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 Claims
Claims 1-3, 8-14, 16, 18-24 are pending in this application. Claims 1-3, 8-14, 16 and 18 are under examination. Claims 19-24 are withdrawn. Any objections or rejections not repeated below have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites the following, “wherein the beverage… is an energy drink.” However, upon further review of the specification it is found that this limitation is never disclosed in the specification. The specification does not discuss the beverage being an “energy drink,” it only states that the beverage is “energy drink-flavored.” Thus, the limitation of claim 11 is considered new matter since the limitation is not present in the disclosure.
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 1-3, 8-9, 11-12, 14, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. US 20070116832 (cited on IDS dated 10/31/2023).
Regarding claims 1 and 16, Prakash teaches a beverage (orally ingestible composition or sweetened composition, including a beverage; [0866]), as required by claim 1.
Prakash discloses the beverage comprises (a) a high-intensity sweetener (natural high-potency sweetener; [0029], [0867]), as required by claim 1, where the high intensity sweetener is at least one selected from the group consisting of rebaudioside D, Lou Han Guo extract, mogroside V, and a combination thereof, as required by claim 1 [0029]. Prakash teaches wherein the high-intensity sweetener further comprises at least one selected from the group consisting of rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside E, rebaudioside F, dulcoside A, rubusoside, stevioside, thaumatin, brazzein, saccharin, aspartame, sucralose and a combination thereof, as required by claim 16 [0029], [0050].
Prakash teaches the high-intensity sweetener (natural high-potency sweetener) is used in the beverage (sweetenable composition) at an amount from 1-5,000 ppm [0867-0868]. This encompasses the claimed amount of high-intensity sweetener used in the composition from 20 to 800 ppm, as required by claim 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. See MPEP 2144.05(I).
Claim 1 recites the limitation “a high-intensity sweetener in an amount corresponding to a sweetness intensity X1… wherein the sweetness intensity X1 is a numerical value obtained by multiplying a degree of sweetness of the high-intensity sweetener by its concentration (w/v%), when a sweetness intensity of sucrose per unit concentration Brix 1 is defined as a degree of sweetness of 1.” Prakash meets this limitation. As recited above Prakash teaches a high intensity sweetener (natural high-potency sweetener; [0029]), where the high intensity sweetener is selected from rebaudioside D [0029], and can be in an amount between 1-5,000 pm [0867], for example an amount of 200 ppm. The instant specification [0060] states the degree of sweetness of rebaudioside D is about 225 and when multiplied by the concentration of 200 ppm (0.02) = 4.5. Thus, X1 = 4.5 and 0.1<X1 is satisfied.
Prakash teaches (b) an amino acid; where the amino acid is selected from glycine, alanine, serine, and a combination thereof, as required by claim 1 [0075]. Prakash discloses the composition wherein a content of amino acid additive ranges from about 10-500 mOsmoles/L, which is 10-500 mM [0769]. This encompasses the content of glycine from 10 to 80 mM, and overlaps the content of alanine from 1 to 30 mM, and the content of serine from 1 to 30 mM, as required by claim 1. See MPEP 2144.05(I).
Prakash teaches an amino acid in an amount less than a taste recognition threshold, as required by claim 1 (may further comprise the functional ingredient of an amino acid as a sweet taste improving additive; [0028], [0075]). Since Prakash teaches the amino acid as a sweet taste improving additive, the addition of the amino acid is not to impart a flavor of its own but to improve the sweet taste of the composition. Therefore, it is considered as being present in the composition at an amount of less than a taste recognition threshold as one would not be able to distinguish the taste of the amino acid but only distinguish an improved sweet taste. Additionally, Prakash teaches the amount of amino acid additive, selected from glycine, alanine, serine, and a combination thereof, within the claimed ranges, as shown above. Therefore, Prakash is viewed as containing an amino acid in an amount less than a taste recognition threshold, as required by claim 1.
Prakash teaches a substantially identical beverage to the claimed beverage with components (a) to (b), as shown by the rejection above. Therefore, since the composition of Prakash is substantially identical to the claimed composition it is considered to possess the property of a sweetness intensity of X3, where 0.1<X1<X3 is satisfied, as required by claim 1, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Prakash teaches the beverage comprises a low-intensity sweetener (a sweet taste improving composition including carbohydrates; [0064]), and the low-intensity sweetener comprises glucose, sucrose, or a combination thereof, as required by claim 1 [0072], [0111].
