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 .
Election/Restrictions
Applicant’s election without traverse of group II, claims 47-51 in the reply filed on 3/6/25 was acknowledged.
Applicants submission of new claims 52-64 required a species restriction since applicant had received an action on the merits for the originally presented invention resulting in withdrawing of claims 56-58 directed to a specific linkage pattern of residues and the method of making the dietary fiber. It was noted in the Office Action of 5/19/25 claims 56-58 are withdrawn from consideration as being directed to a non-elected invention. In the instant case Species II. See 37 CFR 1.142(b) and MPEP § 821.03.
Species I: Claims 47-55 and 59-64
Species II: Claims 47 and 56-58
Applicants claim amendments of 10/20/25 have cancelled claims 48-53 and 60-61 and added new claims 65-67. The current claims constructively elected by original presentation for prosecution on the merits are claims 47, 54-55, 59 and 62-67. Claims 56-58 remain withdrawn.
Claim Objections
Applicant is urged to correct and provide the correct status identifiers for clarity of the record. As noted above the current claim identifier of claim 64 is “withdrawn from consideration” however claim 64 is not. The current claims of record are 47, 54-55, 59 and 62-67. Claims 56-58 are “withdrawn”.
Claim Rejections - 35 USC § 112
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 47, 54-55, 59 and 62-67 are 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.
Independent claim 47 is rejected due to the phrase “including at least 1 wt% of a soluble dietary fiber in the food or beverage product, wherein the soluble dietary fiber is included in an amount that enhances a sweetness“ since it is unclear if the claimed at least 1 wt% encompasses the “an amount that enhances sweetness”, if the phrase requires an unclaimed amount in excess of “at least 1 wt%” to achieve the claimed “an amount that enhances sweetness”, if the phrase is with respect to limiting the soluble dietary fiber specific to sweetness, if the phrase is with respect to a specific type or individual sweetness type, i.e. “enhanced a sweetness” as claimed or with respect to something different altogether.
Independent claim 47 is rejected due to the phrase “including at least 1 wt% of a soluble dietary fiber in the food or beverage product, wherein the soluble dietary fiber is included in an amount that enhances a sweetness“, specifically due to the term “enhances sweetness”. The term “enhances a sweetness” is not defined by the claim since in one instance the fiber is included in “at least 1 wt.%” and in a second instance is an amount resulting in “enhanced”, the specification does not provide a standard for ascertaining the requisite degree relative the claimed “at least 1 wt.%” and in a second instance is an amount resulting in “enhanced” and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what is encompassed by the phrase “enhanced a sweetness”; it is unclear as to what degree of difference is encompassed by this phrase, if not “enhanced” but sweetened. It is unclear if any degree is encompassed by the phrase, a required minimum of sweetness enhanced.
Independent claim 47 is rejected due to the phrase “including at least 1 wt% of a soluble dietary fiber in the food or beverage product, wherein the soluble dietary fiber is included in an amount that enhances a sweetness such that the at least one steviol glycoside and soluble dietary fiber together provide at least 1.5 SEV to the food or beverage product“. The phrase is limited by an amount of 1.5 SEV however the claimed dietary fiber is claimed to enhance a sweetness and requires and amount to enhance a sweetness. Steviol glycoside is a known high intensity sweetener. Thus It is unclear if claimed at least 1.5 SEV is due to an amount of soluble dietary fiber relative Steviol glycoside, a type of soluble dietary fiber relative an amount of Steviol glycoside, a minimum amount of Steviol glycoside relative at least 1 wt.% soluble dietary fiber or with respect to something different altogether.
Claim 63 is rejected in light of the claim amendment of Independent claim 47 from which claim 63 depends. Specifically the phrase “the at least one steviol glycoside is present in the food or beverage in an amount such that it does not provide perceptible sweetness to the food or beverage product”. Steviol glycoside is a sweetener per Independent claim 47, where the steviol glycoside of Independent claim 47 is in an amount which achieves a minimum SEV, i.e. sweetness. Thus claim 63 appears to contradict claim 47 from which it depends since it is unclear how in instance the steviol glycoside, which is a sweetener, provides additional sweetness and concurrently in an amount “such that it does not provide perceptible sweetness to the food or beverage product”.
