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 response to applicant’s submission dated January 15, 2026. Any objections and/or rejections made in previous actions and not repeated below are hereby withdrawn.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 1-6, 10-15, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Baniel et al. (US-20160242439-A1) in view of Jochym et al. (“New starch preparations resistant to enzymatic digestion." Journal of the Science of Food and Agriculture 92, no. 4: Page 886-891).
With respect to Claim 1, Baniel et al. describes a method for producing a sweetener that comprises a crystalline carbohydrate and a carrier compound that can be used alone, formulated into a composition or added to a consumable product. [0021] Baniel et al. states that the crystalline carbohydrate may be sucrose [0022] and the carrier may be starches or maltodextrin. [0025] In a preferred embodiment, Baniel et al describes the sweetener composition can be mixed with one or more food additives, such as anticaking agents, bulking agents, modified food starch, maltodextrin and more, such that the food additives comprise between 1-99% of the sweetener composition formulation. [0052] Baniel et al. states that the sweetener compositions disclosed have a particle size distribution wherein at least 90% of the composition is less than 74 microns. [0043], which lies inside the claimed range.
Baniel et al. is silent to the use of a resistant dextrin, a resistant/modified maltodextrin, or a combination thereof.
Jochym et al. presents a study designed to characterize new dextrins obtained from starch, through modification, with a view to their use as potentially prebiotic substances. [Page 887, Col. 1, Par. 3] Jochym et al. states that there is growing demand for functional foods that can be added to foods in order to improve their properties. [Page 886, Col. 1, Par. 1] Jochym et al. states that resistant dextrins can be used to impart desirable effects on food products such as maintaining blood sugar, preventing constipation, possessing prebiotic activity, and more. [Page 887, Col. 1, Par. 2]
Baniel et al. and Jochym et al. exist within the same field of endeavor in that they both refer to the application of food additives. Where Baniel et al. describes a sweetener composition comprising a crystalline carbohydrate and a carrier, Jochym et al. focuses on a single component that is known within the field of endeavor: resistant dextrins derived from potato starch. Baniel et al. allows for the use of modified starches in the form of food additives, but does not provide any clear examples of a modified starch. Jochym et al. provides resistant dextrin, and includes motivation for using it and evidence that it is well known in the field of endeavor to use.
According to the MPEP 2144.07, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have utilized the disclosure, of Jochym et al., to incorporate resistant dextrin as a modified starch in the process of creating the sweetener composition as presented by Baniel et al.
Baniel et al. teaches starches as suitable for use as both the carrier and food additive, and it would have been obvious to have utilized the resistant dextrin of Jocym et al. as both the carrier and food additive due to the nutritional benefits. In combination with the carbohydrate of Baniel et al., the combination reads on a teaching of a sweetener composition as recited in claim 1. Further, where Baniel et al. teaches making the sweetener composition by mixing one or more components and grinding [0056], it would have been obvious to have dry blended the carbohydrate with the bulking agent as claimed in order to provide a sweetener composition. This would have required no more than routine experimentation, as Baniel et al. in view of Jochym et al. teach carbohydrate sweeteners and bulking agents and allow for the ratios recited in claim 1. Thus, the recitation of blending the sweetener “consisting of” the claimed components is not considered to represent an unobvious contribution over the prior art.
Therefore, the combination of Baniel et al. with Jochym et al. provides a process for preparing a sweetener composition that teaches the limitations recited in claim 1.
With respect to Claim 2 and 3, Baniel et al. also teaches a method for reducing particle size by grinding, blending, mortar and pestle, and more. [0044]
With respect to Claim 4, Baniel et al. states that the sweeteners described by the art can be up to 90% composed of 25-micron particles. [0043]
With respect to claims 5 and 6, Baniel et al. states the sweetener composition may comprise one or more sweetener carbohydrates and/or sweetener polyols and a carrier compound. [0021] Baniel et al. states the sweetener carbohydrates may be sucrose [0022] and the carbohydrate polyol may be monosaccharide, disaccharide, or other polyols. [0023]
With respect to Claim 10, Baniel et al teaches the use of an anti-caking agent. [0052]
With respect to Claim 11, Baniel et al. does not mention a surface-active agent as being a possible member of the composition.
