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 Claims
Claims 1, 3-4, 10-18 are pending in this application. Claims 1, 3-4, 10-11 and 14-18 are under examination. Claims 12-13 are withdrawn. Claims 2, 5-9 are cancelled. Any objections or rejections not repeated below have been withdrawn.
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, 3-4, 10-11 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US 20070116832, cited on IDS dated 09/22/2022).
Regarding claims 1 and 14-18, Prakash teaches an oral composition, as required by claim 1 (orally ingestible compositions; [0002]). Prakash discloses the composition comprises a high-intensity sweetener (natural high-potency sweetener; [0029]), as required by claim 1, where the high intensity sweetener is selected from rebaudioside D, mogroside V, Lou Han Guo extract or combination thereof, as required by claim 1, and selected from rebaudioside D, as required by claims 14 and 18 [0029].
Prakash teaches the high-intensity sweetener (natural high-potency sweetener) is used in the oral composition (sweetenable composition) at an amount from 100-3,000 ppm [0868]. This encompasses the claimed amount of high-intensity sweetener used in the composition from 150 to 450 ppm, as required by claim 1, and from 150 to 400 ppm, as required by claim 18. 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).
Claim 1 recites the limitation “a high-intensity sweetener in an amount corresponding to a sweetness intensity X1… wherein the sweetness intensity X1 is a numerical value obtained by multiplying a degree of sweetness of the high-intensity sweetener by its concentration (w/v%), when a sweetness intensity of sucrose per unit concentration Brix 1 is defined as a degree of sweetness of 1.” Prakash meets this limitation. As recited above Prakash teaches a high intensity sweetener (natural high-potency sweetener; [0029]), where the high intensity sweetener is selected from rebaudioside D, and can be in an amount between 100-3,000 pm [0868], for example an amount of 200 ppm. The instant specification [0050] states the degree of sweetness of rebaudioside D is about 225 and when multiplied by the concentration of 200 ppm (0.02) = 4.5. Thus, X1 = 4.5 and 0.1<X1 is satisfied.
Prakash teaches a sodium source, as required by claim 1 (an inorganic salt, comprising sodium; [0064], [0093], claims 8, 20, 21, 58, 59). Prakash teaches the sodium source is in the composition at an amount from about 50-5,000 ppm, which is 2.17-217mM [0848]. This overlaps the claimed range of less than 10 mM sodium source, as required by claim 1. 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 teaches an amino acid, as required by claim 1. Prakash teaches an amino acid in an amount less than a taste recognition threshold, as required by claim 1 (may further comprise the functional ingredient of an amino acid as a sweet taste improving additive; [0028], [0075]). Since Prakash teaches the amino acid as a sweet taste improving additive, the addition of the amino acid is not to impart a flavor of its own but to improve the sweet taste of the composition. Therefore, it is considered as being present in the composition at an amount of less than a taste recognition threshold as one would not be able to distinguish the taste of the amino acid but only distinguish an improved sweet taste. Additionally, in the instant specification on pg. 109 Table 4, it lists the taste recognition threshold for the amino acids and the claimed amounts for the amino acids listed in claims 1 and 15-18 correspond to the amounts listed to the amounts listed within Table 4. Thus, if Prakash teaches amino acids within the claimed amounts listed in claims 1 and 15-18, it is considered as being present in the composition at an amount of less than a taste recognition threshold.
Prakash teaches the amino acid comprises an amino acid selected from alanine, serine, glycine, arginine, valine, glutamine, leucine, threonine, and asparagine, as required by claim 1 [0075]. While Prakash teaches the amino acid and not the specific isomers for the amino acids listed above, 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 Prakash to use any isomer, including the isomers claimed in claim 1. See MPEP 2144.08. Thus, modified Prakash is considered to teach an amino acid, where the amino acid is selected from DL-alanine, L-serine, glycine, L-arginine, L-valine, L-glutamine, L-leucine, L-threonine, L-asparagine and a combination thereof, as required by claim 1.
