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 .
The amendment filed October 5, 2025 is acknowledged. Claims 32, 35, 39, 45-47, 51, 52, and 54-65 are pending in the application. Claims 1-31, 33, 34, 36-38, 40-44, 48-50, and 53 have been cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 5, 2025 has been entered.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 32, 35, 39, 45-47, 51, 52, and 54-65 are rejected under 35 U.S.C. 103 as being unpatentable over Miles et al. US 20080213452 (hereinafter “Miles”) in view of Mitchell et al. US 4873112 (hereinafter “Mitchell”).
With respect to claim 32, Miles teaches a method of preparing a sweetener product (paragraphs [0012], [0061], and [0062]).
Regarding the recitation “of making a sweetener composition” in the preamble of claim 32, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of the method comprising: (a) adding silica to a syrup comprising a solvent and one or more sweetener carbohydrates and/or sweetener polyols; and (b) dispersing the silica, whereby the method forms the sweetener composition, wherein the sweetener composition comprises one or more sweetener carbohydrates and/or sweetener polyols and 0.01-0.3% silica weight/weight relative to a sum of total sweetener carbohydrate and sweetener polyol in claim 32, Miles teaches preparing a blend of polyol and/or cane sugar (sucrose) to form the sweetener composition. Other carbohydrates can optionally be combined if desired. Syrup(s), such as cane syrup, maple syrup, or agave syrup, may be combined with the composition. The sweetener composition may also include silica. The smallest amount ingredient is mixed with the next larger amount until fully blended. This is continued until all ingredients are fully dispersed (paragraphs [0012], [0025], [0035], [0036], [0048], [0058], and [0062]; & P6, claim 16).
However, Miles does not expressly disclose the claimed quantity of silica.
Mitchell teaches a process of manufacturing a sweetener composition. Silicon dioxide (silica) may be added at a level less than 2% weight/weight of the sweetener composition (C1, L6-7; and C12, L49-52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range of silica, from the range disclosed in Mitchell with the expectation of successfully preparing a functional sweetener product. One of ordinary skill in the art would have been motivated to do so because Miles and Mitchell similarly teach the preparation of sweetener compositions comprising silica and Miles teaches including additional ingredients, such as silica, which may enhance flavor, stability, and processability of the sweetener composition (paragraphs [0048] and [0058]). There would have been a reasonable expectation of success. 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.
Regarding the recitation of wherein the sweetener composition has enhanced sweetness compared to a control composition; and the control composition has the same contents by identity and quantity as the sweetener composition but without the silica in claim 32, it is noted that this recitation relates to the resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at this claimed feature since Miles teaches a method that is substantially similar to the presently claimed method as addressed above and Miles teaches including additional ingredients, such as silica, which may enhance flavor, stability, and processability of the sweetener composition (paragraphs [0048] and [0058]).
With respect to claim 35, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition does not comprise an artificial sweetener or a natural sugar substitute in claim 35, modified Miles teaches this limitation since Miles teaches non-nutritive sweeteners, such as acesulfame potassium, alitame, aspartame, cyclamate, glycyrrhizin, neotame, saccharin, stevioside, and sucralose, are optional (paragraphs [0035], [0037], [0048], and [0058]).
With respect to claim 39, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the one or more sweetener carbohydrates comprise sucrose in claim 39, modified Miles teaches this limitation since Miles teaches the sweetener composition comprises cane sugar (sucrose) (paragraph [0025]; and P6, claim 16).
With respect to claim 45, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition is in the form of a homogenized syrup in claim 45, modified Miles teaches this limitation since Miles teaches the sweetener composition comprises syrup(s) and the blending of ingredients is continued until all ingredients are fully dispersed (paragraphs [0035], [0036], [0048], [0058], and [0062]).
With respect to claim 46, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of further comprising drying the sweetener composition, wherein the dried sweetener composition is in the form of particles in claim 46, modified Miles teaches this limitation since Miles teaches the sweetener composition may be subjected to fluidized-bed drying (paragraph [0063]).
