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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 13, 2025 has been entered.
Election/Restrictions
As previously discussed, Applicant elected without traverse the species of claim 7 (30.4% krill powder in the protein component), claim 8 (55.57% whey protein in the protein component) and the combination of all the items listed in claim 13 as the additional components in the composition. Applicant did not indicate whether his election was with or without traverse. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 2 and 3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions (non-elected species), there being no allowable generic or linking claim. Claims 1 and 6 have been amended. No claims have been canceled or added. Claims 1 and 4-20 are examined on the merits herewith.
Claim Objections
In view of Applicants’ amendments to the claims, the objections in the previous Office action are withdrawn.
Claim Rejections - 35 USC § 112, (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1and 4-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims are indefinite, because they are ambiguous and confusing, with respect to the newly added term/limitation of a “non-calorie sweetener.” Artificial sweeteners and Stevia sweeteners are low-calorie sweeteners, because, as shown in Applicants’ Response on pp. 19 and 30, they have 50 – 300,000 times the sweetness of sucrose (table sugar). Thus, relative to sucrose, 1/50 – 1/300,000 of the amount may be used to yield the same sweetness in a food or beverage. As a result, the amount of calories would be cut to 1/50 – 1/300,000 of the amount of calories in foods and beverages sweetened with sucrose. These foods and beverages would be lower in calories, and the amount of calories due to the artificial or Stevia sweetener would be very low or negligible. Nevertheless, these sweeteners are not non-calorie sweeteners. What do Applicants mean by non-calorie sweetener? What is Applicants’ definition of a non-calorie sweetener? Clarification and appropriate correction are required.
Claim Rejections - 35 USC § 112, (a), written description, new matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 4-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, claims 1 and 6 have been amended to recite new matter, claim limitations that are not present in the as-filed specification. Claims 1 and 6 recite that the krill-based protein supplement composition comprises a flavoring composition that comprises at least one non-calorie sweetener (written as at least one quantity of non-calorie sweetener- the claims appear to be a literal or machine translation from a foreign language document, perhaps a document written in Hindi or Chinese, as the grammar is off and does not quite make sense). The term “non-calorie sweetener” is not present in the as-filed specification. As previously discussed, the term “sugar substitute” is a broad genus of compounds and compositions/ preparations, including, i.a., saccharin, cyclamates, aspartame, acesulfame, neotame, advantame and extracts from the plant Stevia rebaudiana that contain one or more steviosides and/or rebaudiosides (naturally occurring) and/or glucosylated steviosides and/or glucosylated rebaudiosides (synthetic low-cal sweeteners based on the naturally occurring molecules and which have reduced bitterness and/or after-taste). “Non-calorie sweetener” may be Applicants’ new synonym for sugar substitute. Applicants should explain and clarify if the terms sugar substitute and non-calorie sweetener are the same thing or two different things. If they are different, what exactly are the differences between the two? Claim 1 now recites that one non-calorie sweetener is present; claim 6 now recites that this flavoring composition, or non-calorie sweetener, comprises two stevia sweeteners (i.e., two S. rebaudiana compounds or extracts). The as-filed specification discloses on pp. 6-7 that the krill-based protein composition can comprise stevia and sweetly stevia, considered to mean in standard/plain English a first stevia compound or extract and a second stevia compound or extract. All of the stevia compounds and extracts are low-cal sweeteners, yet some are sweeter than others and taste better than others. The claims should be amended to delete the new matter.
THIS IS A NEW MATTER REJECTION. New matter is prohibited, and Applicants are required to cancel new matter from the claims (see MPEP 608.04).
To expedite greatly prosecution for Applicant, which Applicant may or may not desire, claims 1 and 6 may be amended as follows.
1. (currently amended) A composition that is a krill-based protein supplement comprising:
(a) a quantity of krill powder;
(b) a quantity of whey protein; and
(c) a sweetener comprising a quantity of a first stevia sweetener,
6. (currently amended) The composition of claim 1, wherein the sweetener
In reply to Applicants’ arguments, again, the term/limitation “non-calorie sweetener” is not supported by the as-filed specification. A sentence that the invention may be modified and varied in many ways is omnibus and not evocative of the instant changes. Stevia sweeteners are well known, as are the many natural and artificial sweeteners listed on pp. 12-15 and 18-20 of the Response. Yet, the problem here is that the instant claims recite a genus of sweeteners, non-calorie sweeteners. Even if one of skill in the art considered non-calorie sweeteners to mean low-calorie sweeteners, the specification discloses one species in this genus. The specification discloses what Applicants contemplated and made at the time that the invention was filed. That one of skill in the art could have replaced the Stevia sweetener(s) (e.g., the commercially available products on p. 43 of the Response) with a different low-cal sweetener does not overcome the new matter problem. As for claim scope, Applicants’ desire for broader claim scope is understandable. Patent holders do not want others to be able to design around their claims. Nevertheless, the desire for broader claims does not overcome the new matter problem. Applicants’ arguments are not persuasive.
The claims are free of the prior art. See p. 5 of the Office action of April 11, 2025.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSANNE KOSSON whose telephone number is (571)272-2923. The examiner can normally be reached M, T, Th- 9-6; W- 9-2.
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/ROSANNE KOSSON/Primary Examiner, Art Unit 1759 2025-10-22