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 .
DETAILED ACTION
This application is a 371 of PCT/JP2020/049073.
The amendment filed on December 19, 2025 has been entered.
Election/Restrictions
Applicant elected without traverse of Group I with an election of (1) aspartame as the sweetener, (2) S. cerevisiae as the yeast, (3) glucanase derived from Streptomyces (Denateam GEL1/R) as the cell wall lytic enzyme, and (4) laminarin as the carbohydrate in the reply filed on July 2, 2025.
Claim 10 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 2, 2025.
Claim Status
Claims 1, 3-5, 7-8, 10-14, and 20 are pending.
Claims 10 and 14 are withdrawn.
Claims 1, 3-5, 7-8, 11-13, and 20 are under examination.
Response to Amendments/Arguments
Abstract
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to the Abstract have been fully considered and are persuasive. The Abstract has been amended to a single paragraph. Therefore, the objection of the Abstract has been withdrawn.
Claim Objections
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to claim 4 have been fully considered and are persuasive. Claim 4 has been amended to italicize Streptomyces. Therefore, the objection of claim 4 has been withdrawn.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.
Withdrawn Rejections
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to claim 1 and claims depending therefrom have been fully considered and are persuasive. Claim 1 has been amended to delete the term “unpleasant”. Therefore, the rejection of claim 1 and claims depending therefrom under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to claims 1, 11-13, and 18-19 and claims depending therefrom have been fully considered and are persuasive. Claims 1, 11-13, and 18-19 have been amended to delete the term “high-intensity”. Therefore, the rejection of claims 1, 11-13, and 18-19 and claims depending therefrom under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to claim 1 and claims depending therefrom have been fully considered and are persuasive. Claim 1 has been amended to clarify the degraded extract. Therefore, the rejection of claim 1 and claims depending therefrom under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see page 4 of the Remarks, filed December 19, 2025, with respect to claims 7 and 16 have been fully considered and are persuasive. Claim 7 depends from claim 1 and claim 1 has been amended to clarify the degraded extract. Claim 16 has been cancelled. Therefore, the rejection of claims 7 and 16 under 35 U.S.C. 112(b) has been withdrawn.
New Rejection
Claim 8 is 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.
Claim 8 depends from claim 2 and claim 2 has been canceled. Therefore, the limitations of claim 8 are highly unclear. Thus, claim 8 has not been considered under other statutes.
Claim 20 is 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 term “improves a taste” recited in claim 20 is a relative term which renders the claim indefinite. The term “improves a taste” 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 taste is considered as an improved taste. Therefore, those skilled in the art would be unable to ascertain what taste is an improved taste. Clarification is requested.
Claim Rejections - 35 USC § 112(a)
Applicant's arguments, see page 5 of the Remarks, filed December 19, 2025, with respect to claims 1-9, 11-13, and 15-19 have been fully considered and are persuasive. Claim 1 has been amended to narrow the genus of the claimed composition. Therefore, the rejection of claims 1-9, 11-13, and 15-19 under 35 U.S.C. 112(a) for lack of written description has been withdrawn.
Claim Rejections - 35 USC § 102
Applicant's arguments, see page 5 of the Remarks, filed December 19, 2025, with respect to claims 1-9, 11-13, and 15-19 have been fully considered and are persuasive. Claim 1 has been amended to recite that the composition comprising carbohydrates comprising 50% or more of laminarin, which is not taught or suggested by Morel (“DSM IP ASSETS B.V. EP 3 378 334 – form PTO-1449). Therefore, the rejection of claims 1-9, 11-13, and 15-19 under 35 U.S.C. 102(a)(1) for being anticipated by Morel has been withdrawn.
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, 3-5, 7 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/280,211 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming common subject matter.
Regarding claims 1, 3-5, and 7 of the instant application, claims 1, 5-8, and 11 of the reference application recites a composition comprising an extract of yeast cell walls degraded by a glucanase, β-1,3- glucanase or Streptomyces glucanase, wherein the composition is made by treating yeast cell body with the glucanase at 40 to 60°C for 1 to 24 hours and recovering the treated product. Since the composition of reference application is made by an identical process of the instant application, the resulting composition has identical properties as the composition of instant application.
Regarding claim 20 of the instant application, the property of improving a taste caused by a sweetener is an inherent property of the composition of the reference claims.
Therefore, the conflicting claims are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant's arguments filed December 19, 2025 have been fully considered but they are not persuasive.
Applicant argues that the rejection is overcome because amended claim 1 includes all the element of claim 9 and claim 9 was not rejected.
This is not found persuasive. Amended claim 1 does not recite the elements of previously pending claim 9, a high-intensity sweetener selected from aspartame, sucralose, acesulfame potassium, and stevia.
Hence the rejection has been maintained.
Conclusion
Claims 1, 3-5, 7-8, 10-14, and 20 are pending.
Claims 10 and 14 are withdrawn.
Claims 1, 3-5, 7-8, and 20 are rejected.
Claims 11-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 YONG D PAK whose telephone number is (571)272-0935. The examiner can normally be reached M-Th: 5:30 am - 3:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 408-918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YONG D PAK/Primary Examiner, Art Unit 1652