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 .
The Amendment filed Sept. 24, 2025 has been entered. Claims 200-210 and 212-220 are pending. Claims 211 has been canceled. Claims 220 is new.
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 200-210 and 212-220 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (JP 2008120789 Al May 29, 2008; using English Translation) in view of Ryu et al. (KR 20190133438 A; Dec. 12, 2019).
Regarding claims 200, 203-204 and 207, Yamazaki discloses a sweetener composition comprising an oligosaccharide component comprising xylo-oligosaccharides and cello-oligosaccharides ([0001]-[0004]).
Yamazaki teaches that the xylo-oligosaccharides have a degree of polymerization of more than 7 ([0011] and [0020]), thus overlapping the claimed range of 2 to 12. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
While Yamazaki discloses the degree of polymerization for the xylo-oligosaccharides, Yamazaki is silent with respect to the degree of polymerization for the cello-oligosaccharides.
Ryu teaches a sweetener composition comprising oligosaccharides, wherein the oligosaccharides can be selected from xylo-oligosaccharides and cello-oligosaccharides. Ryu further teaches that the oligosaccharides have a polymerization degree of 3 or more (Derwent Abstract). Ryu teaches that using oligosaccharides having a degree of polymerization of 3 or more results in a similar sweetness to sugar without the sugar content (Derwent Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art to have the cello-oligosaccharides of Yamazaki have a degree of polymerization of 3 or more as taught by Ryu, which overlaps the claimed range of 2 to 6, in order to provide the composition of Yamazaki with a similar sweetness to sugar but with a low sugar content as taught by Ryu.
As stated above, Yamazaki discloses a sweetener composition comprising an oligosaccharide component comprising xylo-oligosaccharides and cello-oligosaccharides. Yamazaki teaches that the xylo-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight and the cello-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight ([0045]), which results in a ratio of xylo-oligosaccharides to cello-oligosaccharides that can be 1:1, which overlaps the claimed ratio of 19:1 to 1:1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Yamazaki further teaches that the oligosaccharide component is combined with an additional component that can be a high-intensity sweetener and/or a bulking sweetener ([0041]-[0056]). Yamazaki teaches that the additional component can be present in an amount of 0.01 to 99.99 % by weight, which can result in an overlapping ratio of the oligosaccharide component to high intensity sweetener or the bulking sweetener.
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of each component to result in a desired ratio depending on the desired taste/sweetness and effect of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "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)
Regarding claims 201-202, as stated above, Yamazaki further teaches that the oligosaccharide component is combined with an additional component that can be a high-intensity sweetener and/or a bulking sweetener ([0041]-[0050]).
Yamazaki teaches that the high intensity sweetener can be sugar alcohols, aspartame, stevia, glycyrrhizin, etc. ([0050] and [0056]). Yamazaki teaches that the bulking sweetener can be a sugar alcohol or erythritol ([0050]).
Regarding claim 205, Yamazaki teaches that the composition as described above comprises an oligosaccharide component and can also have a high intensity sweetener component, but fails to specifically disclose that the high intensity sweetener is at least about 5 times greater than an average sweetness level of the oligosaccharide component. Yamazaki, however, teaches that the high intensity sweetener can be the same as the instant invention (sugar alcohols, aspartame, stevia, glycyrrhizin, etc. [0050] and [0056]) and the oligosaccharide component is the same as the instant invention, comprising celli-oligosaccharides and xylo-oligosaccharides. Therefore, the high intensity sweetener of Yamazaki would have at least about 5 times greater than an average sweetness level of the oligosaccharide component as it is the same components as used in the instant invention.
Additionally, sweetness perception is subjective and can vary from human subject to human subject. It is well within the ordinary skill in the art to vary the amount and type of sweeteners in Yamazaki to results in a desired sweetness perception.
Regarding claim 206, Yamazaki teaches that the composition as described above comprises a high intensity sweetener component, but fails to specifically disclose a sweetness level ratio of the high intensity sweetener to a sweetness level of sucrose.