With respect to claim 47, modified Miles is relied upon for the teaching of the method of claim 46 as addressed above.
Regarding the recitation of wherein at least 50 percent of the particles are between about 1 micron and about 1,000 microns in diameter in claim 47, Miles does not expressly disclose the particle size of the sweetener.
Mitchell teaches a process of manufacturing a sweetener composition. Silicon dioxide (silica) may be added to the sweetener composition. The sweetener composition can be dried by standard drying techniques. The dried product results in particles of mesh sizes varying from 4 to 250 mesh (4760 to 58 µm), such as between 20 and 60 mesh (841 to 250 µm) or 200 mesh (74 µm). The particles may also be classified to yield products are large and small mesh sizes and milled to the appropriate size (C1, L6-7; C11, L8-14; C12, L14-17, 22, and 49-52; C16, L50; and C18, L35).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed ranges, including the instantly claimed particle size range, from the ranges disclosed in Mitchell with the expectation of successfully preparing a functional sweetener product. One of ordinary skill in the art would have been motivated to do so because Miles and Mitchell similarly teach the preparation of sweetener compositions comprising silica and it is understood that the scaling up or down of an element which merely requires a change is size is generally considered as being within the ordinary skill in the art. There would have been a reasonable expectation of success. 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. Mere scaling up or down of a prior art process capable of being scaled up or down would not establish patentability in a claim to an old process so scaled. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
With respect to claim 51, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.”). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s statement in the specification that “silicon contents in the coating metal should not exceed about 0.5% by weight” along with a discussion of the deleterious effects of silicon provided basis to conclude that silicon in excess of 0.5% by weight would materially alter the basic and novel properties of the invention. Thus, “consisting essentially of” as recited in the preamble was interpreted to permit no more than 0.5% by weight of silicon in the aluminum coating.); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) (“Although consisting essentially of’ is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps. . . [rendering] the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded the claim must be read in light of the specification. . . . [I]t is an applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by consisting essentially of’ language.”).
From Applicant’s disclosure, it appears that the addition of artificial sweetener would materially change the characteristics of the claimed invention since artificial sweeteners have an after taste, are absent of energy provided by sugars, and have other health concerns (paragraph [0002]). Therefore, artificial sweeteners are excluded from the presently claimed invention. The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
Regarding the recitation of wherein the sweetener composition consists essentially of the silica and the sweetener carbohydrate in claim 51, modified Miles teaches this limitation since Miles teaches cane sugar (sucrose) can be used to form the sweetener composition. Other carbohydrates can optionally be combined if desired. The sweetener composition may also include silica (paragraphs [0012], [0025], [0035], [0036], [0048], and [0058] and P6, claim 16).
With respect to claim 52, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition comprises dairy product, fruit juice, fruit juice concentrate, nectar, or vegetable juice in claim 52, modified Miles teaches this limitation since Miles teaches additional ingredients such as syrups, including maple syrup and agave syrup, and honey may be included in the sweetener composition (paragraphs [0035], [0036], [0048], and [0058]).
With respect to claims 54 and 55, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition contains at most 0.25% silica weight/weight relative to the sum of total sweetener carbohydrate and sweetener polyol in claim 54 and wherein the sweetener composition contains at most 0.2% silica weight/weight relative to the sum of total sweetener carbohydrate and sweetener polyol in claim 55, Miles as modified by Mitchell teaches this limitation since Mitchell is relied upon for the teaching of the silica quantity as addressed above in claim 32, and Mitchell teaches silicon dioxide (silica) may be added at a level less than 2% weight/weight of the sweetener composition (C12, L49-52). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claims 56 and 57, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein, on a dry basis, the silica and the one or more sweetener carbohydrates and/or sweetener polyols make up at least 95% of the sweetener composition in claim 56 and wherein, on a dry basis, the silica and the one or more sweetener carbohydrates and/or sweetener polyols make up at least 99% of the sweetener composition in claim 57, modified Miles teaches this limitation since Miles teaches preparing a blend of polyol and/or cane sugar (sucrose) to form the sweetener composition. Other carbohydrates can optionally be combined if desired. The sweetener composition may also include silica (paragraphs [0012], [0025], [0035], [0036], [0048], and [0058] and P6, claim 16).