With respect to Claim 12 and 13, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (MPEP 2111.03 III) In the instant application, no indication has been provided regarding the basic and novel characteristics. According to the specification, “non-porous” is understood as particles that are not hollow. [0060] Baniel et al. in view of Jochym et al. utilizes crystalline carbohydrates and bulking agents described in the application. As such, the composition comprising bulking agent and crystalline carbohydrate disclosed by Baniel et al. in view of Jochym et al. is interpreted to read on claim 12 and 13.
With respect to Claim 14, Baniel et al. teaches a sweetener comprised of a carbohydrate and a bulking agent that can be a modified food starch. [0052] Jochym et al. provides resistant dextrin as a modified food starch and a motivation for use. [Page 887, Col. 1, Par. 2] Additionally, Baniel et al. states that the sweetener compositions disclosed have a particle size distribution wherein at least 90% of the composition is less than 74 microns. [0043]
According to MPEP 2113 I, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Therefore, the composition described by Baniel et al. in view of Jochym et al. teaches the limitation recited in claim 14.
With respect to claim 15, Baniel et al. teaches the sweetener composition may be incorporated into a consumable product. [0021]
With respect to Claim 17, Baniel et al. teaches the process according to claim 1, wherein the carbohydrate is sucrose. Additionally, Baniel et al. states that the sweeteners described by the art can be up to 90% composed of 25-micron particles. [0043]
According to the MPEP 2144.05 I, “In the case where the claimed range ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The value presented in Baniel et al. lies inside the range recited in claim 17.
With respect to Claim 18, Baniel et al. teaches the limitations recited in claim 17. Jochym et al. presents resistant dextrin as a possible modified starch for use as a food additive in the composition presented by Baniel et al.
With respect to Claim 19, Baniel et al. teaches the limitations recited in claim 17. Additionally, Baniel et al. states that the food additive may be present between 1% and 99% by weight. [0052] The food additive may be modified food starch, such as a bulking agent.
According to the MPEP 2144.05 I, “In the case where the claimed range ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” A sweetener composition with a ratio of sweetener to bulking agent between 1:99 and 99:1, wherein the bulking agent and the sweetener overlaps with the range recited in claim 19 for a ratio of carbohydrate to bulking agent.
With respect to Claims 20-22, Baniel et al. teaches the composition recited in claim 14. Additionally, Baniel et al. states that the sweeteners described by the art can be up to 90% composed of 25-micron particles. [0043] Furthermore, Baniel et al. states that the food additive, including a bulking agent, may present between 1% and 99% by weight. [0052]
According to the MPEP 2144.05 I, “In the case where the claimed range ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” The value of at least 90% of the sweeter composition comprising particles of 25 microns lies inside the range recited in claim 20 and 22. A sweetener composition with a ratio of sweetener to bulking agent between 1:99 and 99:1 overlaps with the range recited in claim 21.
Response to Arguments
Applicant's arguments filed January 15, 2026 have been fully considered but they are not persuasive.
Applicant commences on Page 6, stating “applicant maintains previous arguments”. The responses to applicant’s assertions made in previous office actions are maintained, though not repeated below for the sake of brevity. Applicant is directed to the office action filed October 17, 2025 with regard to examiner’s response to previous arguments.
Applicant continues on Page 6, Lines 5-6, “it is noted that the Examiner confuses or mixes the teachings of Baniel regarding the carrier and the food additive” and on lines 13-14, “Applicant has previously noted that the teachings of the carrier and the bulking agent in Baniel are separate”. Applicant proceeds to provide a carefully selected list of quotations from the teaching of Baniel et al. that disclose the nature of the carrier particle and food additive as understood by the applicant on Pages 6 and 7. Applicant concludes on Page 8, Lines 3-5 that, “It is clear from the above that the teachings related to the carrier are distinct from the teachings related to the food additive, and that the two serve different purposes. Thus, a person of ordinary skill in the art would regard the teachings as separate”.