Prakash teaches the beverage is one selected from a sparkling beverage (carbonated beverages; [0866]) and flavored water (beverages with fruit flavorings and near water and the like drinks; [0866]).
Regarding claims 2-3, Prakash teaches a beverage (orally ingestible composition or sweetened composition, including a beverage; [0866]), as required by claims 2-3.
Prakash discloses the beverage comprises (a) a high-intensity sweetener (natural high-potency sweetener; [0029], [0867]), as required by claims 2-3, where the high intensity sweetener is at least one selected from the group consisting of rebaudioside D, Lou Han Guo extract, mogroside V, and a combination thereof, as required by claims 2-3 [0029].
Prakash teaches the high-intensity sweetener (natural high-potency sweetener) is used in the beverage (sweetenable composition) at an amount from 1-5,000 ppm [0867-0868]. This encompasses the claimed amount of high-intensity sweetener used in the composition from 20 to 800 ppm, as required by claims 2-3. 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).
Claims 2-3 recite the limitation “a high-intensity sweetener in an amount corresponding to a sweetness intensity X1… wherein the sweetness intensity X1 is a numerical value obtained by multiplying a degree of sweetness of the high-intensity sweetener by its concentration (w/v%), when a sweetness intensity of sucrose per unit concentration Brix 1 is defined as a degree of sweetness of 1.” Prakash meets this limitation. As recited above Prakash teaches a high intensity sweetener (natural high-potency sweetener; [0029]), where the high intensity sweetener is selected from rebaudioside D [0029], and can be in an amount between 1-5,000 pm [0867], for example an amount of 200 ppm. The instant specification [0060] states the degree of sweetness of rebaudioside D is about 225 and when multiplied by the concentration of 200 ppm (0.02) = 4.5. Thus, X1 = 4.5 and 0.1<X1 is satisfied.
Prakash teaches (b) an amino acid; where the amino acid is selected from glycine, alanine, serine, and a combination thereof, as required by claims 2-3 [0075]. Prakash discloses the composition wherein a content of amino acid additive ranges from about 10-500 mOsmoles/L, which is 10-500 mM [0769]. This encompasses the content of glycine from 10 to 80 mM, and overlaps the content of alanine from 1 to 30 mM, and the content of serine from 1 to 30 mM, as required by claims 2-3. See MPEP 2144.05(I).
Prakash teaches an amino acid in an amount less than a taste recognition threshold, as required by claims 2-3 (may further comprise the functional ingredient of an amino acid as a sweet taste improving additive; [0028], [0075]). Since Prakash teaches the amino acid as a sweet taste improving additive, the addition of the amino acid is not to impart a flavor of its own but to improve the sweet taste of the composition. Therefore, it is considered as being present in the composition at an amount of less than a taste recognition threshold as one would not be able to distinguish the taste of the amino acid but only distinguish an improved sweet taste. Additionally, Prakash teaches the amount of amino acid additive, selected from glycine, alanine, serine, and a combination thereof, within the claimed ranges, as shown above. Therefore, Prakash is viewed as containing an amino acid in an amount less than a taste recognition threshold, as required by claims 2-3.
Prakash teaches (c) sodium, as required by claims 2-3 (an inorganic salt, comprising sodium; [0064], [0093], claims 8, 20, 21, 58, 59). Prakash teaches the sodium is in the composition at an amount from about 50-5,000 ppm, which is 5-500 mg/100ml [0848]. This encompasses the claimed range of 7-30 mg/100 ml of sodium, required by claims 2-3. See MPEP 2144.05(I).
Prakash discloses the sodium comprises sodium gluconate, as required by claims 2-3 [0093].
Prakash teaches a substantially identical beverage to the claimed beverage with components (a) to (c), as shown by the rejection above. Therefore, since the composition of Prakash is substantially identical to the claimed composition it is considered to possess the property of a sweetness intensity of X2, where 0.1<X1<X2 is satisfied, as required by claims 2-3, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Prakash teaches the beverage comprises a low-intensity sweetener (a sweet taste improving composition including carbohydrates; [0064]), and the low-intensity sweetener comprises glucose, sucrose, or a combination thereof, as required by claims 2-3 [0072], [0111].
