glycosides, rebaudiosides, and mixtures thereof is 50-70 wt.%; the concentration of hesperetin is 5-35 wt.%; and the concentration of tannin is 5-35 wt.% based on the total concentration of steviol glycosides, rebaudiosides, hesperetin, and tannin [0020]. Nachbagauer also teaches that the total concentration of sucrose and rhamnose in the product may be 5-35 g/L [0053].
From these values, Nachbagauer discloses that the product may comprise claimed components (A)-(D) in concentrations which at least overlap the concentrations recited in present claim 45. For example, the product of Nachbagauer may comprise: (A) tagatose or rhamnose in a concentration of 1.0 wt.%; (B) hesperetin in a concentration of 25 ppm; (C) rebaudioside A in a concentration of 88 ppm; and (D) sucrose in a concentration of 1.9 wt.% based on the total weight of the product, which fall within the concentration ranges recited in present claim 45. The selection of values within the overlapping ranges renders the claimed concentrations obvious. MPEP 2144.05.
Nachbagauer teaches that the food or beverage product has reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar due to the sweetener composition in the product [0068]. However, Nachbagauer does not specifically disclose that the food or beverage product has a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product as recited by present claim 46. However, since Nachbagauer teaches the same food or beverage product comprising the same ingredients as claimed and instantly disclosed, the product of Nachbagauer would necessarily have the claimed features of a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product.
It is noted that claim 46 is a recitation of an inherent characteristic wherein the product of Nachbagauer is capable of comprising the claimed features of a stronger sweetness impact, a stronger overall sweetness intensity, and less lingering artificial sweetness than a comparative product that lacks the rare sugar but is otherwise identical to the food or beverage product, as claimed and as disclosed. Regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, does not render the old composition patentably new to the discoverer.” MPEP §2112.01.I.
Regarding claims 47 and 49, Nachbagauer teaches the invention as described above in present claim 46, including that the product may further comprise tannin in an amount of 25-250 mg/L [0018]. Nachbagauer teaches that the component (C) may comprise 80-99 wt.% rebaudioside A [0040]. Nachbagauer teaches that the concentration of the steviol glycosides, rebaudiosides, and mixtures thereof is 50-70 wt.%; the concentration of hesperetin is 5-35 wt.%; and the concentration of tannin is 5-35 wt.% based on the total concentration of steviol glycosides, rebaudiosides, hesperetin, and tannin [0020]. Nachbagauer also teaches that the total concentration of sucrose and rhamnose in the product may be 5-35 g/L [0053].
From these values, Nachbagauer discloses that the product may comprise claimed components (A)-(D) in concentrations which at least overlap the concentrations recited in present claims 47 and 49. For example, the product of Nachbagauer may comprise: (A) rhamnose in a concentration of 1.0 wt.%; (B) hesperetin in a concentration of 25 ppm; (C) rebaudioside A in a concentration of 88 ppm; and (D) sucrose in a concentration of 1.9 wt.% based on the total weight of the product, which fall within the concentration ranges recited in present claims 47 and 49. The selection of values within the overlapping ranges renders the claimed concentrations obvious. MPEP 2144.05.
Regarding claims 48 and 50, Nachbagauer teaches the invention as described above in present claim 46, including that the product may further comprise tannin in an amount of 25-250 mg/L [0018]. Nachbagauer teaches that the component (C) may comprise 80-99 wt.% rebaudioside A [0040]. Nachbagauer teaches that the concentration of the steviol glycosides, rebaudiosides, and mixtures thereof is 50-70 wt.%; the concentration of hesperetin is 5-35 wt.%; and the concentration of tannin is 5-35 wt.% based on the total concentration of steviol glycosides, rebaudiosides, hesperetin, and tannin [0020]. Nachbagauer also teaches that the total concentration of sucrose and rhamnose in the product may be 5-35 g/L [0053].
From these values, Nachbagauer discloses that the product may comprise claimed components (A)-(D) in concentrations which at least overlap the concentrations recited in present claims 48 and 50. For example, the product of Nachbagauer may comprise: (A) tagatose in a concentration of 1.0 wt.%; (B) hesperetin in a concentration of 25 ppm; (C) rebaudioside A in a concentration of 88 ppm; and (D) sucrose in a concentration of 1.9 wt.% based on the total weight of the product, which fall within the concentration ranges recited in present claims 48 and 50. The selection of values within the overlapping ranges renders the claimed concentrations obvious. MPEP 2144.05.
