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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 13, 2026, has been entered.
Response to Amendment
The prior art has been maintained. See Response to Arguments below.
Claims 8, 9, 11-13, 15-16, 20, 21, 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) 8-9, 11-13, 15-16, 20, 21, and 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 rebaudioside A (“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…”, emphasis added, see page 2, eighth paragraph). While the disclosure of Choe is directed to converting Stevioside to a transfructosylated stevioside (β-2,6-fructosyl stevioside, Page 1, first paragraph), it is disclosed that the stevioside used as the substrate is not limited but may be a mixture of homologues of steviosides such as rebaudioside A (page 2, eighth paragraph). Therefore, all recitation of steviol glycoside within in the Choe reference is construed to be analogous with rebaudioside A.
In view of this, Choe is construed to teach the method comprising
converting a rebaudioside A into a transfructosylated rebaudioside A by fructosyltransferase derived from Arthrobacter (page 2, sixth paragraph),
wherein the transfructosylated rebaudioside A is in the form in which fructose is linked to a 19-OH site of the rebaudioside A (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 rebaudioside A in the form in which fructose is linked to the rebaudioside A via a β-(2,6) bond (method for producing β-2 and 6-fructosyl stevioside, page 2, sixth paragraph).
Regarding Claims 11 and 15, Choe further teaches wherein the transfructosylated rebaudioside A is in the form in which 1 fructose molecules are linked to the rebaudioside A (“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 rebaudioside has an improved bitter taste compared to the steviol glycoside (“has little bitterness” page 3, second paragraph).
Regarding Claims 20 and 21, Choe further teaches wherein the method decreases bitterness of the rebaudioside A (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 Claim 23, Choe is silent to wherein the transfructosylated rebaudioside is represented by chemical formula 5 (as per Claim 23). However, Choe begins with a mixture of 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 rebaudioside A represented by chemical formula 5.
Response to Arguments
Applicant’s arguments in the response filed 13 July 2026 has been considered, but is found not persuasive over the prior art.
Applicant argues on the basis that Choe fails to teach or suggest “converting rebaudioside A into a transfructosylated rebaudioside A” as set forth in the present claim. Applicant notes that Choe suggest stevioside as a substrate and fails to teach or suggest rebaudioside A (section i of the remarks). The argument is not persuasive because Choe explicitly recites: “The stevioside used as the substrate in the present invention is not limited to a highly purified product, but may be a mixture containing homologues of steviosides such as rebaudioside A, B, C, E,” (page 2, eighth paragraph). Therefore, it is clear that rebaudioside A can be comprised within the substrate. Furthermore, Choe recites “There is no problem in the case of preparations in which impurities are mixed. As another donor of sugar, which is a substrate, a β-fructosyl sugar compound having a disaccharide or more of which fructose is β-bonded, such as sugar and kestos, is used” (page 2, eighth paragraph) which suggest that the homologues rebaudioside A, B, C, and E similarly provides β-fructosyl sugar compounds in which fructose is β-bonded, thus reacting similarly to the transfructosylation of stevioside. Therefore, it is submitted that rebaudioside A is a suitable equivalent to stevioside within the disclosure of Choe. In response to Applicant’s argument that transfructosylated rebaudioside A is not confirmed within the examples of Choe, the argument is not persuasive because the examples of Choe are directed to the transfructosylation of stevioside and therefore would not be expected to produce transfructosylated rebaudioside A. However, as discussed above, the broader disclosure of Choe indicates that the substrate can also comprise rebaudioside A (page 2, eighth paragraph). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP 2123.II.
As to section ii of the remarks, Applicant submits that evidence of unexpected results can be used to rebut prima facie case of obviousness. Therefore, Applicant submits that the claims are not rendered obvious in view of the unexpectedly superior transfructosylated rebaudioside A conversion rate of the claimed Arthrobacter globiformis as shown in the Declaration filed 29 Sept 2025.
The argument is found not persuasive for the following reasons:
The evidence of unexpected results provided in the Declaration filed 29 Sept 2025 show that the Arthrobacter globiformis strain performs superior to the A.oryzae and the A.subterraneus strain which both appears to have a 0% conversation rate. Applicant appears to demonstrate the superiority of Arthrobacter globiformis in comparison to “analogous enzymes” A. oryzae and A. subterraneus species and therefore one of ordinary skill of art would not expect the success of Arthrobacter globiformis. However, this is not sufficient to overcome the prima facie case of obviousness because Applicant’s evidence does not clearly convey that one of ordinary skill in the art would not expect Arthrobacter globiformis itself to perform successfully and it is not clear that A. oryzae and A. subterraneus species are analogous enzymes. First, in the Kumar et al. reference provided in the Declaration (paragraph 3), Applicant points to section 3.2 of Kumar which discusses fructosyl transferring enzymes from Aspergillus Niger, Bacillus macerals, A.oryzae, A. japonicas, Penicillium citrine, Arthrobacter Sp., Lactobacillus reutter, Candida, etc. However, Kumar does not appear to clearly identify Arthrobacter oryzae as a fructosyltransferase since “A. oryzae” may also refer to Aspergillus oryzae. In fact, evidentiary reference Sangeetha et al. (<https://pubmed.ncbi.nlm.nih.gov/15221221/>) shows that Aspergillus oryzae is a known fructosyltransferase for the production of fructo-oligosaccharides (see abstract). Also, Arthrobacter subterraneus does not appear to be identified as a fructosyltransferase within the Kumar reference. In fact, Kumar appears to generically identify “Arthrobacter Spa”. Therefore, to show superior results compared to A. oryzae and A. subterraneus is not sufficient to rise to the level of unexpected results since it is not clear if A. oryzae and A. subterraneus are known fructosyltransferase. Second, the fact that both Choe and Kumar identifies the Arthrobacter genus as a whole would suggest at least some level of success among certain species of Arthrobacter. Therefore, selecting specific species within the Arthrobacter genus would have been routinely determined to optimize the conversion rate of the rebaudioside A. For these reasons, it is maintained that since Choe discloses the Arthrobacter genus as a suitable fructosyltransferase, and Izumori discloses the globiformis species being well known in the industry, it would have been obvious to one of ordinary skill in the art to select the globiformis species in view of the Izumori reference for its safe practice within the food industry.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH H NGUYEN whose telephone number is (571)270-0346. The examiner can normally be reached 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
Prosecution Insights