DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/04/2026 has been entered.
Applicants' arguments, filed 08/04/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 .
Priority
The instant application claims foreign priority to PCTCN2020101891 filed 07/14/2020 and EP20188441.8 filed 07/29/2020. The instant application is a 371 of PCT/EP2021/069365 filed 07/12/2021.
Information Disclosure Statement
The information disclosure statement filed 08/04/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the English copies are too blurry to be read. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
I) Claims 1-2, 4-5, 10-11, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al (US Patent Application Publication 20160029677A1, provided in the IDS filed 12/20/2022) in view of Gin et al. (US Patent Application Publication 20040151771A1).
Prakash relates generally to novel glucosyl steviol glycosides, as well as compositions comprising such novel glucosyl steviol glycosides. The present invention further extends to methods of purifying such glucosyl steviol glycosides, methods for preparing compositions comprising such glucosyl steviol glycosides (e.g., consumables) and methods for enhancing the taste or sweetness of consumables using such glucosyl steviol glycosides (Prakash at [0002]). Prakash recites a composition further comprising glucosylated steviol glycosides wherein glucosylated steviol glycosides are selected from the group consisting of a GSG mixture prepared by enzymatic glucosylation of a stevia extract, where the stevia extract was prepared from Stevia rebuadiana (Bertoni) or a commercially available stevia extract; by-products of other glucosyl steviol glycosides' isolation and purification processes; a commercially available GSG mixture; individual glucosylated steviol glycosides and combinations thereof (Prakash at claim 20). Prakash recites wherein the at least one additional sweetener is selected from the group consisting of sucrose, fructose, glucose, high fructose corn syrup or starch, xylose, arabinose, rhamnose, erythritol, xylitol, mannitol, sorbitol, inositol, AceK, aspartame, neotame, sucralose, saccharine, naringin dihydrochalcone (NarDHC), neohesperidin dihydrochalcone (NDHC), rebaudioside A, rebaudioside B, rebaudioside C (dulcoside B), rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, rebaudioside M, dulcoside A, rubusoside, stevia leaf extract, stevioside, glycosylated steviol glycosides, mogrosides, mogroside V, isomogroside, mogroside IV, Luo Han Guo fruit extract, siamenoside, monatin and its salts, curculin, glycyrrhizic acid and its salts, thaumatin, monellin, mabinlin, brazzein, hernandulcin, phyllodulcin, trilobatin and combinations thereof (Prakash as claim 22). Prakash recites a composition further comprising at least one additive selected from the group consisting of carbohydrates, polyols, amino acids and their corresponding salts, poly-amino acids and their corresponding salts, sugar acids and their corresponding salts, nucleotides, organic acids, inorganic acids, organic salts including organic acid salts and organic base salts, inorganic salts, bitter compounds, flavorants and flavoring ingredients, astringent compounds, proteins or protein hydrolysates, surfactants, emulsifiers, flavonoids, alcohols, polymers and combinations thereof (Prakash at claim 23). Prakash recites a composition further comprising at least one functional ingredient selected from the group consisting of saponins, antioxidants, dietary fiber sources, fatty acids, vitamins, glucosamine, minerals, preservatives, hydration agents, probiotics, prebiotics, weight management agents, osteoporosis management agents, phytoestrogens, long chain primary aliphatic saturated alcohols, phytosterols and combinations thereof (Prakash at claim 24). Prakash teaches that the composition may be a mouth freshening agents, gargling agents, mouth rinsing agents, toothpaste, tooth polish, dentifrices, mouth sprays, teeth-whitening agent, or dental floss (Prakash at [0332]). Prakash teaches that suitable base materials for embodiments of this invention include, but are not limited to, water, sodium lauryl sulfate or other sulfates, humectants, enzymes, vitamins, herbs, calcium, flavorings (e.g., mint, bubblegum, cinnamon, lemon, or orange), surface-active agents, binders, preservatives, gelling agents, pH modifiers, peroxide activators, stabilizers, coloring agents, or similar type materials, and combinations thereof (Prakash at [0336]).