Regarding claims 53 and 54, Nachbagauer teaches the invention as described above in present claim 49 and 50, including the food or beverage product is a beverage [0051].
Claims 51-52 and 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Nachbagauer (US 2018/0184692) as applied to claims 49 and 50 above, in view of Prakash (Prakash et al., “Development of Next Generation Stevia Sweetener: Rebaudioside M”, 2014, Foods, 3, pages 162-175; previously cited).
Regarding claim 51, Nachbagauer teaches the invention as described above in claim 49, including the product may comprise (A) rhamnose; (B) the taste modifying compound hesperetin [0017]; (C) a non-saccharide natural sweet tasting compound selected from the group consisting of steviol glycosides, rebaudiosides, and mixtures thereof [0021]; sucrose [0046]; and (E) water [0051] in concentrations which overlap the claimed concentrations recited in present claim 51. Nachbagauer teaches that component (C) may comprise a mixture of 80-99 wt.% rebaudioside A, 0.1-1.5 wt.% rebaudioside B, and 0.9-18.5 wt.% rebaudioside D [0040]. Nachbagauer also discloses that the product may comprise 88 ppm of rebaudioside A as described above in the rejection of present claim 49. Nachbagauer teaches that the food or beverage product has reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar due to the sweetener composition in the product [0068].
Nachbagauer does not teach that component (C) is rebaudioside M.
However, Prakash discloses that rebaudioside M is well-suited to blending and is functional in a wide variety of food and beverage products as rebaudioside M possess a clean, sweet taste with a slightly bitter aftertaste (abstract). Prakash discloses that that rebaudioside M displayed a faster sweetness onset, reduced bitterness, and reduced bitterness lingering when compared to rebaudioside A (page 167, last paragraph). Prakash discloses that blending of rebaudioside M with rebaudioside A and rebaudioside D produced sweetness synergy resulting in improvement in flavor and temporal profiles (page 169, 1st paragraph under section 3.2; Figs. 7-8 on page 170).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the present invention to have modified the steviol glycoside mixture of Nachbagauer to include rebaudioside M. Since Nachbagauer discloses that it is an object of its invention to provide foods and beverages which have reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar [0068]; and discloses that other steviol glycosides besides rebaudiosides A, B, and D may be used [0040], a skilled practitioner would readily recognize that rebaudioside M would be a suitable steviol glycoside in the food or beverage of Nachbagauer due to rebaudioside M being well-suited to blending with rebaudiosides A and D and being functional in a wide variety of food and beverage products as rebaudioside M possess a clean, sweet taste with a slightly bitter aftertaste (Prakash, abstract). Therefore, the inclusion of rebaudioside M in the claimed amount is rendered obvious.
Since the product of Nachbagauer may comprise rebaudioside A in a concentration of 88 ppm as described above in the rejection of present claim 49; and the product of Nachbagauer may comprise a steviol glycoside mixture of 80-99 wt.% rebaudioside A, 0.1-1.5 wt.% rebaudioside B, and 0.9-18.5 wt.% rebaudioside D [0040], the steviol glycoside mixture comprising rebaudiosides A, B, and D in the product of Nachbagauer may further comprise rebaudioside M in a concentration of up to 19 wt.% based on the weight of the steviol glycoside mixture. A concentration of 19 wt.% in the steviol glycoside mixture represents a concentration of 21 ppm based on the weight of the food or beverage product in the example formulation calculated in the rejection of present claim 49 above. This value of 21 ppm falls within the claimed concentration of rebaudioside M recited in present claim 51. Therefore, the combination of Nachbagauer and Prakash suggest a concentration of rebaudioside M which at least overlaps the claimed concentration. The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.
Regarding claims 52, 55, and 56, Nachbagauer teaches the invention as described above in claim 50, including the product is a beverage [0051] as recited in present claim 56. Nachbagauer teaches that the beverage may comprise (A) tagatose; (B) the taste modifying compound hesperetin [0017]; (C) a non-saccharide natural sweet tasting compound selected from the group consisting of steviol glycosides, rebaudiosides, and mixtures thereof [0021]; sucrose [0046]; and (E) water [0051] in concentrations which overlap the claimed concentrations recited in present claims 52 and 55. Nachbagauer teaches that component (C) may comprise a mixture of 80-99 wt.% rebaudioside A, 0.1-1.5 wt.% rebaudioside B, and 0.9-18.5 wt.% rebaudioside D [0040]. Nachbagauer also discloses that the product may comprise 88 ppm of rebaudioside A as described above in the rejection of present claim 50. Nachbagauer teaches that the food or beverage product has reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar due to the sweetener composition in the product [0068].
