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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/29/2025 has been entered.
Status of the Claim
Claims 7-12 and 14 are pending and under examination; Claims 1-6, 13 and 15-19 are cancelled. Any objections or rejections not repeated below have been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 7-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. US 20070116841.
Regarding claim 7, Prakash teaches a flavor composition (functional sweetener composition; Abstract, Claim 1, [0010]) comprising a characterizing flavor (sweet taste improving composition including a flavorant; Claims 10, 12 and 13, [0079], [0816]). Prakash teaches the characterizing flavor (sweet taste improving composition including a flavorant, which may be but is not limited to vanilla extract, mango extract and other flavors; [0816]) is in the flavor composition at a ratio of sweet taste improving composition to the natural and/or synthetic high-potency sweetener 10,000:1 and 1:10,000 and may be about a 1:1 ratio depending on the sweetener selected [0867]. The natural and/or synthetic high-potency sweetener may be in an amount from about 1% (w/w) to about 10% (w/w) in the composition [0875] and since the sweet taste improving composition, which is viewed as the flavorant, may be at a 1:1 ratio with the sweetener, the flavorant may be in the composition at an amount from about 1% (w/w) to about 10% (w/w). This overlaps the claimed range from about 0.01% to about 5% by weight of a characterizing flavour. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Prakash discloses the flavor composition also comprises a taste modifying composition comprising a rice protein hydrolysate (at least one sweet taste improving protein hydrolysate additive chosen from soluble rice protein; Claim 10, [0818]). Prakash teaches the taste modifying composition (sweet taste improving protein hydrolysate from soluble rice protein) is present in the composition from about 200 ppm to 50,000 ppm, which is 0.02% to 5% [0786]. This is within the claimed range of 0.01% to about 10% by weight of the taste modifying composition.
Regarding the recitation within the claim 7 of “wherein the taste modifying composition is formed by a) subjecting a rice protein to enzymatic hydrolysis to obtain a reaction mixture; b) separating the reaction mixture to obtain a supernatant; and c) recovering the supernatant of the reaction mixture, wherein the enzymatic hydrolysis uses one or more proteolytic enzymes, the enzymatic hydrolysis is performed at a temperature ranging from 35°C to 80°C, the enzymatic hydrolysis is performed at a pH ranging from 7.5 to 8.5, and the enzymatic hydrolysis takes place for a period of time ranging from 1 hour to 48 hours” does not limit the claim, but is merely directed towards process steps to produce the rice protein hydrolysate instead of the product. See MPEP 2113.I. Therefore, if the product in the product-by-process recitation in claim 7, is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Regarding claims 8, 9, 10, 11 and 12 Prakash teaches the flavor composition further comprises one or more sweeteners (at least one natural and/or synthetic high-potency sweetener, a sweet taste improving carbohydrate and polyols; Claim 1, Claim 8, Claims 28-29, Claim 48, Claims 50-55, [0043-0044]), as recited in claim 8.
Prakash discloses wherein the one or more sweeteners are selected from sucrose, glucose and high fructose corn syrup (a carbohydrate as a sweet taste improving composition; Claim 29, Claims 50-53), as recited in claim 9. Prakash further discloses steviol glycosides, as recited in claim 9; where the steviol glycosides are selected from rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, dulcoside A, dulcoside B, rubusoside (natural and/or synthetic high-potency sweetener include rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, dulcoside A, dulcoside B, rubusoside; Claim 1, Claim 8, Claim 48, [0044]), as recited in Claim 10.
Prakash teaches wherein the one or more sweeteners is selected from mogrosides, as recited in claim 9; where the mogrosides are mogroside IV and mogroside V (Claim 8, Claim 48, [0044]), as recited in claim 11.
Prakash teaches wherein the one or more sweeteners is selected from sugar alcohols (a sweet taste improving polyols), as recited in claim 9; where the sugar alcohols are selected from sorbitol, xylitol, inositol, mannitol and erythritol (Claim 12, Claims 15-17, Claims 55-57 [0089]), as recited in claim 12.
Further regarding claims 10-12, it is noted that the claims are only further limiting the particular steviol glycosides, mogrosides and sugar alcohols and are not positively reciting that the composition comprises the above steviol glycosides, mogrosides and sugar alcohols.
Regarding claim 14, Prakash teaches the composition is in the form of a solution (liquid) or powder [0870], [0874].
Response to Arguments
Applicant's arguments filed 04/29/2025 have been fully considered but they are not persuasive.
Applicant’s arguments, on pg. 5 of their remarks, with respect to claim 7 and the characterizing flavour have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument.
Applicant argues, on pgs. 5-6 of their remarks, that the soluble rice protein of Prakash is not disclosed as being hydrolyzed. Applicant states that examples G36 and G37 used “soluble rice protein,” which demonstrates that Prakash directs the skilled person to use soluble rice protein, not rice protein hydrolysate. Applicant further argues that claim 7 was amended to recite specific process steps for forming the rice protein hydrolysate, which are not disclosed or suggested by Prakash. However, the Office disagrees for the following reasons.
In paragraph [0818] of Prakash it states, “In another embodiment, a functional sweetener composition is provided comprising… at least one sweet taste improving protein hydrolysate additive chosen from… soluble rice protein.” Prakash clearly states that the composition has a sweet taste improving protein hydrolysate and then names soluble rice protein as one of the options for the protein hydrolysate. Therefore, the soluble protein hydrolysate is considered a rice protein hydrolysate.
Applicant argues that Prakash does not disclose the specific process steps for forming the rice protein hydrolysate. As noted in the rejection above, this recitation does not limit the claim, but is merely directed towards process steps to produce the rice protein hydrolysate instead of the product. See MPEP 2113.I. Therefore, if the product in the product-by-process recitation in claim 7, is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Additionally, Prakash does not limit how the rice protein hydrolysate is produced, so it would have been obvious to produce the rice protein hydrolysate by any method know or made obvious to produce rice protein hydrolysate.
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791