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 the Claims
Receipt of Remarks/Amendments filed on 12/17/2025 is acknowledged. Claims 7, 11-13, 18, 25-26, 30-34, 36-41, and 43 are cancelled. Claims 28-29 and 35 are non-elected claims, and are withdrawn. Claims 1-6, 8, 10, 15-17, 19-22, and 42 have been amended. Claims 1-6, 8-10, 14-17, 19-24, 27, and 42 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/03/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Modified Objection/Rejection As Necessitated by the Amendment Filed 12/17/2025
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126. Claim 24 is misnumbered as Claim 25. For compact prosecution, the Examiner will interpret Claim 25 to mean Claim 24. Correction is needed.
Claim 8 is objected to because of the following informalities: It is not easily clear whether the “at least one sugar” being referred to is the same as the sugar in Claim 1, i.e. sucrose or fructose. For clarity, the Examiner recommends amending the recitation to “the at least one sugar”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 14 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 14 recites “as said at least one sugar selected from the group consisting of glucose and fructose”. Applicant has amended Claim 1, from which Claim 14 depends, omitting the glucose feature. As such, there appears to be insufficient antecedent basis for the “glucose” limitation in the claim. Additionally, if glucose is omitted, it is unclear what choices would be included in the sugar selection in addition to fructose. Clarification is required.
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.
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, 15-16, 19-20, 23, 27, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki et al. (US 2020/0107568 A1; Of record), hereinafter Matsuzaki, in view of Roth et al. (The Saccharin Saga – Part 8; Of record), hereinafter Roth.
Matsuzaki discloses a method for reducing a sweet lingering caused by binding of a high-intensity sweetener to at least one of four sites of A, B, C, and D, and wherein a sweetener different from the high-intensity sweetener binds to at least one site other than the site to which the high-intensity sweetener has bound: (A) a VFT part of a taste receptor (B) a linking part of a taste receptor (C) a transmembrane domain of a taste receptor, and (D) a membrane transporter protein of a taste cell (Claim 1). Because the composition is for reducing lingering sweet aftertaste, it is necessarily for oral consumption.
Regarding Claims 1, 16, and 20, Matsuzaki teaches using thaumatin as a high-intensity sweetener, which binds to the linking part of a taste receptor (site B), and glucose, which binds to a glucose transporter part (site D) to reduce the sweet lingering (Example 3). Thaumatin was dissolved in deionized water at a concentration of 9.77 ppm to make Reference solution α2; glucose was dissolved in deionized water at a concentration of 12.3% to make Reference solution β1; reference solution α2 and the reference solution β1 at a ratio of 1:1 (Example 3). By Examiner’s calculation the ratio of thaumatin to glucose is 1:12,589, which is within the claimed range (Tables 4 and 5).
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Matsuzaki does not expressly teach sucrose in an example with thaumatin. However, Matsuzaki teaches wherein the sweetener different from the high-intensity sweetener is at least one selected from the group consisting of trehalose, erythritol, glucose, sucrose, sucralose etc. (Claim 6). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the glucose with sucrose as sweetener. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Matsuzaki does not teach the specific thaumatin is thaumatin I or II.
Roth describes natural low-calorie thaumatin as being the sweet factor in Thaumatococcus danielii, and comprises a mixture of six structurally very similar proteins: thaumatin I, II, III, a, b, and c, each containing precisely 270 amino acids, which begins and ends with alanine (pp. 1-3). Roth teaches that thaumatins I and II have been isolated in 1972, and analyzed for their structures, showing that the two are practically identical in structures (pp. 2-3). Roth also recognizes the sweetening power of thaumatin, which lasts and leaves an aftertaste reminiscent of licorice, making it compatible with Matsuzaki (p. 3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Roth with Matsuzaki and use thaumatin I or II, which has been known for many decades and has been identified to be chief sweetening factors, and low-caloric. One would therefore choose thaumatin I or II as the type of thaumatin to use in the composition of Matsuzaki. As such, Claim 27 is also obvious.
Regarding Claims 2-5, the sucrose and thaumatin features have been rendered obvious above. Matsuzaki teaches a food or beverage comprising the composition for reducing the sweet lingering of a high sweetness sweetener at an amount of about 0.001 % to 99%, preferably about 0.01 % to 95% by weight, about 0.1 % to 90%, about 1 to 85% by weight etc. which overlaps with the claimed range [0119]. 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.
