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 .
This office action is in regard to the application filed on March 25, 2022 and in response to Applicants Amendments and Arguments/Remarks filed on April 2, 2026. The earliest effective filing date of the application is September 27, 2019.
Status of Application
The amendment filed April 2, 2026 has been entered. Claims 1, 3, 6, 7, and 9-16 are currently pending in the application. Claims 1 and 6 have been amended; claims 2, 4, 5, 8, and 17 have been canceled. Claims 1, 3, 6, 7, and 9-16 are hereby examined on the merits.
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 1, 3, 6, 7, and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US PG Pub. 2018/0263269; listed on IDS dated April 2, 2026) in view of Prakash et al. (US PG Pub. 2015/0018432; cited on PTO-892 dated August 15, 2025), herein after referred to as Prakash ‘269 and Prakash ‘432, respectively.
Regarding claim 1, Prakash ‘269 teaches a beverage comprising:
(i) a steviol glycoside mixture [0016] comprising rebaudioside M ([0011]; [0373]);
(ii) at least one synthetic sweetener [0377] that is sucralose ([0061]; [0064]); and
(iii) erythritol [0394] in a concentration of 0.4-0.7 wt.% ([0417], Table 2);
wherein the concentration of rebaudioside M is about 20-400 ppm [0373], and
the beverage is a carbonated beverage [0359].
Prakash ‘269 teaches that the steviol glycoside mixture comprises 20-400 ppm each rebaudiosides D and M and 10-300 ppm each rebaudiosides A, N, O, and E [0373]. Thus, the steviol glycoside mixture comprises 1.2-87 wt.% rebaudioside M (minimum and maximum calculated from taking the lower limit of rebaudioside M and the upper limit of each other rebaudioside and from taking the upper limit of rebaudioside M and the lower limit of each other rebaudioside, respectively).
Therefore, the range of erythritol taught by Prakash ‘269 lies within the claimed range of 0.1-2 wt.% and the ranges of the amount of rebaudioside M in the steviol glycoside mixture and the concentration of rebaudioside M taught by Prakash ‘269 overlaps with the claimed respective ranges of at least about 80 wt.% rebaudioside M and from about 100 ppm to about 250 ppm of rebaudioside M. Where the claimed ranges 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). See MPEP 2144.05.I.
Prakash ‘269 is silent as to the concentration of the synthetic sweetener and is thereby also silent as to the weight ratio of the steviol glycoside mixture to the synthetic sweetener. Prakash ‘269 does teach that the amount of the steviol glycoside mixture in the beverage is 50-900 ppm [0365].
Prakash ‘432, in the same field of invention, teaches a beverage comprising a steviol glycoside mixture comprising rebaudioside X (i.e., rebaudioside M) and a sweetener (Abstract; [0035]) that is a synthetic sweetener that is sucralose [0041], wherein the synthetic sweetener is present in the beverage in a concentration of 0.3-3,500 ppm [0076]. This range overlaps with the claimed range of 50-250 ppm. Where the claimed ranges 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).
Prakash ‘432 teaches concentrations of synthetic sweeteners for beverages comprising steviol glycoside mixtures and additional sweeteners where Prakash ‘269 is silent, thereby offering a guideline as to suitable amounts of synthetic sweeteners. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the beverage of Prakash ‘269 to have the synthetic sweetener concentration of Prakash ‘432, thereby arriving at the claimed invention, with the reasonable expectation that the concentration of synthetic sweetener is suitable for use in the claimed beverage composition.
Given that modified Prakash ‘269 teaches a steviol glycoside mixture concentration of 50-900 ppm (0.005-0.09 wt.%) (Prakash ‘269: [0365]) and a synthetic sweetener concentration of 0.3-3,500 ppm (3x10-5-0.35 wt.%) (Prakash ‘432: [0076]), the weight ratio of the steviol glycoside mixture comprising rebaudioside M to the at least one synthetic sweetener is 0.014-3,000, which encompasses the claimed range of 0.5:1-3:1 (0.5-3). Where the claimed ranges 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).
Regarding claim 3, Prakash ‘269 is silent as to that the steviol glycoside mixture comprising rebaudioside M comprises at least about 95 wt.% rebaudioside M.
However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Concentration of a component in a composition is a known variable that affects various properties of a resulting product, and thus, concentration is a result effective variable. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range through no more than routine optimization, as varying the concentration of rebaudioside M in a steviol glycoside mixture would achieve recognized results. Moreover, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05.II. Thus, the parameters of the amounts of rebaudioside M in the steviol glycoside mixture taught by Prakash ‘269 renders obvious the instant claim limitations.
Regarding claim 6, modified Prakash ‘269 teaches that the synthetic sweetener is present in a concentration of 0.3-3,500 ppm (Prakash ‘432: [0076]), which overlaps with the claimed range of 50-250 ppm. Where the claimed ranges 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).
Regarding claim 7, Prakash ‘269 teaches that the beverage further comprises allulose [0378].
Claims 9 and 11 are met through the rejections of claims 1 and 7 as set forth above with regard to erythritol and allulose. Claim 1 requires the selection of phloretin or erythritol; claim 7 requires the selection of allulose, cellobiose, or hesperetin dihydrochalcone-4’-O-β-D-glucoside; by selecting erythritol to meet claim 1 and by selecting allulose to meet claim 7, claims 9, and 11 are also considered to be met.
Regarding claim 10, Prakash ‘269 teaches that the amount of allulose in the beverage is about 0.5-2 wt.% [0378], which lies within the claimed range of about 0.1-2 wt.%.
Regarding claim 12, Prakash ‘269 teaches that the beverage can be a mid-calorie, low-calorie, or zero-calorie beverage [0016].
Regarding claim 13, Prakash ‘269 teaches that the beverage is a zero-calorie beverage [0391].
Regarding claims 14 and 15, Prakash ‘269 teaches that the beverage is a cola [0392].
Claim 16 is met through the rejection of claim 1 as set forth above with regard to a carbonated beverage. Claim 1 requires the selection of a carbonated beverage or a plant protein-containing beverage; by selecting a carbonated beverage to meet claims 1, 14, and 15, claim 16 is also considered to be met.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 6, 7, and 9-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The new prior art rejection now uses a new prior art reference, Prakash ‘269, as the primary reference to reject the claims, using Prakash ‘432 (which was the primary reference in the previous office action/prior art rejection) as the secondary reference to modify Prakash ‘269. Although applicant’s arguments are directed towards Prakash ‘269, the new prior art rejection uses Prakash ‘269 to teach only concentration of a synthetic sweetener in a beverage, which applicant does not argue or challenge.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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