Prakash teaches the composition comprises the amino acid additive ranging from about 10-500 mOsmoles/L, which is 10-500 mM [0769], where the amino acid additive, as noted in the previous paragraph, may be selected from DL-alanine, L-valine and a combination thereof, as required by claim 1. This encompasses the claimed amount of amino acid less than a taste recognition threshold selected from 30 mM or less of DL-alanine, as required by claim 1 and claim 15, 50 mM or less of L-valine, as required by claim 1, claim 16 and claim 17, and 15 mM or less of DL-alanine and 20 mM or less of L-valine, as required by claim 18. See MPEP 2144.05(I).
Prakash teaches a substantially identical oral composition to the claimed composition with components (a) to (c), as shown by the rejection above. Therefore, since the composition of Prakash is substantially identical to the claimed composition it is considered to possess the property of a sweetness intensity of X2, where 0.1<X1<X2 is satisfied, as required by claim 1, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Regarding claim 3, Prakash teaches a substantially identical oral composition to the claimed composition, as shown by the rejection above. Therefore, since the composition of Prakash is substantially identical to the claimed composition it is considered to possess the property of a sweetness intensity of X3 exhibited by the components (a) and (b) and where 0.1<X1<X3<X2 is satisfied, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Regarding claim 4, Prakash teaches the composition comprises a low-intensity sweetener (a sweet taste improving composition including carbohydrates and polyols; [0064]). Prakash teaches the low-intensity sweetener comprises a sweetener selected from glucose, sucrose, fructose, maltose, high fructose corn syrup, lactose, psicose, allose, tagatose, xylose and ribose [0072].
Regarding claims 10 and 11, Prakash teaches the composition is a food (an orally ingestible composition; [0866]), as required by claim 10; where the food is a beverage [0866], as required by claim 11.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-4, 10-11 and 14-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7 and 14-16 of copending Application No. 18/023,907 (hereinafter ‘907). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘907 teaches a beverage. This reads on claim 11 of the instant application. Conflicting claim 1 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1 and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity X3 exhibited by the components (a) and (b), 0.1<X1<X3 is satisfied. This reads on claims 1 and 3 of the instant application.
In conflicting claim 1 of ‘907, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 1 teaches the beverage is one selected from a sparkling beverage and flavored water. This reads on claim 10 of the instant application that teaches a food and claim 11 that teaches the composition is a beverage, which includes all types of beverages including sparkling beverages and flavored water.
Conflicting claim 3 of ‘907 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1 of the instant application.
Conflicting claim 3 teaches (c) sodium that encompasses the claimed range for instant application claim 1. It is noted that 50 mg/100 ml of sodium is equal to 2177.8 mM of sodium. See MPEP 2144.05(I).
Conflicting claim 3 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claim 1 of the instant application.
In conflicting claim 3 of ‘907, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 3 teaches the beverage is flavored water. This reads on claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including flavored water.
Conflicting claim 4 of ‘907 teaches a low-intensity sweetener. This reads on claim 4 of the instant application.
Conflicting claim 7 of ‘907 teaches the amino acid comprises an amino acid selected from glycine, alanine, valine, isoleucine, leucine, serine, threonine, glutamine, asparagine, arginine, lysine, histidine, and a combination thereof, which includes all isomers for the amino acids listed. This reads on claims 1 and 15-18 of the instant application.
Conflicting claim 14 of ‘907 teaches the low-intensity sweetener comprises at least one selected from the group consisting of glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claim 4 of the instant application.
Conflicting claim 15 of ‘907 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of a Luo Han Guo extract. This reads on claim 1 of the instant application.
Conflicting claim 16 of ‘907 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside D, rebaudioside M and a combination thereof. This reads on claims 1, 14 and 18 of the instant application.
Claims 1, 3-4, 10-11 and 14-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6 and 11-13 of copending Application No. 18/023,894 (hereinafter ‘894). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘894 teaches a fruit juice beverage. This reads on claim 10 of the instant application that teaches a food and claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including a fruit juice beverage. Conflicting claim 1 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1 and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity X3 exhibited by the components (a) and (b), 0.1<X1<X3 is satisfied. This reads on claims 1 and 3 of the instant application.
In conflicting claim 1, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 2 of ‘894 teaches a fruit juice beverage. This reads on claim 10 of the instant application that teaches a food and claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including a fruit juice beverage. Conflicting claim 2 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1 of the instant application.