Regarding the amount of thaumatin in Claims 3, and 19, Matsuzaki teaches the ϒ4 comprising 1:1 of thaumatin (9.77 ppm) reference solution α2, and glucose (12.3%) reference solution β1 (Table 4). As such, a food or beverage comprising the composition at 99% would comprise 4.83 ppm thaumatin. Regarding the amount of sucrose, one would start with the amount exemplified by Matsuzaki for glucose and adjust for sucrose as needed. One of ordinary skill in the art would find it obvious to adjust the concentration as a matter of experimentation and optimization. The adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
Regarding Claim 6, Matsuzaki expressly teaches a composition ϒ4 comprising 1:1 of thaumatin (9.77 ppm) reference solution α2, and glucose (12.3%) reference solution β1. As such, a food or beverage comprising the composition at 99% would comprise 6% sugar (Table 4). As above, regarding the amount of sucrose, one would start with the amount exemplified by Matsuzaki for glucose and adjust for sucrose as needed.
Regarding Claim 15, Matsuzaki teaches using the composition for reducing sweet lingering of a high-intensity sweetener in food or beverage including candy, jam, chocolate products etc. [0105]-[0122].
Regarding Claim 23, Matsuzaki teaches blending the composition with trace elements, vitamins etc. [0117].
Regarding Claim 42, the claim requires that the thaumatin is a protein comprises amino acid sequence SEQ ID NO: 5 (Thaumatin I) or SEQ ID NO: 6 (Thaumatin II). Because Roth discloses the same thaumatin I and II claimed, it would necessarily have the same sequence as those indicated in the claim, i.e. SEQ ID NOs. 5 and 6 for thaumatin I and II.
Claims 8-9, 14, 17, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki in view of Roth, as applied to Claims 1, 16, and 23 above, and further in view of Prakash et al. (US 2008/0305212 A1, cited in IDS; Of record), hereinafter Prakash.
The teachings of Matsuzaki have been set forth supra. Matsuzaki is silent on high fructose corn syrup.
Regarding Claim 8 and 14, Prakash is in a related field of interest, and discloses a sweetener composition comprising at least one sweetener and at least one sweetness enhancer chosen from proteins, polyols, etc. wherein the sweetener and the sweetness enhancer are different; wherein the at least one sweetener is glucose, fructose, sucrose, erythritol, high fructose corn/starch syrup (HFCS) and mixtures thereof; wherein the sweetness enhancer, inter alia, thaumatins, rebaudiosides, rubudoside, stevioside (Claims 1, 5, and 7; [0045]). Prakash teaches the HFCS to include HFCS55, HFCS42 or HFCS90, reading on the feature of Claim 9 [0045].
Regarding Claim 17, the ϒ4 composition of Matsuzaki does not comprise sucrose, but rather a combination of thaumatin and glucose (Table 4). Matsuzaki teaches other compositions that reduce effect on sweet lingering to comprise combinations of thaumatin, or fructose with Rebaudioside D (Table 5; [0130]). Prakash teaches rebaudioside and thaumatins as being interchangeable in their roles as sweetness enhancer, and fructose and high fructose corn/starch syrup as sweeteners (Claims 1, 5, and 7; [0045]). Prakash has taught a sweetener composition wherein in the at least one sweetener is glucose, fructose, sucrose, erythritol, high fructose corn/starch syrup (HFCS) and mixtures thereof, and therefore teaches that fructose may be used in place of glucose.
As such, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Prakash with Matsuzaki, and substitute the rebaudioside of Matsuzaki with thaumatin, and add both fructose and HFCS as sweeteners according to Prakash. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Regarding Claim 24, Matsuzaki welcomes the addition of vitamins [0117]. Prakash teaches the addition of ascorbic acid, which is the same as Vitamin C [0069]-[0070].
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki in view of Roth and Prakash, as applied to Claims 1 and 8 above, and further in view of Hanover et al. (The American journal of clinical nutrition 58.5 (1993): 724S-732S, Of record), hereinafter Hanover.
The teachings of Matsuzaki have been set forth supra. Matsuzaki is silent on the composition of high fructose corn syrup.
Regarding Claim 10, Hanover teaches that typical commercial high fructose syrups comprises 71% and 77% solids, and moisture (water) at 23% and 29%; 42% and 55% fructose; and varying amount of dextrose (glucose), ranging from 4-53%; and oligosaccharides from 1-5%, which overlaps with the amounts claimed (p. 727S; Table 3).
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Hanover with that of Matsuzaki and Prakash, and use a typical HFS having the amounts of solids, water, fructose, and glucose at the amount taught by Hanover as these types of HFS would be readily available.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzaki in view of Roth, as applied to Claims 1 and 16 above, and in view of Inoue et al. (US 7,229,658 B1), hereinafter Inoue.