With respect to claim 58, modified Miles is relied upon for the teaching of the method of claim 56 as addressed above.
Regarding the recitation of wherein the one or more sweetener carbohydrates and/or sweetener polyols comprise sucrose in claim 58, modified Miles teaches this limitation since Miles teaches the sweetener composition comprises cane sugar (sucrose) (paragraph [0025]; and P6, claim 16).
With respect to claim 59, modified Miles is relied upon for the teaching of the method of claim 46 as addressed above.
Regarding the recitation of wherein the one or more sweetener carbohydrates and/or sweetener polyols is sucrose in claim 59, modified Miles teaches this limitation since Miles teaches the sweetener composition comprises cane sugar (sucrose) (paragraph [0025]; and P6, claim 16).
With respect to claim 60, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition does not comprise an artificial sweetener, the method further comprising adding the sweetener composition to a food to produce a food product in claim 60, modified Miles teaches this limitation since Miles teaches non-nutritive sweeteners, such as acesulfame potassium, alitame, aspartame, cyclamate, neotame, saccharin, and sucralose, are optional and the prepared sweetener composition may be used in food products (paragraphs [0012], [0035], [0037], [0048], and [0058]).
With respect to claim 61, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of wherein the sweetener composition does not comprise an artificial sweetener, the method further comprising adding the sweetener composition to a beverage to produce a beverage product in claim 61, modified Miles teaches this limitation since Miles teaches non-nutritive sweeteners, such as acesulfame potassium, alitame, aspartame, cyclamate, neotame, saccharin, and sucralose, are optional and the prepared sweetener composition may be used in beverages (paragraphs [0012], [0035], [0037], [0048], and [0058]).
With respect to claim 62, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of further comprising adding the sweetener composition to a beverage to produce a beverage product in claim 62, modified Miles teaches this limitation since Miles teaches the prepared sweetener composition may be used in beverages (paragraph [0012]).
With respect to claim 63, modified Miles is relied upon for the teaching of the method of claim 32 as addressed above.
Regarding the recitation of further comprising adding the sweetener composition to a food to produce a food product in claim 63, modified Miles teaches this limitation since Miles teaches the prepared sweetener composition may be used in food products (paragraph [0012]).
With respect to claim 64, modified Miles is relied upon for the teaching of the method of claim 55 as addressed above.
Regarding the recitation of further comprising adding the sweetener composition to a food to produce a food product in claim 64, modified Miles teaches this limitation since Miles teaches the prepared sweetener composition may be used in food products (paragraph [0012]).
With respect to claim 65, modified Miles is relied upon for the teaching of the method of claim 55 as addressed above.
Regarding the recitation of wherein the solvent is water in claim 65, modified Miles teaches this limitation since Miles teaches syrup(s), such as cane syrup, maple syrup, or agave syrup, and honey may be used to prepare the sweetener composition, and it is well understood in the art that these syrups comprise water (paragraphs [0035], [0036], [0048], and [0058]) .
Response to Arguments
Applicant’s remarks filed October 5, 2025 are acknowledged.
Due to the amendments to the claims, the 35 USC 103 rejection of claims 32, 39, 40, 44-48, and 51 over Xiao, claims 32, 35, 39, 42, 44, 45, and 48-51 over Magid, claims 40 and 52 over Magid in view of Bridges, and claim 53 over Magid in view of Urban in the previous Office Action have been withdrawn. Upon further searching and consideration, a new ground(s) of rejection has been made. As addressed above, Miles in view of Mitchell teaches a method of making a sweetener that is substantially similar to that as presently claimed. Applicant’s arguments with respect to Xiao and Magid (P5-P11) have been considered but are moot as these references are no longer being used in the current rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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, Emily Le can be reached at 571-272-0903. 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.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793