Conflicting claim 2 teaches (c) sodium that encompasses the claimed range for instant application claim 1. It is noted that 50 mg/100 ml of sodium is equal to 2177.8 mM of sodium. See MPEP 2144.05(I).
Conflicting claim 2 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claim 1 of the instant application.
In conflicting claim 2, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 2, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 3 of ‘894 teaches a low-intensity sweetener. This reads on claim 4 of the instant application.
Conflicting claim 6 of ‘894 teaches the amino acid comprises an amino acid selected from glycine, alanine, valine, isoleucine, leucine, serine, threonine, glutamine, asparagine, arginine, lysine, histidine, and a combination thereof, which includes all isomers for the amino acids listed. This reads on claims 1 and 15-18 of the instant application.
Conflicting claim 11 of ‘894 teaches the low-intensity sweetener comprises at least one selected from the group consisting of glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claim 4 of the instant application.
Conflicting claim 12 of ‘894 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of a Luo Han Guo extract. This reads on claim 1 of the instant application.
Conflicting claim 13 of ‘894 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside D, rebaudioside M and a combination thereof. This reads on claims 1, 14 and 18 of the instant application.
Claims 1, 3-4, 10-11 and 14-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7 and 14-16 of copending Application No. 18/034,764 (hereinafter ‘764). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘764 teaches a beverage. This reads on claim 11 of the instant application. Conflicting claim 1 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1 and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity X3 exhibited by the components (a) and (b), 0.1<X1<X3 is satisfied. This reads on claims 1 and 3 of the instant application.
Conflicting claim 1 teaches the beverage is one selected from a coffee beverage and a tea beverage. This reads on claim 10 of the instant application that teaches a food and claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including coffee beverage and a tea beverage.
In conflicting claim 1, the amounts of high intensity sweetener, which corresponds to X1, and the amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 2 of ‘764 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1 of the instant application.
Conflicting claim 2 teaches (c) sodium that encompasses the claimed range for instant application claim 1. It is noted that 90 mg/100 ml of sodium is equal to 3913 mM of sodium. See MPEP 2144.05(I).
Conflicting claim 2 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claim 1 of the instant application.
Conflicting claim 2 teaches the beverage is coffee. This reads on claim 10 of the instant application that teaches a food and claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including coffee.
In conflicting claim 2, the amounts of high intensity sweetener, which corresponds to X1, and the amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 2, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 3 of ‘764 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1 of the instant application.
Conflicting claim 3 teaches (c) sodium that encompasses the claimed range for instant application claim 1. It is noted that 50 mg/100 ml of sodium is equal to 2177.8 mM of sodium. See MPEP 2144.05(I).
Conflicting claim 3 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claim 1 of the instant application.
Conflicting claim 3 teaches the beverage is tea. This reads on claim 10 of the instant application that teaches a food and claim 11 of the instant application that teaches the composition is a beverage, which includes all types of beverages including tea.
In conflicting claim 3, the amounts of high intensity sweetener, which corresponds to X1, and the amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 3, would fall within the claimed ranges of instant application claims 1 and 15-18.
Conflicting claim 4 of ‘764 teaches a low-intensity sweetener. This reads on claim 4 of the instant application.
Conflicting claim 7 of ‘764 teaches the amino acid comprises an amino acid selected from glycine, alanine, valine, isoleucine, leucine, serine, threonine, glutamine, asparagine, arginine, lysine, histidine, and a combination thereof, which includes all isomers for the amino acids listed. This reads on claims 1 and 15-18 of the instant application.
Conflicting claim 14 of ‘764 teaches the low-intensity sweetener comprises at least one selected from the group consisting of glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claim 4 of the instant application.
Conflicting claim 15 of ‘764 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of a Luo Han Guo extract. This reads on claim 1 of the instant application.
Conflicting claim 16 of ‘764 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside D, rebaudioside M and a combination thereof. This reads on claims 1, 14 and 18 of the instant application.