Applicant is directed to the rejection of claim 1, which cites MPEP 2144.04 IV. C, stating “Selection of any order of mixing ingredients is prima facie obvious”. The carrier and food additive can be the same compound, as taught by Baniel et al. in that they can both be starches, taught in [0025] and [0052] respectively. There is no explicit mention in Baniel et al. that the starch of the carrier compound be native, or unmodified, allowing for the use of a modified food starch as a carrier. Jochym et al. teaches resistant dextrin as a modified food starch that would be obvious to use due to its nutritional benefits, as described in the rejection of claim 1. In the combination of Baniel et al. and Jochym et al., the carrier compound and the food additive would be an identical composition, and MPEP 2144.07 states, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297”.
Therefore, it would have been obvious to add the food additive into the composition while blending the carrier compound, and, wherein the carrier and food additive are the same compound, the range of inclusion of the resistant dextrin crystalline carbohydrate would overlap with the ranges recited in claim 1. For this reason, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, Lines 13-17, “Clearly, if one were to mix 99 wt% (the maximum allowed amount) of, for example, a filler, anticaking agent, antioxidant, bulking agent, color retention agent, emulsifier, humectant, thickener, pharmaceutical excipient, solid diluent, or a salt with the sweetener composition, doing so would not enhance the sweetness of the composition, as would be well understood by persons of ordinary skill in the art”.
Applicant fails to provide any evidence on the record of the statement made with regard to the palatability of the sweetener composition posited. MPEP 2145 I states, “Arguments presented by applicant cannot take the place of evidence in the record”. For this reason, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, Lines 18-19, “The Examiner asserts that it would have been obvious ‘to have utilized the carrier of Jochym et al. in the process of creating the sweetener composition as presented by Baniel et al.’”. Examiner has edited the wording of the rejection of claim 1 to more accurately reflect the teaching of Jochym et al., in that Jochym et al. does not teach a carrier compound, but simply teaches a resistant dextrin. For this reason, applicant’s assertion previously mentioned, as well as the preceding paragraph wherein the applicant refers to “the carrier of Jochym et al.” is moot.
Applicant asserts on Page 9, Lines 1-3, that, “there is no teaching or suggestion to provide the sweetener composition including the food additive with a D90 particle size of 150 microns or less”. Applicant restates examiner’s position with respect to MPEP 2144.01 on lines 4-8, but respectfully disagrees. Applicant concludes on lines 12-15, that, “a person of ordinary skill in the art would not be motivated to reduce the particle size of the entire composition (with up to 99 wt% of food additive) to a D90 particle size of 150 microns or less without a specific reason for doing so”.
Examiner reasserts the previous position that is presented by applicant, and adds that, in view of the rejection of claim 1 as laid out above, a method wherein the food additive is identical to the carrier particle, it would have been obvious to blend with the sweetener, as would have been obvious in view of MPEP 2144.04 IV. C, “Selection of any order of mixing ingredients is prima facie obvious” and MPEP 2144.07 states, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297”. The method described above would have been reduced in size to the D90 taught in Baniel et al. [0043] and would have consisted of a carbohydrate and a resistant dextrin. For this reason, applicant’s assertion is found to be unpersuasive.
Applicant concludes on Page 9, Lines 25-28, “the ratio of the sweetener consisting of one or more crystalline carbohydrate(s) and the carrier in Baniel is 100:6 to 100:12, or if reduced to a total of 100 parts (carbohydrate 100/106 and carrier 6/106; to carbohydrate 100/112 and carrier 12/112), 94:6 to 89:11. These ranges do not overlap with the claimed range of 75:25 to 25:75”, stating on Page 10, Lines 1-2, “Baniel does not teach or suggest blending a sweetener consisting of one or more crystalline carbohydrate(s) with the food additive”.
Applicant is directed to the examiner’s responses above, especially with regard to the selection of the order of adding ingredients and functional use of resistant dextrin within the invention of Baniel et al. For this, and the reasons enumerated above, applicant’s assertions are found to be unpersuasive, and the rejections of claims 1-6, 10-15, and 17-22 are maintained.
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 JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.C.M./Examiner, Art Unit 1791 /Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791