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 a Request for Continued Examination filed on March 24, 2025. The earliest effective filing date of the application is September 27, 2019.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 24, 2025 has been entered.
Status of Application
The amendment filed March 24, 2025 has been entered. Claims 1, 3, 6, 7, and 9-16 are currently pending in the application. Claims 1, 7, and 10 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.
The previous objection to claim 1 has been withdrawn in view of applicant’s claim amendments.
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. 2015/0018432; cited on PTO-892 dated August 15, 2025), herein after referred to as Prakash.
Regarding claims 1 and 3, Prakash teaches a beverage comprising:
(i) rebaudioside X;
(ii) at least one carbohydrate sweetener (claim 38); and
(iii) erythritol [0101];
wherein the concentration of rebaudioside X is about 5-30 ppm (claim 39); and
the beverage is a cola (i.e., a carbonated beverage) (claim 52).
Prakash teaches that rebaudioside X is another name for rebaudioside M [0023] (Examiner’s note: rebaudioside X as recited by Prakash will herein after be referred to as rebaudioside M), as well as that the rebaudioside M is provided as part of a mixture of steviol glycosides [0035]. Thus, Prakash teaches a steviol glycoside mixture comprising rebaudioside M. Prakash further teaches that the steviol glycoside mixture comprises about 80-99% rebaudioside M by weight [0035], which meets the claim limitations of at least 80% by weight and at least 95% by weight.
In claim 38 of Prakash, Prakash teaches that the sweetener in the beverage is at least one carbohydrate sweetener. However, Prakash also teaches that synthetic sweeteners are suitable alternative sweeteners for use in the invention [0037], and that the synthetic sweetener is sucralose [0041]. Thus, it would have been obvious to one of ordinary skill in the art to select and use sucralose (a synthetic sweetener) in place of one carbohydrate sweetener in the beverage composition of Prakash, as both of carbohydrate sweeteners and synthetic sweeteners are taught to be interchangeable.
Prakash also teaches that erythritol is a polyol [0168] and that polyols are present in the beverage in a concentration of 5,000-40,000 ppm (0.5-4 wt.%) ([0077]-[0078]), which overlaps with the claimed range of 0.1-2 wt.%. 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 teaches that the beverage comprises 5-30 ppm (5x10-4-0.003 wt.%) rebaudioside M (i.e., the steviol glycoside mixture comprising rebaudioside M) (claim 39) and 0.3-3,500 ppm (3x10-5-0.35 wt.%) synthetic sweeteners [0076]. Thus, the weight ratio of the steviol glycoside mixture comprising rebaudioside M to the at least one synthetic sweetener is 8.57x10-3-16.7, which encompasses the claimed range of 0.5:1-3:1. 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 6, Prakash teaches that the synthetic sweetener is present in a concentration of 0.3-3,500 ppm [0076], which encompasses the claimed range of 1-250 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 teaches that the beverage includes at least one carbohydrate sweetener (claim 38), and where one carbohydrate sweetener has been substituted with a synthetic sweetener, as set forth and as rendered obvious in the rejection above, there still remains at least one carbohydrate sweetener, wherein that carbohydrate sweetener is D-psicose (another name for allulose) [0040] (Examiner’s note: D-psicose as recited by Prakash will herein after be referred to as allulose).
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 teaches that allulose is a carbohydrate sweetener [0040] and that carbohydrate sweeteners are present in the beverage in a concentration of 100-14,000 ppm (0.01-14 wt.%) [0076], which encompasses the claimed range of 0.1-2 wt.%. 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 12, Prakash teaches that the beverage can be a mid-calorie [0098], low-calorie [0099], or zero-calorie beverage [0100].
Regarding claim 13, Prakash teaches that the beverage is a zero-calorie beverage [0100].
Regarding claims 14 and 15, Prakash teaches that the beverage is a cola (claim 52).
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 filed March 24, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that the instant invention provides improved sensory properties in beverages by combining rebaudioside M with certain synthetic sweeteners (remarks, p. 4-5).
This argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the beverage of the instant invention provides unexpected results, particularly improved sensory properties and taste similar to sucrose beverages, as compared to a control beverage that does not contain rebaudioside M (remarks, pp. 4-5).
This argument is not persuasive. Applicant has not shown that these results in comparison to the prior art, only to Applicant’s own control beverage. The prior art of Prakash teaches a beverage composition comprising rebaudioside M and synthetic sweeteners, including sucralose, potassium acesulfame, and saccharin, while the unexpected results stated by Applicant are also concerned with a beverage composition comprising rebaudioside M and synthetic sweeteners. Applicant has only compared the instant beverage to a control beverage that is not in line with the beverage of Prakash. Applicant must show unexpected results in comparison to that of the closest prior art to be effective to rebut a prima facie case of obviousness. MPEP § 716.02(e). Moreover, applicant has not shown nor provided any evidence that the compositions of Prakash would not also have the same results as the claimed invention.
Applicant argues that one of ordinary skill in the art would not have predicted the results shown by Applicant (remarks, pp. 6-7).
This argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791