Claim 63 is rejected in light of the claim amendment of Independent claim 47 from which claim 63 depends. Specifically the phrase “in an amount such that it does not provide perceptible sweetness to the food or beverage product”. Steviol glycoside is a sweetener per Independent claim 47, where the steviol glycoside of Independent claim 47 is in an amount which achieves a minimum SEV, i.e. sweetness. Thus the phrase “perceptible sweetness is rejected as it is a relative term, which renders the claim indefinite. The term “perceptible sweetness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to what is encompassed by the phrase “does not provide perceptible sweetness”; it is unclear as to what degree of difference is encompassed by this phrase, if “perceptible”. It is unclear if the amount is sweet, yet not perceptible, the claim does not provide a standard for “perceptible”.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 47, 54-55, 59 and 62-67 are rejected under 35 U.S.C. 103 as being unpatentable over Williamson et al. (20180264018).
Williamson teaches a method for modifying a taste property of a food or beverage product (par. 0075) comprising at least one sweetener (par. 0082), wherein the at least one sweetener is at least one steviol glycoside (par. 0084), the method comprising including at least 1 wt% (par. 0096) of a soluble dietary fiber (par. 0022, 00996) in the food or beverage product, wherein the soluble dietary fiber is included in an amount that enhances a sweetness such that the at least one steviol glycoside and soluble dietary fiber together provide enhanced sweetness to the food or beverage product.
Though silent to the sucrose equivalent value (SEV) of at least 1.5. Williamson both teaches applicants claimed soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096), where the soluble dietary fiber is not limited. Williamson is taken to teach an amount that enhances a sweetness due to teaching of a same soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096) since the same component, i.e. soluble dietary fiber, must comprise the same properties.
Williamson further teaches the addition of one or more sweeteners, including high intensity sweeteners of stevia extracts (par. 0082) including steviol glycoside (par. 0084). Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside and since Williamson teaches in some circumstances it is necessary to include an additional sweetener in a particular food or beverage (par. 0087). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside which achieves at least 1.5 SEV to provide additional sweetness as required by regulatory restrictions as taught by Williamson (par. 0087 lines 2 lines).
More broadly, Williamson teaches the addition of one or more sweeteners, including high intensity sweeteners of stevia extracts (par. 0082) including steviol glycoside (par. 0084). Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside to achieve at least 1.5 SEV, i.e. a desired sweetness thus making the food product more appealing by enhanced sweetness and/ to achieve a desired sweetness relative different foods and beverages per known taste.
Claim 54, wherein the soluble dietary fiber is present in the food or beverage product in an amount of at least 5 wt%. (par. 0096)
Claim 55, wherein the soluble dietary fiber has a weight-average molecular weight in the range of 1000 g/mol to 2500 g/mol (par. 0100; 1kDa-1000g/mol).
Claim 59, Williamson both teaches applicants claimed soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096), where the soluble dietary fiber is not limited. Williamson teaches the addition of one or more sweeteners, including high intensity sweeteners of stevia extracts (par. 0082) including steviol glycoside (par. 0084). Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside to achieve at least 1.5 SEV, i.e. a desired sweetness, thus making the food product more appealing by enhanced sweetness and/ to achieve a desired sweetness relative different foods and beverages per known taste.
In addition with respect to claim 59, Williamson teaches in some circumstances it is necessary to include an additional sweetener in a particular food or beverage (par. 0087). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside which achieves at least 1.5 SEV to provide additional sweetness as required by regulatory restrictions as taught by Williamson (par. 0087 lines 2 lines) relative the dietary soluble fiber such that the food or beverage product comprises at least one sweetener (par. 0081).
Claim 62, Since Williamson both teaches applicants claimed soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096), where the soluble dietary fiber is not limited, and thus a same soluble dietary fiber must contain the same properties, in the instant case enhanced sweetness due to same type and amount. Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside present less than an amount that provides 1.5 SEV, since the soluble dietary fiber reduces the amount of needed addition sweetness to the achieve the constant, i.e. 1.5 SEV, thus making the food product more appealing by enhanced sweetness and/ to achieve a desired sweetness relative different foods and beverages per known taste.
Claim 63, wherein the at least one steviol glycoside is present in the food or beverage in an amount such that it does not provide perceptible sweetness to the food or beverage product (par. 0096 relative amount, i.e. 1% vs. 80%).
Claim 64, wherein the food or beverage product is a dairy product, or a dairy alternative, a beverage; a cereal, a granola, a muesli, a topping, a coating, a confectionery coating, a baked good, a bar, a meat alternative, a filling, a fruit snack such as a fruit leather, a pasta, a sweetener, a frozen dessert, a dairy product, a dairy alternative, a glaze, a frosting, a beverage, a syrup, a pet food, a medical food, a flavoring, or a dry blend, a confection such as a chocolate confection; or a spread (par. 0075).
