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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/30/2026 has been entered.
Status of Application
Claims 1-4, 13-16 are pending and under consideration. Claims 6-12 remain withdrawn.
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 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “improved sweetness quality” in claim 4 is a relative term which renders the claim indefinite. It is noted that while applicant amends the claim, the term “improved sweetness quality” is in now defined in-part by the term “improved sweetness”. The term “improved sweetness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that what one considers “improved” can vary. Taste panelists can vary in their scoring and perception. For example, one panelist might consistently score a beverage's sweetness higher than others
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.
Claim(s) 1, 4, 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application No. 2019/0343155 (SHI).
SHI teaches a sweetener composition comprising a mixture of steviosides and rebaudiosides (Reb) [0009]. Mixtures may include Reb A, Reb C, Stevioside, Reb F, dulcoside A, and rubusoside [0509]. The steviosides and rebs may be in a variety of mixtures and amounts [0510]. In this regard, it would have been obvious to vary the type and amount of steviosides and rebs based on the desired sweetness and taste
Additionally, it is noted that in [0516] SHI exemplifies a mixture of 25-35% Reb A, 5-15 wt % Reb C, 20-40 wt % Stevioside, and 2-5 wt % Reb F [0516] are present. As to the 5-15 wt % Reb C and 20-40 wt % Stevioside, these amounts overlap those claimed. In [0517], 1-5 wt % Rubusoside and 1-3 wt % Dulcoside A can be used. Again, these claimed amounts overlap.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
As SHI teaches that Reb A is a sweetener [0009], [0356], it would have been obvious to one skilled in the in the art to vary the amount of Reb A, as Reb A is disclosed as a sweetener and one skilled in the art would vary the amount based on the desired sweetness. SHI does teach that the sweetener mix has an improved taste over high intensity natural sweeteners [0396].
SHI teaches that at least 95 wt. % of the one or more sweeteners are glucosylated [1303] – [1305]. At least 95% includes 100%.
While SHI teaches a sweetener mix with ingredients that touch on or overlap the claimed amounts, SHI does not provide an example where the sweetener ingredients in the mix are all glucosylated.
However, given SHI teaches the sweeteners that at least 95 wt. % or more of the sweeteners can be glucosylated [1303] – [1305], it would have been obvious to use the mix in glucosylated form.
SHI teaches a sweetener mix with ingredients that touch on or overlap the claimed amounts and where at least 95 wt. % of the one or more sweeteners can be glucosylated [1303] – [1305].
SHI does not teach how the sweetener mix compares directly to Rebaudioside A. However, SHI does teach that the sweetener mix has an improved taste over high intensity natural sweeteners [0396]. Thus, it would have been obvious that the sweetener mix of SHI provides an improved taste and sweetness quality over a high intensity natural sweetener such as purified Rebaudioside A.
Moreover, applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHI as applied to claim 1 above, and further in view of Lobov S V, Kasai R, Ohtani K, Yamasaki K (1991) Enzymic production of sweet stevioside derivatives: Transglucosylation by glucosidases. Agric Biol Chem 55:2959-2965 (LOBOV).
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SHI teaches a sweetener mix with ingredients that touch on or overlap the claimed amounts and wherein at least 95 wt. % of the one or more sweeteners can be glucosylated [1303] – [1305].
SHI does not teach that the glucosylated rebaudiosides are in a form in which are glucose is bound and added thereto through glucose conjugated to a 19-OH site via an α–(1,6) bond.
However, LOBOV teaches in the right column on pg. 2963 that glucosylation of the 6-hydroxy group of the 19-0-glucosyl moiety resulted in a decrease in the intensity of sweetness but with a remarkable improvement in the quality of taste.
Thus, it would have been obvious to one skilled in the art to provide a glucosylated rebaudiosides are in a form in which are glucose is bound and added thereto through glucose conjugated to a 19-OH site via an α–(1,6) bond as this results in a remarkable improvement in taste.
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At [5338]-[5339], SHI teaches that the glucose molecules can be from 2-6. This overlaps that claimed. It would have been obvious that the Reb A, Reb C and Stevioside would be glucosylated with 2-6 glucose molecules.
Response to Arguments
The applicant does argue that the claimed invention exhibits unexpected results and cites to Table 6 in support of this allegation (see page 4 of applicant’s specification).
However, the results of Table 6 are based on the compositions of Tables 3 to 5 relative to rebaudioside A (i.e., 97% purity) and rely on a Brix content of 10o. Thus, the claims are still not commensurate in scope with the claims as there is no requirement for a specific Brix content and NONE of the examples in Tables 3-5 are commensurate with the claimed composition. Thus, applicant does not establish an unexpected relationship, action, or result between the ingredients, as claimed.
The applicant also argues that glucosylated rebaudioside F is claimed in a range distinct from that of SHI. However, SHI still teaches a range that touched on that claimed (see [0516] of SHI). Moreover, as noted above, the present application has not established that the ranges are critical.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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