Prakash teaches that the at least one sweetness enhancer is present in an amount ranging from about 0.5 ppm to about 1000 ppm (Prakash at [0116]). Prakash further teaches that the at least one sweetness enhancer may be present in an amount ranging from about 1 ppm to about 300 ppm, from about 0.1 ppm to about 75 ppm, or from about 500 ppm to about 3,000 ppm (Prakash at [0116]). Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of sucrose, glyceraldehyde, dihydroxyacetone, erythrose, threose, erythrulose, arabinose, lyxose, ribose, xylose, ribulose, xylulose, allose, altrose, galactose, glucose, gulose, idose, mannose, talose, fructose, psicose, sorbose, tagatose, mannoheptulose, sedoheltulose, octolose, fucose, rhamnose, arabinose, turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, mogroside IV, mogroside V, Luo han guo, siamenoside, monatin and its salts (monatin SS, RR, RS, SR), curculin, glycyrrhizic acid and its salts, thaumatin, monellin, mabinlin, brazzein, hernandulcin, phyllodulcin, glycyphyllin, phloridzin, trilobatin, baiyunoside, osladin, polypodoside A, pterocaryoside A, pterocaryoside B, mukurozioside, phlomisoside I, periandrin I, abrusoside A, steviolbioside and cyclocarioside I, sugar alcohols such as erythritol, sucralose, potassium acesulfame, acesulfame acid and salts thereof, aspartame, alitame, saccharin and salts thereof, neohesperidin dihydrochalcone, cyclamate, cyclamic acid and salts thereof, neotame, advantame, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]). Prakash teaches the use of menthol (Prakash at [0106]) and thymol (Prakash at [0171]). Prakash teaches the use of stannous fluoride as an anticaries agent (Prakash at [0334]). Prakash teaches the use of zinc (Prakash at [0213-0220]).
Prakash differs from the instant claims in this rejection insofar as it does not specifically teach the use of zinc citrate. The teachings of Gin cure this deficit.
Gin teaches a flavored dosage forms providing sustained release in the mouth (Gin at abstract). Gin teaches the use of aspartame, saccharin, saccharin salts (e.g., sodium saccharin, calcium saccharin), sucralose, acesulfame-K (potassium acetosulfam), sorbitol, xylitol, stevioside, steviol, mannitol, erythritol, lactitol, alitame, miraculin, monellin, and thaumatin (Gin at [0053]). Gin teaches that ionizable zinc compounds are useful for reducing the duration and/or symptoms of common colds, managing upper respiratory allergy, as nutritional agents, and in treating halitosis, i.e., for reducing or eliminating bad breath. Ionizable zinc compound may be an inorganic or organic complex; examples of suitable complexes include zinc gluconate, acetate, chloride, propionate, butyrate, n-butyrate, beta-hydroxybutyrate, benzoate, formate, and sulfate (Gin at [0072]). Gin teaches the use of zinc citrate (Gin at [0094]). Gin further teaches that the gradual release of a flavoring agent in the mouth, also serves to minimize the unpleasant, bitter taste of many zinc-containing compounds. In addition, conventional zinc lozenges last only minutes, so that the availability of zinc in the mouth is limited, which correspondingly limits the capability of the zinc to exert a maximal antiviral effect (Gin at [0072]).
The teachings of Gin differ from the instant claim insofar as it does not specifically teach the amount of steviols in the composition. The teachings of Prakash cure this deficit.
It would have been prima facie obvious to one of ordinary skill in the art to have used the zinc citrate or zinc chloride as the zinc used in the composition of Prakash as Gin teaches the benefits to reducing the duration and/or symptoms of common colds, managing upper respiratory allergy, as nutritional agents, and in treating halitosis of zinc chloride and zinc citrate in oral care compositions. See MPEP 2144.06. See MPEP 2144.07. One would have a reasonable expectation of success because Gin teaches the benefits of zinc in the oral health care and teaches that it has an unpleasant taste that requires flavoring release.
One would be motivated to use the zinc chloride and zinc citrate as the zinc in Prakash for the benefit of reducing the duration and/or symptoms of common colds, managing upper respiratory allergy, as nutritional agents, and in treating halitosis as taught by Gin. See MPEP 2144 (II).