Claim 65, wherein the at least one steviol glycoside comprises one or more of stevioside and rebaudiosides A-F, J, M, N, and O (par. 0086).
Claim 66, wherein the at least one steviol glycoside comprises rebaudioside A (par. 0086).
Claim 67, Williamson teaches one or more co-sweeteners including rebaudioside A and rebaudioside B (par. 0086). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach a combination of the steviol glycoside comprises a combination of rebaudioside A and rebaudioside B, since Williamson teaches the same types thus providing a same steviol glycoside of any one or more types as co-sweeteners known for its art recognized and intended purpose.
Response to Arguments
With respect to applicants urging directed to the election by previous presentation and applicants urging “claims 54-57 and 59-63 belong to Species I”. Importantly and as noted by applicant, applicant elected without traverse group II, claims 47-51 in the reply filed on 3/6/25. Though applicant maps the current claims to previously restricted claims, as noted above, applicants election of claims 47-51 withdrew claims 33-46. Current claims 56-58 are drawn to previously withdrawn claims.
Applicants submission of new claims 52-64 required a species restriction since applicant had received an action on the merits for the originally presented invention resulting in withdrawing of claims 56-58 directed to a specific linkage pattern of residues and the method of making the dietary fiber. It was noted in the Office Action of 5/19/25 claims 56-58 were withdrawn from consideration as being directed to a non-elected invention. In the instant case Species II. See 37 CFR 1.142(b) and MPEP § 821.03.
Species I: Claims 47-55 and 59-64
Species II: Claims 47 and 56-58
Thus claims 56-58 remain rejected for the reasons provided in the Office Action of 5/19/25.
Applicants claim amendments of 10/20/25 have cancelled claims 48-53 and 60-61 and added new claims 65-67. The current claims constructively elected by original presentation for prosecution on the merits are claims 47, 54-55, 59 and 62-67. Claims 56-58 remain withdrawn.
With respect to applicants urging directed to Williamson, though urged Williamson teaches additional sweeteners, importantly the claims are not limited to only the claimed components but “comprising”. In addition it is noted though Williamson teaches other sweetener sources, importantly the claims are specific to the food or beverage comprising 2 components, where those two components are claimed relative one another and not the product itself.
Though silent to the sucrose equivalent value (SEV) of at least 1.5. Williamson both teaches applicants claimed soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096), where the soluble dietary fiber is not limited. Williamson is taken to teach an amount that enhances a sweetness due to teaching of a same soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096) since the same component, i.e. soluble dietary fiber, must comprise the same properties.
Williamson further teaches the addition of one or more sweeteners, including high intensity sweeteners of stevia extracts (par. 0082) including steviol glycoside (par. 0084). Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside and since Williamson teaches in some circumstances it is necessary to include an additional sweetener in a particular food or beverage (par. 0087). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside which achieves at least 1.5 SEV to provide additional sweetness as required by regulatory restrictions as taught by Williamson (par. 0087 lines 2 lines).
More broadly, Williamson teaches the addition of one or more sweeteners, including high intensity sweeteners of stevia extracts (par. 0082) including steviol glycoside (par. 0084). Thus since sweetness is a variable which can be directly controlled by an amount of steviol glycoside. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to teach an amount of steviol glycoside to achieve at least 1.5 SEV, i.e. a desired sweetness thus making the food product more appealing by enhanced sweetness and/ to achieve a desired sweetness relative different foods and beverages per known taste.
With respect to applicants urging Williamson is directed to ameliorating gastrointestinal intolerance, not the enhancement of sweetness. Importantly Williamson both teaches applicants claimed soluble dietary fiber and soluble dietary fiber amount of at least 1 wt. % (par. 0096), where the soluble dietary fiber is not limited. The same component, i.e. soluble dietary fiber, must comprise the same properties, i.e. an undefined minimum of “sweetness”.
With respect to applicants urging directed to the specification, it is initially noted as above, the claims are silent to a type of soluble dietary fiber.
Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ430, 433 (CCPA 1977).
Burden shift to applicant to provide evidence the same soluble dietary fiber does not encompass applicants broadly claimed “enhances sweetness”. A same “soluble dietary fiber” and its properties are inseparable. Therefore, if the prior art teaches the same “soluble dietary fiber”, the properties applicant discloses and/or claims are necessarily present. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN N LEFF whose telephone number is (571)272-6527. The examiner can normally be reached on M-F 8:30-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)270-34753475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN N LEFF/Primary Examiner, Art Unit 1792