Claims 1, 3-4, 10-11 and 14-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 9-10 of copending Application No. 17/787,751 (hereinafter ‘751). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘751 teaches an oral composition comprising (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity Xa and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity Xb exhibited by the components (a) and (b), 0.1<Xa<Xb is satisfied. This reads on claims 1 and 3 of the instant application.
Conflicting claim 1 teaches wherein a high-intensity sweetener comprises a sweetener selected from rebaudioside D, rebaudioside M and a combination thereof. This reads on claims 1, 14 and 18 of the instant application
Conflicting claim 1 teaches a low-intensity sweetener, and the low-intensity sweetener comprises a sweetener selected from glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, xylose, ribose and a combination thereof. This reads on claim 4 of the instant application.
Conflicting claim 1 teaches the amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold comprises an amino acid selected from 30 mM or less of DL-alanine. This is the same range as claims 1 and 15, and encompasses the ranges of claim 18 for the instant application. Conflicting claim 1 teaches the amino acid selected from 50 mM or less of L-valine. This is the same range as claims 1 and 16-17 and encompasses the ranges of claim 18 in the instant application.
In conflicting claim 1, the amounts of high intensity sweetener, which corresponds to Xa, provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<Xa<Xb. Thus, the amounts of high-intensity sweetener of conflicting claim 1, would fall within the claimed ranges of instant application claims 1 and 18.
Conflicting claim 4 of ‘751 teaches the amino acid comprises an amino acid selected from DL-alanine, L-serine, L-proline, and L-arginine, and a combination thereof. This reads on claims 1 and 18 of the instant application that teaches the amino acid comprises an amino acid selected from DL-alanine, L-serine, L-proline, L-arginine and a combination thereof.
Conflicting claim 9 of ‘751 teaches wherein the oral composition is a food. This reads on claim 10 of the instant application.
Conflicting claim 10 of ‘751 teaches wherein the food is a beverage. This reads on claim 11 of the instant application.
Response to Arguments
Applicant's arguments filed 07/18/2025 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 8-9 of their remarks, that Prakash is silent as to sweetness enhancement, specifically that the reference does not disclose or suggest that either sodium or an amino acid may provide sweetness enhancement, and does not suggest a specific combination as presently claimed. Applicant states that there is no teaching in Prakash showing that an amino acid may provide sweetness enhancement and no motivation to combine a specific high-intensity sweetener with a sodium source and a specific amino acid at the amounts required by the claim to achieve a sweetness enhancing effect. Applicant concludes when faced with the problem of enhancing sweetness, the skilled person would not arrive at the claimed subject matter. However, the Office disagrees for the following reasons.
Prakash is viewed as teaching sweetness enhancement. Prakash states their sweetener composition provides improved taste, a more sugar-like temporal profile that includes sweetness onset and sweetness lingering (Abstract). Prakash notes that natural and synthetic high-potency sweeteners (high-intensity sweeteners) are slower in onset than the sweet taste produced by sugar [0007]. Thus, the invention of Prakash provides a sweetener that has a quicker sweetness onset, which can be viewed as a sweetness enhancement since the onset of the sweetener is quicker and enhanced from a traditional high-potency sweetener. Additionally, the term “sweetness enhancement” is being viewed as a relative term and can mean many things, including as stated by Prakash a functional sweetener that provides an improved temporal profile and/or flavor profile [0009].
Moreover, as shown by the above rejection, Prakash teaches a substantially identical oral composition to the claimed. Prakash does disclose a high-intensity sweetener with a sodium source and an amino acid at the amounts required by the claim to achieve a sweetness enhancing effect. Therefore, since the composition of Prakash is substantially identical to the claimed composition it is considered to possess the property of sweetness enhancement, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., sweetness enhancement) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues, on pg. 9 of their remarks, that the Examiner is picking and choosing disclosures within the Prakash reference to create an improper hindsight reconstruction of the claimed invention.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues the double patenting rejections on pgs. 10-11 of their remarks. These arguments have been considered but are moot because the new ground of rejection has been updated based on the amendments to the claims and addresses the amounts of the specifically recited amino acids and high-intensity sweetener.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE GERLA whose telephone number is (571)270-0904. The examiner can normally be reached Mon.-Wed. and Fri. 7-12 pm; Th. 7-2pm.
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759