DETAILED ACTION
Status of the Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 10/17/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: the 35 U.S.C. 102(a)(1) rejections of claims 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27 over Lancaster et al. have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27
Withdrawn claims: None
Previously canceled claims: 3, 4, 8, 10, 13-18, 20, 22, 24, 25, and 28-32
Newly canceled claims: None
Amended claims: 1
New claims: None
Claims currently under consideration: 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27
Currently rejected claims: 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/17/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 requires the sweetener compound of Formula (I) to comprise “at most 0.1%”, but parent claim 1 limits the concentration to 0.6-15% by weight of the composition. Claim 9 thus fails to include all the limitations of the claim from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Lancaster et al. (WO 2015/171944 A1).
Regarding claim 1, Lancaster et al. discloses a sweetener composition ([0013]-[0014]) comprising a compound of Formula (I) (p. 8, l. 29 – p. 9, l. 19) and a sweet taste improving composition that may be allulose ([0073], referring to the incorporation therein of U.S. 2007/0128311 to Prakash et al. that discloses psicose, a.k.a. allulose, as a sweet taste improving composition [0081], [0083]). MPEP 2163.07(b) (“Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as filed.”).
Lancaster et al. does not explicitly disclose the composition as comprising the claimed concentrations of the compound of Formula (I) and allulose.
However, Lancaster et al. does disclose that the composition may be prepared as a condiment/seasoning that comprises the compound of the invention but no bitter tastant, wherein the condiment may be used by adding it to a food product that contains a bitter tastant ([0126]). Lancaster et al. further discloses that an edible composition may be prepared by combining the compound of Formula (I) with a carrier ([0143]). Prakash et al. discloses a tabletop composition that may comprise a sweetener and a bulking agent ([0896]), where the bulking agent may also serve as the sweet taste improving composition ([0897]). Prakash et al. also discloses several carbohydrates that may serve as bulking agents ([0897]). Taken together, the noted disclosures are considered to effectively disclose a condiment composition that would consist only of the compound of Formula (I) and a carrier, that may be a carbohydrate. Psicose is considered to fall within the scope of suitable carrier carbohydrates. Given the characterization of the secondary ingredient as a “bulking agent” or a “carrier”, it is presumed as constituting at least 50% by weight of the mixed composition, such that a mixture would comprise 50-100% allulose and greater than 0 to 50% of the compound of Formula (I). As such, the claimed concentrations of from 0.6-15% by weight of the compound of Formula (I) and from 85-99% allulose would be obvious to a skilled practitioner. Further, MPEP 2144.05 II A states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” No evidence is apparent that the claimed concentrations should be deemed critical over the whole scope of claim 1, which further supports the determination that the claimed concentration ranges would be obvious to a skilled practitioner.
As for claim 2, Lancaster et al. discloses embodiments that equate to the claimed embodiments (p. 8, l. 29 – p. 9, l. 19; [0012]).
As for claim 5, Lancaster et al. discloses an embodiment that equates to the claimed compounds, e.g., 2-amino-3-(5-methyl-1H-indol-3-yl)propanoic acid (p. 8, l. 29 – p. 9, l. 19; [0012]).
As for claim 6, Lancaster et al. discloses the compound of Formula (I) may be N-methyl-L-tryptophan, or an enantiomer thereof ([0012]), which would encompass the D-isomer.
As for claim 7, Lancaster et al. discloses an embodiment that equates to the claimed compounds (p. 8, l. 29 – p. 9, l. 19; [0012]).
As for claim 9, Lancaster et al. discloses the composition, wherein the sweetener compound of Formula (I) comprises at most 0.1% by weight (1000 ppm) of the composition (specifically, about 0.001 ppm and 1000 ppm) ([0100]).
As for claims 11 and 12, Lancaster et al. discloses an additional sweetener that is a zero calorie, high-potency sweetener comprising a steviol glycoside (claim 11) that is rebaudioside A (claim 12) (p. 11, l. 4 – l. 9).
As for claim 19, Lancaster et al. discloses a consumable food or beverage comprising from about 5-4000 ppm of the sweetener composition, an additive, and a food/beverage composition ([0128]-[0132], [0100]).
As for claim 21, Lancaster et al. discloses the consumable product is a beverage product ([0132]).
As for claim 23, Lancaster et al. discloses the consumable product is a food or beverage having an equivalent sweetness to sucrose solutions having concentrations between 10,000-400,000 ppm ([0100], “between about 0.001 ppm and 1000 ppm”, where the present specification indicates at [0010] that between about 5-4,000 ppm achieves such a sweetness).
As for claim 26, Lancaster et al. discloses the product as being food ([0128]).
As for claim 27, Lancaster et al. discloses the product as being a beverage product ([0132]).
Response to Arguments
Claim Rejections - 35 U.S.C. § 102(a)(1) of claims 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27 over Lancaster et al.: Applicant’s arguments have been fully considered and are persuasive to the extent that the claims as presently amended are not anticipated by Lancaster et al. However, upon further consideration, new grounds of rejection are made under 35 U.S.C. § 103 in view of Lancaster et al.
Specifically, Applicant argued that Lancaster et al. discloses adding the compound of Formula (I) to a high potency sweetener to modulate its bitter flavor but notes that allulose is not a high potency sweetener (Applicant’s Remarks, p. 6, ¶6). Applicant also asserted that Prakash et al. describes psicose as being only for modifying the taste of a high potency sweetener but not modifying the taste per se of allulose/psicose. Id. Applicant concluded that Lancaster et al. and the incorporated disclosure of Prakash et al. could only be read as disclosing psicose and the compound of Formula (I) to modify the taste of a high potency sweetener. Id. Applicant alleged that “the combined disclosure of Prakash and Lancaster does not disclose a composition comprising allulose in an amount from 85% to 99%”. Id.
As noted in the claim rejection, though. Lancaster et al. discloses that the composition may be prepared as a condiment/seasoning that comprises the compound of the invention but no bitter tastant, wherein the condiment may be used by adding it to a food product that contains a bitter tastant ([0126]). Applicant’s arguments that the combination of the references is limited to compositions that contain a high potency sweetener contradicts the disclosure of Lancaster et al. and are consequently unpersuasive. Further, the rationale detailed in the rejection of claim 1 showed that a composition comprising the claimed concentrations of allulose and the compound of Formula (I) would be obvious. Notably, claim 1 does not require the sweetener composition to consist only of the compound of Formula (I) and allulose. An embodiment comprising amounts of each component that are simultaneously at the minimum concentrations of the claimed ranges falls within the scope of the claim (i.e., 0.6% of the compound of Formula (I) and 85% of allulose), such that 14.4% of the composition may still be any other component, such as a high potency sweetener.
Conclusion
Claims 1, 2, 5-7, 9, 11, 12, 19, 21, 23, 26, and 27 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793