Nachbagauer does not teach that component (C) is rebaudioside M.
However, Prakash discloses that rebaudioside M is well-suited to blending and is functional in a wide variety of food and beverage products as rebaudioside M possess a clean, sweet taste with a slightly bitter aftertaste (abstract). Prakash discloses that that rebaudioside M displayed a faster sweetness onset, reduced bitterness, and reduced bitterness lingering when compared to rebaudioside A (page 167, last paragraph). Prakash discloses that blending of rebaudioside M with rebaudioside A and rebaudioside D produced sweetness synergy resulting in improvement in flavor and temporal profiles (page 169, 1st paragraph under section 3.2; Figs. 7-8 on page 170).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the present invention to have modified the steviol glycoside mixture of Nachbagauer to include rebaudioside M. Since Nachbagauer discloses that it is an object of its invention to provide foods and beverages which have reduced lingering, increased sweetness onset, increased sweetness, and increased sweetness intensity to have a sweetness profile more similar to sugar [0068]; and discloses that other steviol glycosides besides rebaudiosides A, B, and D may be used [0040], a skilled practitioner would readily recognize that rebaudioside M would be a suitable steviol glycoside in the food or beverage of Nachbagauer due to rebaudioside M being well-suited to blending with rebaudiosides A and D and being functional in a wide variety of food and beverage products as rebaudioside M possess a clean, sweet taste with a slightly bitter aftertaste (Prakash, abstract). Therefore, the inclusion of rebaudioside M in the claimed amount is rendered obvious.
Since the product of Nachbagauer may comprise rebaudioside A in a concentration of 88 ppm as described above in the rejection of present claim 50; and the product of Nachbagauer may comprise a steviol glycoside mixture of 80-99 wt.% rebaudioside A, 0.1-1.5 wt.% rebaudioside B, and 0.9-18.5 wt.% rebaudioside D [0040], the steviol glycoside mixture comprising rebaudiosides A, B, and D in the product of Nachbagauer may further comprise rebaudioside M in a concentration of up to 19 wt.% based on the weight of the steviol glycoside mixture. A concentration of 19 wt.% in the steviol glycoside mixture represents a concentration of 21 ppm based on the weight of the food or beverage product in the example formulation calculated in the rejection of present claim 49 above. This value of 21 ppm falls within the claimed concentration of rebaudioside M recited in present claims 52 and 55. Therefore, the combination of Nachbagauer and Prakash suggest a concentration of rebaudioside M which at least overlaps the claimed concentration. The selection of a value within the overlapping range renders the claimed concentration obvious. MPEP 2144.05.
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.
Claim 29, 35, and 43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, and 11-15 of co-pending Application No. 19/091,967 (reference application) in view of Prakash (US 2018/0263269; previously cited). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 29, 35, and 43 require the same features of co-pending claims 1, 5-8, and 11-15, except the instant claims further require the food or beverage product to comprise component (e) water. However, beverages comprise water. Therefore, it would be obvious for the beverage product of the instant claims to further comprise water in light of the co-pending claims.
The instant claims also further require components (a) and (c) (i.e., component (c) of the instant claims corresponds to component (c1) of the co-pending claims) to be in a weight ratio of 2,000:1 to 50:1; components (a) and (d) (i.e., component (d) of the instant claims corresponds to component (c2) of the co-pending claims) to be in a weight ratio of 5:1 to 1:10; and components (b) and (c) to be in a weight ratio of 2:1 to 1:15.
However, Prakash teaches a food or beverage that may comprise (a) about 0.5 wt.% to about 3.0 wt.% allulose [0378], (b) about 0.0005 wt.% to about 0.005 wt.% (corresponding to about 5 ppm to about 50 ppm) hesperetin [0068], [0071], (c) about 0.005 wt.% to about 0.09 wt.% (corresponding to about 50 ppm to about 900 ppm) steviol glycoside composition; and (d) about 0.5 wt.% to about 3.0 wt.% glucose [0068]. Therefore, Prakash discloses weight ratios of (a) and (c), (a) and (d), and (b) and (c) which at least overlap the weight ratios of the instant claims.
