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As a result of the amendments to the claim, the 112(b) rejections over Claims 17, 24-27 have been withdrawn due to cancellation of the claims.
The prior art has been maintained. See Response to Arguments below.
Claims 8-16, 18-23 are currently pending in this Office Action.
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.
Claim(s) 8-16,18-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choe et al. (KR 950002868 B1- see machine translations) in view of Izumori et al. (US 2014/0186925 A1).
Regarding claims 8 and 12, Choe disclose a method for improving the sweetness of a steviol glycoside (as well as preparing a sweetener composition as per Claim 12), the method comprising converting a steviol glycoside into a transfructosylated steviol glycoside (β-2,6-fructosyl stevioside, Page 1, first paragraph) by fructosyltransferase derived from Arthrobacter (page 2, sixth paragraph),
wherein the transfructosylated steviol glycoside is in the form in which fructose is linked to a 19-OH site of the steviol glycoside (carbon 19 of the stevioside skeleton, page 2, sixth paragraph).
Choe recites a fructosyl transferase from the Arthrobacter genus but does not specifically recite Arthrobacter globiformis. Izumori is relied on to teach a fructosyltransferase (paragraph 76) derived from Arthrobacter globiformis for its safety features in the food industry, as well as its low optimal pH, heat stability, and metal requirement (paragraph 74). Therefore, since Choe is directed to a fructosyltransferase from the Arthrobacter genus, and Izumori suggest the use of an enzyme within the Arthrobacter genus such as Arthrobacter globiformis for its safety features in the food industry, it would have been obvious to one of ordinary skill in the art to use fructosyltransferase derived from Arthrobacter globiformis within the process of Choe for its stability and safety in use within the food industry.
Regarding Claims 9 and 13, Choe further teaches wherein the transfructosylated steviol glycoside is in the form in which fructose is linked to the steviol glycoside via a β-(2,6) bond (method for producing β-2 and 6-fructosyl stevioside, page 2, sixth paragraph).
Regarding Claims 10 and 14, Choe further teaches wherein the steviol glycoside comprises stevioside (see Abstract).
Regarding Claims 11 and 15, Choe further teaches wherein the transfructosylated steviol glycoside is in the form in which 1 fructose molecules are linked to the steviol glycoside (“fructose is transferred to carbon 6 of glucose bound to carbon 19 of the stevioside”, page 2, sixth paragraph).
Regarding claims 16, Choe further teaches wherein the transfructosylated steviol glycoside has an improved bitter taste compared to the steviol glycoside (“has little bitterness” page 3, second paragraph).
Regarding Claims 18 and 19, Choe further teaches wherein the steviol glycoside comprises rebaudioside A (page 2, eighth paragraph).
Regarding Claims 20 and 21, Choe further teaches wherein the method decreases bitterness of the steviol glycoside (little bitterness, page 3, second paragraph). Also see page 3, third paragraph “Purified β-2 and 6-fructosyl steviosides are white, odorless powders with no bitterness” (emphasis added).
Regarding Claims 22-23, Choe is silent to wherein the transfructosylated steviol glycoside comprises transfructosylated stevioside represented by chemical formula 4 (as per Claim 22) and transfructosylated rebaudioside A represented by chemical formula 5 (as per Claim 23). However, Choe begins with a mixture of stevioside, rebaudioside A, and sugar (“mixture containing homologues of steviosides such as rebaudioside A…a β-fructosyl sugar compound having a disaccharide or more of which fruit is β-bonded, such as sugar…”, see page 2, eighth paragraph). Therefore, in combination with Izumori which modifies the fructosyltransferase to one derived from Arthrobacter globiformis, there is a reasonable expectation that the transfructosylated steviol glycoside of the prior art combination would have also produced a transfructosylated stevioside represented by chemical formula 4 and transfructosylated rebaudioside A represented by chemical formula 5. This is further supported by Choe’s disclosure meeting the limitations of Claims 9-11, 16-18, and 20 which are all directed to the structures and characteristics of the claimed transfructosylated steviol glycoside.
Response to Arguments
Applicant’s arguments in the response filed 29 Sep 2025, and the Declaration filed 14 Oct 2025 has been considered, but is found not persuasive over the prior art.
In both the remarks and the Declaration, Applicant and Declarant presents experimental results showing a comparison between the claimed Arthrobacter globiformis to A. oryzae bff and A. subterraneous bff. Applicant concluded that one of ordinary skill in the art would not have expected superior enzymatic activity from Arthrobacter globiformis compared to equivalent enzymes from the Choe reference. However, the argument is not persuasive over the prior art because the evidence do not sufficiently render the combination of Choe and Izumori non-obvious. That is, while Choe alone do not specifically provide guidance to the globiformis species, there are no evidence to suggest that one of ordinary skill in the art would have not considered the globiformis species given the fact that the Arthrobacter genus is taught. In this case, Izumori is specifically directed to the use of Arthrobacter globiformis (see title and abstract) and recognizes that the Arthrobacter genus is described as a source of enzyme for fructosyltransferase (paragraph 76). Therefore, since both Choe and Izumori recognizes the Arthrobacter strain as a fructosyltransferase, and Izumori emphasizes the advantages of the globiformis species in its safe practices in the food industry (paragraph 75), it would have been obvious to one of ordinary skill in the art to use the globiformis species based on its safe handling in the food industry. 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).
In response to Applicant’s/Declarant’s assertion that the Choe reference suggest Aureobasidium as the optimal choice over other microorganisms, the argument is not persuasive because the reference as a whole is not limited by its exampled embodiments, and there is no evidence in the reference that explicitly suggest that Aureobasidium is superior to Arthrobacter. Rather, Arthrobacter is listed as a suitable equivalent to Aureobasidium and therefore presents a prima facie case of obviousness (see Claim 3 of Choe which list both Aureobasidium and Arthrobacter). For these reasons, the prior art have been maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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