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 .
Status of the Claim
Claims 7-12 and 14 are pending and under examination. Any objections or rejections not repeated below have been withdrawn.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 lines 2-3 recite, “and about about 10% by weight.” The word “about” is repeated. The repeated word should be removed so the claim reads as follows, “and about 10% by weight.” Appropriate correction is required.
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 states the amount (desired weight ratio of sweetener to sweet taste improving composition(s); [0867]) of taste modifying composition (sweet taste improving composition selected from protein hydrolysate, specifically soluble rice protein; claim 10, [0818]) in the overall flavor composition (functional sweetener composition) will depend on the particular sweeteners also used in the composition and the sweetness and other characteristics desired in the final product [0867]. Prakash teaches the rice protein hydrolysate (sweet taste improving composition(s)) is in the flavor composition at a ratio of sweet taste improving composition to the natural and/or synthetic high-potency sweetener of 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]. Therefore, since the sweet taste improving composition, which is viewed as the rice protein hydrolysate, may be at a 1:1 ratio with the sweetener, the rice protein hydrolysate may be in the composition at an amount from about 1% (w/w) to about 10% (w/w). .
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 discloses the flavor composition according to claim 7, as discussed above. 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 discloses the flavor composition according to claim 7, as discussed above. Prakash teaches the composition is in the form of a solution (liquid) or powder [0870], [0874].
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive.
Applicant argues, on pg. 4 of their remarks that Prakash discloses a sweet taste improving protein hydrolysate in an amount of 0.02-5% but the amended claims recite 10% rice protein hydrolysate, which is wholly outside the range disclosed in Prakash. However, the Office disagrees for the following reasons.
While Prakash does state that generally one embodiment of their invention is a sweet taste improving protein hydrolysate in an amount from about 200 to about 50,000 ppm or 0.02% to 5% in the flavor composition [0786], Prakash does not limit the amount of protein hydrolysate from rice protein to only this range in this specific embodiment. As discussed in the rejection above, Prakash states the amount (desired weight ratio of sweetener to sweet taste improving composition(s); [0867]) of taste modifying composition (sweet taste improving composition selected from protein hydrolysate, specifically soluble rice protein; claim 10, [0818]) in the overall flavor composition (functional sweetener composition) will depend on the particular sweeteners also used in the composition and the sweetness and other characteristics desired in the final product [0867].
Prakash teaches the rice protein hydrolysate (sweet taste improving composition(s)) is in the flavor composition at a ratio of sweet taste improving composition to the natural and/or synthetic high-potency sweetener of 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]. Therefore, since the sweet taste improving composition, which is viewed as the rice protein hydrolysate, may be at a 1:1 ratio with the sweetener, the rice protein hydrolysate may be in the composition at an amount from about 1% (w/w) to about 10% (w/w). The claimed range and Prakash’s range for rice protein hydrolysate touch and therefore, the claimed range is obvious per MPEP 2144.05(I).
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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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
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