Prakash teaches the beverage is a sparkling beverage (carbonated beverages; [0866]), as required by claim 2, or Prakash teaches the beverage is flavored water (beverages with fruit flavorings and near water and the like drinks; [0866]), as required by claim 3.
Regarding claim 8, Prakash teaches the beverage as discussed above in claim 1. Prakash, which teaches a near water like beverage [0866], is silent as to the Kcal of energy provided by the beverage. However, Prakash discloses a substantially identical beverage to the claimed beverage, as shown by the rejection for claim 1. Therefore, since the beverage of Prakash is substantially identical to the claimed beverage and is a near water like beverage, it is considered to possess the property of providing 50 Kcal/100 ml or less of energy, absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Regarding claim 9, Prakash teaches the beverage as discussed above in claim 1. Prakash discloses the low-intensity sweetener (carbohydrates, including sucrose) can be in the composition from about 1,000-100,000 ppm [0765], which would provide a sweetness intensity, when sucrose is used at this range, of 0.1 to 10. This encompasses the sweetness intensity of the low-intensity sweetener of 0.1 to 5.9. See MPEP 2144.05(I). Please note that the sweetness intensity is dependent on the type of low-intensity sweetener selected and the above sweetness intensity of Prakash was calculated using sucrose, see pg. 57 Table 1 of the instant specification.
Regarding claim 11, Prakash teaches the beverage as discussed above in claim 2. Prakash discloses the beverage is an orange-flavored (citrus-flavored such as orange), lemon-flavored (citrus-flavored such as lemon-lime), lime-flavored (citrus-flavored such as lime-flavored), ginger ale-flavored or cola-flavored beverage [0866].
Regarding claim 12, Prakash teaches the beverage as discussed above in claim 3. Prakash is silent as to having an absorbance of 0.06 or less at a wavelength of 660 nm for the flavored water (near water like beverage; [0866]). In the instant specification at [0027] it states the absorbance at a wavelength of 660 nm serves as an index of clearness, and flavored water having an absorbance of 0.06 or less can be said to be a clear beverage. Prakash discloses a substantially identical beverage to the claimed beverage, as shown by the rejection for claim 3. Therefore, since the beverage of Prakash is substantially identical to the claimed beverage and is a near water like beverage, it is considered to possess the property of having an absorbance of 0.06 or less at a wavelength of 660 nm for the flavored water (near water like beverage; [0866]), absent convincing arguments or evidence to the contrary. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (MPEP §2112.01 (I)).
Regarding claim 14, Prakash teaches the beverage as discussed above in claim 1. Prakash discloses the low-intensity sweetener (carbohydrates; [0072]) further comprises at least one selected from the group consisting of fructose, maltose, high fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof [0072], [0111].
Regarding claim 18, Prakash teaches the beverage as discussed above in claim 1. Prakash teaches the beverage is packed in a container (liquids are packaged; [0858]).
Claims 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. US 20070116832 as applied to claims 2 and 3 above, and further in view of Urai et al. US 20170215458.
Regarding claims 10 and 13, Prakash teaches the beverage as discussed above in claims 2 and 3. Prakash does not state the gas pressure used to carbonate the beverage.
Urai teaches a carbonated beverage comprising a high intensity sweetener (stevia extract; Abstract). Urai teaches wherein a carbon dioxide pressure at 20° C (measurement of gas pressure set at 20°C) is 4.0 kgf/cm2 or less [0050]. This encompasses the claimed range of 2.2 to 4.0 kgf/cm2, as required by claim 10, and less than 1.0 kgf/cm2, as required by claim 13. See MPEP 2144.05(I). Urai teaches that carbonated beverages are visually pleasing and give the drinker a refreshing feeling in the throat [0004].
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Prakash to incorporate the teachings of Urai, to have the composition have the claimed carbon dioxide gas pressure of claim 2 or of claim 3, because carbonated beverages are visually pleasing and give the drinker a refreshing feeling in the throat [0004].
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 1-3 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 10-11 of copending Application No. 17/788,115 (hereinafter ‘115). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘115 teaches an oral composition. This reads on claims 1-3 of the instant application, which teaches a beverage and is viewed as an oral composition.