Regarding instant claim 1, Prakash relates generally to novel glucosyl steviol glycosides, as well as compositions comprising such novel glucosyl steviol glycosides. The present invention further extends to methods of purifying such glucosyl steviol glycosides, methods for preparing compositions comprising such glucosyl steviol glycosides (e.g., consumables) and methods for enhancing the taste or sweetness of consumables using such glucosyl steviol glycosides (Prakash at [0002]). Prakash teaches that the at least one sweetness enhancer is present in an amount ranging from about 0.5 ppm to about 1000 ppm (Prakash at [0116]), which overlaps the instantly claimed range of from 5ppm to 200ppm. 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 the use of zinc (Prakash at [0213-0220]). Gin teaches the use of zinc citrate (Gin at [0094]).
Regarding instant claim 2, Prakash teaches that the composition may be a mouth freshening agents, gargling agents, mouth rinsing agents, toothpaste, tooth polish, dentifrices, mouth sprays, teeth-whitening agent, or dental floss (Prakash at [0332]). Gin teaches a flavored dosage forms providing sustained release in the mouth (Gin at abstract).
Regarding instant claim 4, Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, abrusoside A, steviolbioside and cyclocarioside I, sucralose, saccharin and salts thereof, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]). Gin teaches the use of aspartame, saccharin, saccharin salts (e.g., sodium saccharin, calcium saccharin), sucralose, acesulfame-K (potassium acetosulfam), sorbitol, xylitol, stevioside, steviol, mannitol, erythritol, lactitol, alitame, miraculin, monellin, and thaumatin (Gin at [0053]).
Regarding instant claim 5, Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, abrusoside A, steviolbioside and cyclocarioside I, sucralose, saccharin and salts thereof, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]). Gin teaches the use of aspartame, saccharin, saccharin salts (e.g., sodium saccharin, calcium saccharin), sucralose, acesulfame-K (potassium acetosulfam), sorbitol, xylitol, stevioside, steviol, mannitol, erythritol, lactitol, alitame, miraculin, monellin, and thaumatin (Gin at [0053]).
Regarding instant claim 10, Prakash teaches the dental composition may have a base of water. Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, abrusoside A, steviolbioside and cyclocarioside I, sucralose, saccharin and salts thereof, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]). Prakash teaches the use of stannous fluoride as an anticaries agent (Prakash at [0334]). Prakash teaches that the at least one sweetness enhancer is present in an amount ranging from about 0.5 ppm to about 1000 ppm (Prakash at [0116]), which overlaps the instantly claimed range of from 5ppm to 200ppm. 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 the use of zinc (Prakash at [0213-0220]). Gin teaches the use of zinc citrate (Gin at [0094]).
Regarding instant claim 11, Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, abrusoside A, steviolbioside and cyclocarioside I, sucralose, saccharin and salts thereof, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]). Gin teaches the use of aspartame, saccharin, saccharin salts (e.g., sodium saccharin, calcium saccharin), sucralose, acesulfame-K (potassium acetosulfam), sorbitol, xylitol, stevioside, steviol, mannitol, erythritol, lactitol, alitame, miraculin, monellin, and thaumatin (Gin at [0053]).
Regarding instant claim 16, Prakash teaches that the at least one sweetness enhancer is present in an amount ranging from about 0.5 ppm to about 1000 ppm (Prakash at [0116]), which overlaps the instantly claimed range of from 200ppm to 5000ppm. 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).
Regarding instant claim 17, Prakash teaches the use of zinc (Prakash at [0213-0220]). Gin teaches the use of zinc citrate (Gin at [0094]).
Regarding instant claim 18, Prakash further teaches that suitable sweeteners are selected from, but not limited to, the group consisting of turanose, sialose, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside H, rebaudioside L, rebaudioside K, rebaudioside J, rebaudioside N, rebaudioside O, dulcoside A, dulcoside B, rubusoside, stevia, stevioside, abrusoside A, steviolbioside and cyclocarioside I, sucralose, saccharin and salts thereof, glucosylated steviol glycosides (GSGs) and combinations thereof (Prakash at [0123]).
Regarding instant claim 19, Prakash teaches that the at least one sweetness enhancer is present in an amount ranging from about 0.5 ppm to about 1000 ppm (Prakash at [0116]), which overlaps the instantly claimed range of from 200ppm to 5000ppm. 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).
Regarding instant claim 20, Prakash teaches the use of zinc (Prakash at [0213-0220]). Gin teaches the use of zinc citrate (Gin at [0094]).