The teachings of Matsuzaki have been set forth supra.
Matsuzaki does not teach the amounts thaumatin and at least one sugar in Claims 21 and 22.
Inoue teaches fructose-containing sweetener compositions and expressly teaches a carbonated fruit/wine drink comprising 20 kg fructose/glucose syrup and 0.1 kg thaumatin in 100 L solution (Example 1; Col. 105, Example IV-1-3). By Examiner’s calculation, this corresponds to 20% fructose/glucose syrup and 1000 ppm thaumatin.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Inoue with that of Matsuzaki and look to Inoue for guidance on starting amounts of thaumatin and fructose to use in the composition of Matsuzaki, and adjust the concentration of fructose as needed to obtain the desired sweetness or consistency. Notably, concentrations are experimental parameter considered to be a result-effect variable that is within the skill of the ordinary artisan to modify and is commonly carried out in the art as part of routine optimization in formulations; the prior art is evidence to this. Merely selecting proportions and ranges is not patentable absent a showing of criticality. The motivation arises from “the normal desire of scientists or artisans to improve upon what is already generally known” (Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382) through routine experimentation. (MPEP 2144.05 IIA and B). The references herein are in the same field of endeavor and they provide a reasonable expectation of success.
Response to Remarks:
Applicant’s argument appears to be centered around the amendment removing glucose from the sugar selection, thereby limiting to “the sugar is "selected from the group consisting of sucrose and fructose". Applicant argues that Matsuzaki does not suggest a combination of a thaumatin with either sucrose and/or fructose.
The Examiner considered the argument but was not persuaded. While Matsuzaki exemplified only glucose with thaumatin, Matsuzaki also teaches wherein the sweetener different from the high-intensity sweetener is at least one selected from the group consisting of trehalose, erythritol, glucose, sucrose, sucralose etc. (Claim 6). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the glucose with sucrose as sweetener. Applicant is reminded that the disclosure of a reference must be considered as expansively as is reasonably possible to determine the full scope of the disclosure and, as a result, is not limited to that which is preferred and/or exemplified.
Applicant argues that although fructose is mentioned by Matsuzaki, fructose is not mentioned in the context of combinations with a site B sweetener (to which thaumatin belongs according to Matsuzaki). For example, in paragraph 0130 of Matsuzaki, fructose is mentioned in the context of rebaudioside D as a high-intensity sweetener binding to site A, but not in the context of thaumatin or other site B sweetener.
This argument was also found unpersuasive. Matsuzaki teaches an embodiment where thaumatin is used as the high-intensity sweetener in lieu of Reb D, and glucose is used as the sweetener different from the high-intensity sweetener [0074]. Matsuzaki teaches thaumatin is a site B binder, and teaches a combination of site A + B combination (Table 5). Matsuzaki also teaches that fructose binds site A [0141]. As such, it is within the skills of one of ordinary skills in the art to combine thaumatin site B binder with site A binder fructose based on the teachings of Matsuzaki.
Applicant argues that Roth provides background information on thaumatin and does not describe a product for oral consumption comprising thaumatin selected from the group consisting of thaumatin I and thaumatin II and a sugar.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Matsuzaki teaches thaumatin; Roth is relied on to teach the types of thaumatin, which Matsuzaki does not teach. Obviousness is established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Applicant remarks that Prakash contains a very long list of examples of sweetness enhancers and would not suggest to an ordinary artisan the combination of a thaumatin and any one of sucrose, fructose, glucose, and HFCS. Consequently, Prakash also cannot suggest a product for oral consumption comprising thaumatin selected from the group consisting of thaumatin I and thaumatin II and at least one sugar that is HFCS (or fructose or sucrose) in a mass ratio as defined in claim 1 ( or an amended claim 8). Applicant further argues that the ordinary artisan would not to tum to Prakash or to consider HFCS as a solution to solve the problem of reducing a sweet lingering of e.g. a thaumatin.
The Examiner traverses. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Prakash is relied on to teach the addition of HCFS; Prakash teaches rebaudioside and thaumatins as being interchangeable in their roles as sweetness enhancer, and fructose and high fructose corn/starch syrup as sweeteners (Claims 1, 5, and 7; [0045]). Prakash has taught a sweetener composition wherein in the at least one sweetener is glucose, fructose, sucrose, erythritol, high fructose corn/starch syrup (HFCS) and mixtures thereof. Furthermore, see regarding In re Levin supra.
Conclusion
No claims are allowed.
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792