Conflicting claim 1 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1. This reads on claims 1-3 of the instant application.
Conflicting claim 1 teaches (b) sodium that encompasses the claimed range for the instant application claims 2-3. See MPEP 2144.05(I). Conflicting claim 1 teaches sodium but does not specify wherein the sodium comprises sodium gluconate, as stated in claims 2-3 of the instant application. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified ‘115 to use any sodium ingredient used in the making of a beverage, including sodium gluconate, with the composition as taught by ‘115. See MPEP 2144.08.
Conflicting claim 1 teaches (c) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold. This reads on claims 1-3 of the instant application. Conflicting claim 1 teaches wherein the beverage has a sweetness of a sweetness intensity X2 exhibited by the components (a) and (c), 0.1<X1<X2 is satisfied. This reads on claims 2-3 of the instant application.
Conflicting claim 1 teaches wherein the sweetness intensity X1 is a numerical value obtained by multiplying a degree of sweetness of the high-intensity sweetener by its concentration (w/v%), when a sweetness intensity of sucrose per unit concentration Brix 1 is defined by a degree of sweetness of 1. This reads on claims 1-3 of the instant application.
Conflicting claim 1 teaches wherein the high-intensity sweetener comprises a sweetener selected from rebaudioside D, rebaudioside M, Luo Han Guo extract, and combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 1 teaches the amino acid is alanine, serine and glycine, in an amount that overlaps the claimed range for instant application claims 1-3.
Conflicting claim 1 teaches the amount of high-intensity sweetener is in an amount within the claimed range for instant application claims 1-3.
Conflicting claim 4 of ‘115 teaches a low-intensity sweetener. This reads on claims 1-3 and 14 of the instant application.
Conflicting claims 10 and 11 of ‘115 teaches the composition is a food, wherein the food is a beverage. This reads on claims 1-3 of the instant application which teaches the beverage is one selected from a sparkling beverage and flavored water, which are both types of beverages and conflicting claim 11 includes all types of beverages.
Claims 1-3, 8-9, 11, 14 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, 10-13 and 15 of copending Application No. 18/023,894 (hereinafter ‘894). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘894 teaches a fruit juice beverage. This reads on claims 1 and 3 of the instant application that teaches a flavored water beverage. It is noted that fruit juice is considered a flavored water beverage, as it comprises water and fruit juice which flavors the beverage. Conflicting claim 1 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1 and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity X3 exhibited by the components (a) and (b), 0.1<X1<X3 is satisfied. This reads on claim 1 of the instant application.
In conflicting claim 1, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claim 1.
Conflicting claim 2 of ‘894 teaches a fruit juice beverage. This reads on claims 1 and 3 of the instant application that teaches a flavored water beverage. It is noted that fruit juice is considered a flavored water beverage, as it comprises water and fruit juice which flavors the beverage.
Conflicting claim 2 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1-3 of the instant application.
Conflicting claim 2 teaches (c) sodium that encompasses the claimed range for instant application claims 2 and 3. See MPEP 2144.05(I). Conflicting claim 2 teaches sodium but does not specify wherein the sodium comprises sodium gluconate, as stated in claims 2-3 of the instant application. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified ‘894 to use any sodium ingredient used in the making of a beverage, including sodium gluconate, with the composition as taught by ‘894. See MPEP 2144.08.
Conflicting claim 2 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claims 2-3 of the instant application.
In conflicting claim 2, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claims 1-3 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 2, would fall within the claimed ranges of instant application claims 1-3.
Conflicting claim 3 of ‘894 teaches a low-intensity sweetener. This reads on claims 1-3 of the instant application.
Conflicting claim 6 of ‘894 teaches the amino acid comprises an amino acid selected from glycine, alanine, serine, and a combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 7 of ‘894 teaches wherein the beverage has an energy of 50 Kcal/100 ml or less. This reads on claim 8 of the instant application.
Conflicting claim 8 of ‘894 teaches wherein a sweetness intensity of the low-intensity sweetener is 0.1 to 5.9. This reads on claim 9 of the instant application.