It would have been obvious to one of ordinary skill in the art to select any portions of the concentrations of (a), (b), (c), and (d), and thus weight ratios, disclosed in Prakash including the instantly claimed ranges as the concentrations and weight ratios of the co-pending claims, particularly in view of the fact that; "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 percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05. Therefore, the instantly claimed weight ratios are rendered obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 03/30/2026 is insufficient to overcome the rejections of claims 29, 35, 37-38, 43-50, and 53-54 based upon Reichelt; and the rejections of claims 51-52 based on Reichelt and Prakash as set forth in the last Office action.
The Declaration stated that the present inventors found that when a rare sugar, a taste modifying compound, and a non-saccharide natural sweet-tasting compound were combined, the resulting composition unexpectedly exhibits improved sweetness onset, overall sweetness intensity, fully-body character, and lingering artificial sweetness. The Declaration pointed to Example 1 represented in Tables 1-3 of the Declaration as demonstrating that the rare sugars allulose, rhamnose, and tagatose produce the unexpected improvements in the composition wherein the composition is a reduced-sucrose composition (Declarations, paragraphs 3-8).
However, the Examiner points out that Example 1 does not use a taste-modifying compound whereas the present claims require a taste-modifying compound. Therefore, Example 1 is moot.
The Declaration then pointed to Example 5 represented in Table 7 of the Declaration as demonstrating the effects of compositions comprising a rare sugar, a taste modifier, and non-saccharide natural sweet-tasting compounds. The Declaration tested the rare sugars, rhamnose, allulose, trehalose, tagatose, and arabinose; and stated that each of the tested rare sugars increased onset sweetness intensity, overall sweetness intensity, and full-body character relative to a base composition not comprising the rare sugar. The Declaration stated that the lingering artificial sweetness in the compositions comprising the rare sugar remained comparable to or lower than the base composition. The Declaration stated that the coordinated improvement of onset, intensity, and full-body within a consistent increase in lingering sweetness or off-notes would not have been predictable from the individual properties of the components alone and would not have been predictable from the prior art (Declaration, paragraphs 9-14).
However, the Examiner points out that Example 5 demonstrates that trehalose increases the amount of lingering artificial sweetness when compared to the base composition. Present claims 29, 35, 43 recite that the rare sugar in the product may be trehalose. “With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. The Federal Circuit, citing McRO, provided guidance on the application of enablement to genus claims, holding that "[a]lthough a specification does not need to describe how to make and use every possible variant of the claimed invention, when a range is claimed, there must be reasonable enablement of the scope of the range." MPEP §2164.08. Since the data in Table 7 demonstrates that trehalose does not lessen the lingering artificial sweetness in a base composition, claims 29, 35, and 43 are inconsistent with the data in the Declaration so that the data in the Declaration is moot in regards to claims 29, 35, and 43.
In regard to the data in Table 7 demonstrating the asserted effects for claim 45, claim 45 does not require the product to have any particular characteristics. Therefore, the data in Table 7 is moot in regard to claim 45.
In regard to the data in Table 7 demonstrating the asserted effects for claims 37-38, 44, and 46-56, it is not clear in Table 7 that the asserted and claimed improved sweetness onset, overall sweetness intensity, and lingering artificial sweetness are present across the claimed concentrations and weight ratios of components (a)-(d) as Table 7 only provided data for one value within each claimed weight ratio range and did not test any values outside of the claimed weight ratios. Therefore, the scope of the claims are broader than the scope of the data and the assertion of unexpected results are not necessarily encompassed by the present claims.
In response to the Declaration’s assertions that the coordinated improvement of onset, intensity, and full-body within a consistent increase in lingering sweetness or off-notes would not have been predictable, the Examiner notes that improvements in fully-body and off-notes are not required by the present claims. Therefore, assertions regarding such a feature are moot.