However, it is well known in the art that high intensity sweetness have a sweetness level that is much higher than sucrose for a given amount.
As Yamazaki teaches that the high intensity sweetener can be the same as the instant invention (sugar alcohols, aspartame, stevia, glycyrrhizin, etc. [0050] and [0056]), the high intensity sweetener of Yamazaki would have a similar sweetness level ratio as claimed.
Additionally, sweetness level is subjective and can vary from human subject to human subject. It is well within the ordinary skill in the art to vary the amount and type of sweeteners in Yamazaki to results in a desired sweetness level ratio.
Regarding claims 208-209, Yamazaki teaches that the composition as described above comprises an oligosaccharide component, but fails to specifically disclose the oligosaccharide component decreases an average undesirable bitter aftertaste. Yamazaki, however, teaches that the the oligosaccharide component is the same as the instant invention, comprising celli-oligosaccharides and xylo-oligosaccharides. Therefore, the oligosaccharide component of Yamazaki would necessarily decrease an undesirable bitter aftertaste compared to a composition made without oligosaccharides.
Additionally, bitter aftertaste perception is subjective and can vary from human subject to human subject. It is well within the ordinary skill in the art to vary the amount and type of oligosaccharide in Yamazaki to results in a desired decrease of bitter aftertaste perception.
Regarding claim 210, as stated above, Yamazaki teaches that the additional component other than the oligosaccharide component can be present in in an amount from 0.01 to 99.9% by weight ([0046]), which overlaps the claimed range of less than 40% by weight monosaccharides. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claims 212, Yamazaki teaches that the additional component other than the oligosaccharide component can be present in in an amount from 0.01 to 99.9% by weight ([0046]), which includes sucrose, lactose, and maltose ([0048]). Therefore, the amount of sucrose, lactose, and maltose can be less than the amount of the oligosaccharide component.
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of each component to result in a desired ratio depending on the desired taste/sweetness and effect of the composition.
Regarding claim 213, Yamazaki teaches that the composition does not comprise maltodextrin and therefore meets the claimed range of less than 20% by weight maltodextrin.
Regarding claim 214, Yamazaki teaches that the xylo-oligosaccharides comprise xylose and arabinose ([0013]), but fails to specifically disclose a ratio of xylose to arabinose.
It would have been obvious to one of ordinary skill in the art to vary the amount of each monomer depending on the desired effect of each component in the composition.
Regarding claim 215, Yamazaki further teaches that the additional component can be a polysaccharide or a cellulose ([0050]).
Regarding claim 216, Yamazaki further teaches that the additional component can be a polysaccharide ([0050]). As stated above, Yamazaki teaches that the additional component other than the oligosaccharide component can be present in in an amount from 0.01 to 99.9% by weight ([0046]), which overlaps the claimed range of at most 30% by weight polysaccharides. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 217, Yamazaki further teaches that the additional component can be a phenolic compound ([0048]).
Regarding claim 218, Yamazaki does not teach that the oligosaccharide component comprises the claimed elements, and therefore meets the claimed range of less than 0.5 ppm.
Regarding claim 219, Yamazaki teaches adding the sweetener composition to food products, wherein it is added in an amount of 0.1 to 99.99% by weight ([0045]), thus overlapping the claimed range of 1 to 50% by weight. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Regarding claim 220, as stated above, Yamazaki further teaches that the oligosaccharide component is combined with an additional component that can be a high-intensity sweetener ([0044], [0046], [0056]).
Response to Amendment
The Declaration under 37 CFR 1.132 filed Sept. 24, 2025 is insufficient to overcome the 103 rejection over Yamazaki and Ryu as set forth in the last Office action.
Applicant states that the results from an experiment, which has been provided in the Declaration, demonstrated that acceptable sweetness was achieved in foodstuff comprising OGS having a ratio of XOS:COS in the range from 19:1 to 1:1, and HIS having a ratio of OGS:HIS in the range from 5000:1 to 50:1.