Conflicting claim 10 of ‘894 teaches wherein a fruit juice contained in the fruit juice beverage is from one or more selected from orange, lemon, lime, and grape. It is noted that fruit juice is considered a flavoring for the beverage. Thus, adding a fruit juice that is orange juice reads on an orange-flavored beverage, adding lemon juice reads on a lemon-flavored beverage, adding lime juice reads on a lime-flavored beverage and adding grape juice reads on a grape-flavored beverage. Therefore, claim 10 of the conflicting application reads on claim 11 of the instant application
Conflicting claim 11 of ‘894 teaches the low-intensity sweetener comprises at least one selected from the group consisting of glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claims 1-3 and 14 of the instant application.
Conflicting claim 12 of ‘894 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of a Luo Han Guo extract. This reads on claims 1-3 of the instant application.
Conflicting claim 13 of ‘894 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside D, rebaudioside M, luo han guo extract, mogroside V, and a combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 15 of ‘894 teaches wherein the beverage is packed in a container. This reads on claim 18 of the instant application.
Claims 1-3, 8-9, 14 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-9, 14-16 and 18 of copending Application No. 18/034,764 (hereinafter ‘764). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘764 teaches a beverage comprising (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1 and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity X3 exhibited by the components (a) and (b), 0.1<X1<X3 is satisfied. This reads on claim 1 of the instant application. Conflicting claim 1 teaches the beverage is one selected from a coffee beverage and a tea beverage. This reads on claims 1 and 3 of the instant application that teaches a flavored water beverage. It is noted that coffee and tea is considered a flavored water beverage, as it comprises water and either coffee or tea which flavors the beverage.
In conflicting claim 1, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 1, would fall within the claimed ranges of instant application claim 1.
Conflicting claim 2 of ‘764 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1-3 of the instant application.
Conflicting claim 2 teaches (c) sodium that encompasses the claimed range for instant application claims 2 and 3. See MPEP 2144.05(I). Conflicting claim 2 teaches sodium but does not specify wherein the sodium comprises sodium gluconate, as stated in claims 2-3 of the instant application. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified ‘764 to use any sodium ingredient used in the making of a beverage, including sodium gluconate, with the composition as taught by ‘764. See MPEP 2144.08.
Conflicting claim 2 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claims 2-3 of the instant application. Conflicting claim 2 teaches the beverage is a coffee beverage, which reads on claims 1 and 3 of the instant application that teaches a flavored water beverage.
In conflicting claim 2, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claims 1-3 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 2, would fall within the claimed ranges of instant application claims 1-3.
Conflicting claim 3 of ‘764 teaches (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity X1, (b) an amino acid or a derivative of a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1-3 of the instant application.
Conflicting claim 3 teaches (c) sodium that encompasses the claimed range for instant application claims 2-3. See MPEP 2144.05(I). Conflicting claim 3 teaches sodium but does not specify wherein the sodium comprises sodium gluconate, as stated in claims 2-3 of the instant application. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified ‘764 to use any sodium ingredient used in the making of a beverage, including sodium gluconate, with the composition as taught by ‘764. See MPEP 2144.08.
Conflicting claim 3 teaches wherein the beverage has a sweetness intensity X2 exhibited by the components (a) to (c), 0.1<X1<X2 is satisfied. This reads on claims 2-3 of the instant application. Conflicting claim 3 teaches the beverage is a tea beverage, which reads on claims 1 and 3 of the instant application that teaches a flavored water beverage.
In conflicting claim 3, the amounts of high intensity sweetener, which corresponds to X1, and the amount of amino acid in an amount less than a taste recognition threshold provides the same end result as claims 1-3 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X2. Thus, the amounts of high-intensity sweetener and the amounts of amino acids of the conflicting claim 3, would fall within the claimed ranges of instant application claims 1-3.
Conflicting claim 4 of ‘764 teaches a low-intensity sweetener. This reads on claims 1-3 of the instant application.
Conflicting claim 7 of ‘764 teaches the amino acid comprises an amino acid selected from glycine, alanine, serine, and a combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 8 of ‘764 teaches wherein the beverage has an energy of 50 Kcal/100 ml or less. This reads on claim 8 of the instant application.
Conflicting claim 9 of ‘764 teaches wherein a sweetness intensity of the low-intensity sweetener is 0.1 to 5.9. This reads on claim 9 of the instant application.