Furthermore, as described in the rejections of claims 29 and 45 in the previous Office Action, the concentrations disclosed in Reichelt provides concentrations of: component (a) from an amount greater than 0 wt.% to an amount less than 90 wt.% of the product; component (b) of 1-1,000 ppm; component (c) of 1-5,000 ppm; and component (d) from an amount greater than 0 wt.% to an amount less than 90 wt.%. From these values, Reichelt discloses weight ratios of (a) and (b), (a) and (c), (a) and (d), and (b) and (c) which overlap the claimed weight ratios (e.g., a food or beverage comprising 1 wt.% of component (a); 0.002 wt.% of component (b); 0.006 wt.% of component (c); and 2 wt.% of component (d) would have a weight ratio of (a) to (b) of 500:1; a weight ratio of (a) to (c) of 167:1; a weight ratio of (a) to (d) of 1:2; and weight ratio of (b) to (c) of 1:3 which fall within the claimed weight ratio ranges). From these values for components (a)-(d), Reichelt also discloses a total amount of components (a)-(d) which overlap the claimed total concentration of components (a)-(d) based on the total weight of the food or beverage product (e.g., e.g., a food or beverage comprising 1 wt.% of component (a); 0.002 wt.% of component (b); 0.006 wt.% of component (c); and 2 wt.% of component (d) would contain components (a)-(d) in a total concentration of 3.008 wt.%, which falls within the claimed concentration). The selection of a value within the overlapping ranges renders the claimed concentrations and weight ratios obvious. MPEP 2144.05.
Regarding product claims, when the ingredient recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be present. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art' s function, does not render the old composition patentably new to the discoverer.” MPEP §2112.01.I. Therefore, Reichelt is considered to disclose embodiments of its products which exhibit the asserted improvement in sweetness intensity, sweetness impact, and lingering artificial sweetness, particularly wherein the embodiments comprise the claimed concentrations and weight ratios of ingredients, even if Reichelt does not expressly disclose such improvements. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The Declaration then pointed to Tables A-C as demonstrating that formulations comprising all components (a)-(d) exhibit increased onset sweetness intensity and overall sweetness intensity without a proportional increase in lingering artificial sweetness (Declaration, paragraphs 15-19).
However, as discussed in the responses above, trehalose increased the lingering artificial sweetness when compared to a base composition as can be seen in Table C. Present claims 29, 35, and 43 require the composition containing the rare sugar to have a decrease in lingering artificial sweetness wherein the rare sugar is trehalose. Therefore, the results of Table C are not consistent with the requirements of these claims. Tables A-C do not test rhamnose which is the rare sugar required by present claims 37-38, 44, 47, 49, 51, and 53. Therefore, Tables A-C are moot with respect to these claims. Present claim 45 does not require the product to exhibit any particular feature, let alone improved sweetness intensity and lingering artificial sweetness. Therefore, assertions regarding improvement in onset sweetness intensity and overall sweetness intensity are moot.
With regard to claims 46, 48, 50, 52, and 54-56 which require tagatose and/or the product to have improved onset sweetness intensity, overall sweetness intensity, and lingering artificial sweetness, it is not clear in Tables A-C that the asserted and claimed improved sweetness onset, overall sweetness intensity, and lingering artificial sweetness are present across the claimed concentrations and weight ratios of components (a)-(d) as Tables A-C did not provide any base composition to which to compare the results of the compositions comprising the rare sugars.
The Declaration then stated that it is not chemically possible for an aqueous food or beverage product at acid-base equilibrium to contain a phyllodulcin salt while containing no neutral phyllodulcin. The Declaration stated that the neutral protonated form of phyllodulcin necessarily coexists with the deprotonated phyllodulcin salt form as both forms are related by acid-base equilibrium (Declaration, paragraphs 20-21).
However, the claims that were rejected in the previous Office Action did not require water to be present in the product. Therefore, arguments directed to the presence of phyllodulcin in an aqueous food or beverage product are moot in relation to the rejections of those claims.
For at least these reasons, the Declaration under 37 CFR 1.132 filed 03/30/2026 is insufficient to overcome the rejections of as set forth in the last Office action.
Response to Arguments
Claim Warning: Applicant did not amend or cancel claim 35. Therefore, the claim warning is maintained as written herein.
Claim Rejections – 35 U.S.C. §112(b) of claims 47-54: Applicant amended the claims to fully address the rejections. Therefore, the rejections are withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 29, 35, 37-38, 43-50, and 53-54 over Reichelt: Applicant’s arguments with respect to claim(s) 29, 35, 37-38, 43-50, and 53-54 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections – 35 U.S.C. §103 of claims 51-52 over Reichelt and Prakash: Applicant did not provide arguments in relation to this combination of prior art. However, these claims stand rejected over a new combination of prior art that does not cite Reichelt.
Double Patenting Rejection: Applicant did not provide arguments against the double patenting rejection. Therefore, the rejection is maintained as written herein.
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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/KELLY P KERSHAW/Examiner, Art Unit 1791
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