This is not found persuasive as claim 200 discloses the HIS in an alternate form, wherein the OGS component is combined with a HIS or a bulking sweetener. Therefore, the HIS does not have to be present. Do the same experimental results occur with the use of a bulking sweetener in the claimed ratio?
Additionally, the experiment was conducted using saccharin as the HIS. Again, a HIS does not have to be present, and claim 20 fails to teach that the HIS is saccharin. Do the same experimental results occur with the use of any HIS?
Therefore, applicant’s experimental data results are not commensurate in scope with the claims and this Declaration is not found persuasive.
Further, Yamazaki discloses a sweetener composition comprising an oligosaccharide component comprising xylo-oligosaccharides and cello-oligosaccharides. Yamazaki teaches that the xylo-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight and the cello-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight ([0045]), which results in a ratio of xylo-oligosaccharides to cello-oligosaccharides that can be 1:1, which overlaps the claimed ratio of 19:1 to 1:1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Yamazaki further teaches that the oligosaccharide component is combined with an additional component that can be a high-intensity sweetener and/or a bulking sweetener ([0041]-[0056]). Yamazaki teaches that the additional component can be present in an amount of 0.01 to 99.99 % by weight, which can result in an overlapping ratio of the oligosaccharide component to high intensity sweetener or the bulking sweetener.
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of each component to result in a desired ratio depending on the desired taste/sweetness and effect of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "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)
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejection from the previous Office Action and therefore it has been withdrawn.
Applicant’s argues with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Yamazaki appears to teach using mixtures of COS or XOS individually. This is not found persuasive as Yamazaki clearly teaches using COS and/or XOS. Therefore, COS and XOS can be present. While Yamazaki may not teach specifically Examples comprising both COS and XOS, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
As stated in MPEP 2123: The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
In the instant case, Yamazaki clearly teaches that both XOS and COS can be present and therefore renders obvious a composition comprising both.
Applicant further argues that the claimed composition comprising the claimed ratios produces unexpected results in sweetness and aftertaste. Applicant points to the Declaration filed showing experimental data of the unexpected results.
However, as stated above, such arguments are not found persuasive. Applicant states that the results demonstrate that acceptable sweetness was achieved in foodstuff comprising OGS having a ratio of XOS:COS in the range from 19:1 to 1:1, and HIS having a ratio of OGS:HIS in the range from 5000:1 to 50:1.
This is not found persuasive as claim 200 discloses the HIS in an alternate form, wherein the OGS component is combined with a HIS or a bulking sweetener. Therefore, the HIS does not have to be present. Do the same experimental results occur with the use of a bulking sweetener in the claimed ratio?
Additionally, the experiment was conducted using saccharin as the HIS. Again, a HIS does not have to be present, and claim 20 fails to teach that the HIS is saccharin. Do the same experimental results occur with the use of any HIS?
Therefore, applicant’s experimental data results are not commensurate in scope with the claims and this Declaration is not found persuasive.
Further, Yamazaki discloses a sweetener composition comprising an oligosaccharide component comprising xylo-oligosaccharides and cello-oligosaccharides. Yamazaki teaches that the xylo-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight and the cello-oligosaccharides can be present in an amount of 0.1% by weight to 99.99 % by weight ([0045]), which results in a ratio of xylo-oligosaccharides to cello-oligosaccharides that can be 1:1, which overlaps the claimed ratio of 19:1 to 1:1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Yamazaki further teaches that the oligosaccharide component is combined with an additional component that can be a high-intensity sweetener and/or a bulking sweetener ([0041]-[0056]). Yamazaki teaches that the additional component can be present in an amount of 0.01 to 99.99 % by weight, which can result in an overlapping ratio of the oligosaccharide component to high intensity sweetener or the bulking sweetener.
Further, it would have been obvious to one of ordinary skill in the art to vary the amount of each component to result in a desired ratio depending on the desired taste/sweetness and effect of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "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)
For the reasons stated above, the 103 rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791