Conflicting claim 14 of ‘764 teaches the low-intensity sweetener comprises at least one selected from the group consisting of glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claims 1-3 and 14 of the instant application.
Conflicting claim 15 of ‘764 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of a Luo Han Guo extract. This reads on claims 1-3 of the instant application.
Conflicting claim 16 of ‘764 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside D, rebaudioside M, a luo han guo extract, mogroside V, and a combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 18 of ‘764 teaches wherein the beverage is packed in a container. This reads on claim 18 of the instant application.
Claims 1 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 9-10 of copending Application No. 17/787,751 (hereinafter ‘751). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘751 teaches an oral composition comprising (a) a high-intensity sweetener in an amount corresponding to a sweetness intensity Xa and (b) an amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold, wherein the beverage has a sweetness of a sweetness intensity Xb exhibited by the components (a) and (b), 0.1<Xa<Xb is satisfied. This reads on claim 1 of the instant application.
Conflicting claim 1 teaches wherein a high-intensity sweetener comprises a sweetener selected from rebaudioside D, rebaudioside M, Lou Han Guo extract, mogroside V and a combination thereof. This reads on claim 1 of the instant application.
Conflicting claim 1 teaches a low-intensity sweetener, and the low-intensity sweetener comprises a sweetener selected from glucose, sucrose, fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, xylose, ribose and a combination thereof. This reads on claims 1 and 14 of the instant application.
Conflicting claim 1 teaches the amino acid or a derivative or a salt thereof in an amount less than a taste recognition threshold. This reads on claim 1. Conflicting claim 1 teaches the amino acid is alanine, serine and glycine, in an amount that overlaps the claimed range for instant application claim 1. See MPEP 2144.05(I).
In conflicting claim 1, the amount of high intensity sweetener, which corresponds to Xa, provides the same end result as claim 1 of the instant application of the greater sweetness intensity and satisfies the equation of 0.1<X1<X3. Thus, the amount of high-intensity sweetener of the conflicting claim 1, would fall within the claimed range of instant application claim 1.
Conflicting claim 4 of ‘751 teaches the amino acid comprises an amino acid selected from DL-alanine, L-serine, and a combination thereof. This reads on claim 1 of the instant application that teaches the amino acid comprises an amino acid selected from alanine, serine, and a combination thereof, which includes all isomers for the amino acids listed.
Conflicting claims 9 and 10 of ‘751 teaches wherein the oral composition is a food and wherein the food is a beverage. This reads on claim 1 of the instant application.
Response to Arguments
Applicant's arguments filed 09/03/2025 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 11-12 of their remarks, that with the newly amended claim limitations, it would not have been obvious to arrive at the recited components in the recited amounts based on Prakash. Applicant argues that Prakash broadly discloses numerous components but fails to teach or suggest the subject matter as claimed. Applicant notes that the sweetness and bitterness of steviol glycosides vary depending on their type/structure, specifically pointing out Luo Han Guo extracts including mogroside V. Applicant continues stating, in view of the differences between steviol glycosides, and the fact that Prakash discloses many components and does not focus on the recited steviol glycosides, it would not have been obvious to arrive at the subject matter of the amended claims. However, the Office disagrees for the following reasons.
As shown by the above rejection, Prakash does teach the amended claim limitations, including the use of Luo Han Guo extracts including mogroside V in the claimed range [0029], [0867-0868]. Prakash also teaches the amino acids glycine, alanine and serine in the claimed ranges 1 [0075], [0769]; as well as all of the other amended claim limitations. While Prakash may have not used a Lou Han Guo extract and mogroside V in specific examples, Prakash does use rebaudioside D in examples [0881], [0883], [0886], [0889]. Additionally, Prakash does teach in several embodiments and in the claims the use of Lou Han Guo, mogroside V and rebaudioside D, all of which are claimed high-intensity sweeteners (Claims 6 and 44).
Moreover, 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. 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). See MPEP 2123(I). Thus, it would have been obvious for a person of ordinary skill in the art to arrive at the subject matter of the amended claims based on the teachings of Prakash.
Applicant argues the double patenting rejections on pgs. 12-14 of their remarks. These arguments have been considered but are moot because the new ground of rejection has been updated based on the amendments to the claims and addresses all the newly amended claims. Thus, the claims at issue are still viewed as not patentably distinct.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759