Response to Arguments and Affidavit
Applicant’s arguments, see remarks and affidavit, filed 08/04/2026, with respect to the rejection(s) of claims under Prakash have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Prakash and Gin.
With regards to the unpleasant taste of zinc, please see rejection above in view of Gin. Gin teaches the use of zinc citrate (Gin at [0094]). Gin further teaches that the gradual release of a flavoring agent in the mouth, also serves to minimize the unpleasant, bitter taste of many zinc-containing compounds (Gin at [0072]). The method taught by Prakarsh would by its use to enhance taste or sweeteness in the composition with the tastants that are considered undesirable would reduce undesirable tastes. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) See MPEP 2112.02(I).
The Applicant argues that the unexpected effects of GSG in the presence of zinc chloride, zinc phosphate, and zinc citrate overcome the obviousness rejections.
The Examiner does not agree. The burden is on Applicant to explain the data and its practical and statistical significance. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). See MPEP 716.02(b)(II). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP 716.02(b)(I). The data provided in the specification and affidavit do not to the Examiner’s understanding provide a statistical significance between results. Examples of statistical significance include error bars, r-values, and p-values. Nor to the best of the Examiner’s understanding has a practical significance between the values within the data been explained. Examples of practical significance include the practical significance between a bitterness of 3 and a bitterness of 4. Were such statistical and practical significances provided the claims would not be commensurate in scope of the compositions that provides the results. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). The claimed ranges are larger than the tested ranges. As a note for clarity to the best of the Examiner’s understanding 1ppm is roughly equivalent to 0.0001% and 100ppm is roughly equivalent to 0.01%. Because there is no case of expected results established and the claims are not presently commensurate in scope with the results the obviousness rejection stands. As such, Applicant’s arguments are not persuasive and the obviousness rejection is maintained.
Relevant Prior Art
Park et al (US Patent Application Publication 20130039932A1)
Disclosed is a quickly soluble oral film dosage for masking a nasty taste, in particular, a quickly soluble oral film dosage comprising a stevioside based sweetener and a high potency sweetener in a ratio by weight (w/w) of 1:3 to 3:1, which may efficiently mask a bitter or nasty taste of a medicine and may be quickly dissolved in a mouth without water, thereby improving an aftertaste thereof thus enhancing dosage acceptability of a patient (Park at abstract).
The relevant prior art is presented for completeness of the record and compact prosecution. In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of rejections over similar references. The examiner is not called upon to cite all references that may be available, but only the "best." (See 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. See MPEP 904.03, third paragraph in section. The examiner takes the position that Park appears to be just as good as Prakash and Gin. As such, no rejection over Park has been written in view of the provisions of MPEP 904.03.
Chevet et al. (US Patent Application 20130064781A1)
The subject of the invention is the use of a sweetener such as sucralose or an extract of Stevia, for masking the bitterness of hydrophilic organic UV-screening agents in cosmetic or dermatological compositions. The sweetener may advantageously be used in combination with a mint aroma or a salt, for example sodium chloride. This mixture of sweetener with a second gustatory agent makes it possible to mask the bitterness of the hydrophilic UV-screening agent without changing the nature of the fragrance or the colour of the composition (Chevet at abstract).
The first sweetening gustatory agent preferably represents from 0.05 to 2% by weight, more preferably from 0.1 to 1% by weight, preferentially from 0.2 to 0.6% by weight, more preferentially from 0.4 to 0.5% by weight, of the weight of the composition.
The sweetener is advantageously water-soluble and can be chosen from the group consisting of the following compounds: sucrose, glucose, fructose, acesulfame K, aspartame, cyclamic acid and also its sodium, potassium and calcium salts, isomalt, saccharin and also its sodium, potassium and calcium salts, sucralose, alitame, thaumatin, glycyrrhizic acid and its salts, neohesperidin dihydrochalcone, steviol glucosides, neotame, the aspartame-acesulfame salt, tagatose, polyglycitol syrup, maltitol, lactitol, xylitol and erythritol, and mixtures thereof.
The sweetener preferably has a sweetening power greater than or equal to 50 times, preferably greater than or equal to 100 times, that of sucrose.
According to one advantageous embodiment, the sweetener is sucralose (CAS number 56038-13-2).
According to another embodiment, the sweetener is chosen from steviol glucosides and plant extracts containing them. The sweetener is, for example, chosen from stevioside, steviolbioside, rebaudiosides A, B, C, D and E, dulcosides A and B, and mixtures thereof. The sweetener is preferably rebaudioside A (sometimes called stevioside) or a plant extract containing rebaudioside A.
Rebaudioside A is a heteroside, the aglycone part of which, called steviol, is linked to two oside groups: one glucose unit and one glucose triholoside (IUPAC name: 19-O-beta-glucopyranosyl-13-O-(beta-gluco-pyranosyl(1-2)-beta-glucopyranosyl(1-3))-beta-glucopyranosyl-β-hydroxykaur-16-en-19-oic acid and CAS No. 58543-16-1). Its sweetening power is 250 to 450 times greater than that of sucrose.
Rebaudioside A can be advantageously extracted from Stevia, more precisely from its leaves. The species Stevia rebaudiana for example contains same. Use may be made, in the context of the invention, of an extract of Stevia rebaudiana, such as that sold under the reference Rebaten 97% Sweetener® by the company SEPPIC.
The plants of the Stevia genus grow naturally in Paraguay; they are also cultivated in South America and in Asia. In order to extract rebaudioside A therefrom, the leaves of the plant are dried and reduced to powder, before undergoing aqueous extraction and then purification.
The composition can advantageously comprise at least one second gustatory agent, which is chosen from taste enhancers and aromas. The second gustatory agent is preferably water-soluble.
The combination of the two gustatory agents allows persistent masking of the bitterness of the bitter UV-screening agent, or even definitive masking of the bitterness of this screening agent in the composition, once it has been applied to the lips (Chevet at [0035-0045])
The taste enhancers are in particular chosen from sodium chloride, potassium chloride, zinc chloride, glutamic acid (Chevet at [0047]).
The relevant prior art is presented for completeness of the record and compact prosecution. In selecting the references to be used in rejecting the claims, the examiner should carefully compare the references with one another and with the applicant’s disclosure to avoid an unnecessary number of rejections over similar references. The examiner is not called upon to cite all references that may be available, but only the "best." (See 37 CFR 1.104(c).) Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided. See MPEP 904.03, third paragraph in section. The examiner takes the position that Chevet appears to be just as good as Prakash and Gin. As such, no rejection over Chevet has been written in view of the provisions of MPEP 904.03.
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 1-2, 4-5, 10-11, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over;
claims 9, 13, and 20-21 of copending Application No. 17/995,734 (reference application),
claims 12-13, 18-21, 22, and 25-28 of copending Application No. 18/251,425 (reference application),
claims 1-13 and 16-23 of copending Application No.18/562,700 (reference application),
claims 1 and 3-19 of copending Application No. 18/566,390 (reference application),
claims 1-10 and 13-22 of copending Application No. 18/684,925 (reference application), and
claims 22-37 of copending Application No. 18/847,742(reference application), in view of Prakash et al (US Patent Application Publication 20160029677A1, provided in the IDS filed 12/20/2022) and Gin et al. (US Patent Application Publication 20040151771A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite the use of glucosylated natural steviol glycosides used or added in products. All of the claims or specifications above further denote the use of zinc. All of the above reference applications recites glucosylated natural steviol glycosides used or added in products for the benefit of the sweet flavor.
The teachings of Prakash and Gin are discussed above.
It would have been prima facie obvious to have used the amount of glucosylated natural steviol glycosides as taught by Prakash in the reference applications as Prakash teaches that this range provides a good degree of increased sweetness for the composition. See MPEP2144.07. See MPEP 2144.05(I).
One would be motivated to use the zinc chloride and zinc citrate as the zinc in oral compositions for the benefit of reducing the duration and/or symptoms of common colds, managing upper respiratory allergy, as nutritional agents, and in treating halitosis as taught by Gin. See MPEP 2144 (II).
Reference claims and prior art combine to produce a prima facie case of obviousness type non-statutory double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see remarks, filed 08/04/2026, with respect to the rejection(s) of claims under reference patents and reference applications have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of reference patents and reference applications in view of Prakash and Gin.
Since terminal disclaimers have not yet been filed, the non-statutory double patenting rejections are maintained.
Conclusion
No claims are presently allowable.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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