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 and 18-24 are pending in this application. Claims 1-3, 8-14, 16 and 18 are under examination. Claims 19-24 are withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 8-9, 11-14, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. US 20070116832 (cited on IDS dated 02/06/2024).
Regarding claims 1, 9 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 [0062] 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 the beverage comprises (c) 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 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, as required by claim 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.
Claim 1 recites the limitation “a low-intensity sugar sweetener in an amount corresponding to a sweetness intensity Xc.” Prakash meets this limitation. As shown above for claim 9, which further limits the sweetness intensity of Xc, the sweetness intensity of the low intensity sweetener for Prakash is in an amount corresponding to a sweetness intensity of 0.1 to 10, which encompasses the required sweetness intensity for claim 9 of the low-intensity sweetener of 0.1 to 5.9. Thus, Xc is viewed as having a sweetness intensity of 0.1 to 5.9, as required by claim 9, and Prakash meets the limitation of claim 1 of a low-intensity sugar sweetener in an amount corresponding to a sweetness intensity Xc.
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 X3, where 0.1<X1 + Xc <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 is one selected from a coffee beverage (coffee; [0866]) and a tea beverage (tea type beverage such as black tea, green tea, oolong tea and the like; [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]), 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 [0062] 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 claim 1.
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 overlaps the claimed range of less than 90 mg/100 ml of sodium, required by claim 2, and overlaps the claimed range of less than 50 mg/100 ml of sodium, as required by claim 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).
Prakash teaches the beverage comprises (d) 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].
Claims 2-3 recite the limitation “a low-intensity sugar sweetener in an amount corresponding to a sweetness intensity Xc.” Prakash is viewed as meeting this limitation. It is noted that the sweetness intensity of Xc can be any amount as long as the claim limitation from claims 2-3 of “0.1 <X1 + Xc” is satisfied. The sweetness intensity of the low intensity sweetener for Prakash is in an amount corresponding to a sweetness intensity of 0.1 to 10, as shown by the above rejection for claim 1. Xc is viewed as having a sweetness intensity of between 0.1 to 10, and Prakash is considered to meet the limitation of claims 2-3 of a low-intensity sugar sweetener in an amount corresponding to a sweetness intensity Xc.
Prakash teaches a substantially identical beverage to the claimed beverage with components (a) to (d), 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 + Xc < 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 is a coffee beverage [0866], as required by claim 2, or Prakash teaches the beverage is a tea beverage (tea type beverages; [0866]), as required by claim 3.
Regarding claim 8, Prakash 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, 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 11, Prakash teaches the beverage comprises a milk content (beverages containing milk components such as coffee containing milk components and milk tea; [0866]).
Regarding claim 12, Prakash teaches the beverage comprises polyphenol (flavonoid additive such as polyphenols; [0087]) at a range of 0.1 to about 1,000 ppm [0782]. This encompasses the claimed range of between 200 to 600 ppm. See MPEP 2144.05(I).
Regarding claim 13, Prakash teaches the beverage comprises catechin (flavonoid additive such as catechins; [0087]) at a range of 0.1 to about 1,000 ppm [0782]. This encompasses the claimed range of between 200 to 600 ppm. See MPEP 2144.05(I).
Regarding claim 14, Prakash teaches the beverage as discussed above in claim 1. Prakash discloses the low-intensity sweetener (carbohydrates; [0072]) comprises a sweetener selected from fructose, maltose, high fructose corn syrup, lactose, psicose, allose and tagatose [0072].
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]).
Claim 10 is 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 Prakash and Higiro et al., US 20150018432 (hereinafter Higiro).
Regarding claim 10, Prakash teaches the beverage comprises caffeine [0082] but does not state how much caffeine the composition contains.
Higiro teaches a beverage selected from a coffee or tea (tea type; [0073-0074]) comprising a high-intensity sweetener (high potency sweeteners; [0041-0042]) and an amino acid [0070]. Higiro teaches the beverage comprises caffeine (suitable bitter compound additive including caffeine; [0070], [0220]). Higiro discloses the caffeine is present in an effective amount in the concentration and can range from 25 ppm to about 25,000 ppm, or 2.5 mg/100 ml to about 2500 mg/100 ml in the beverage [0221]. This overlaps the claimed range of 10 mg/100 ml to 110 mg/100 ml of caffeine.
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 Higiro, to have the composition have the claimed amount of caffeine because the amount of caffeine can be adjusted so it is present at an effective concentration, as recognized by Higiro [0221].
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, 14 and 16 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, specifically a coffee beverage or a tea 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 (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 of ‘155 teaches wherein the sweetness intensity of 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. This reads on claims 1-3 of the instant application.
Conflicting claim 1 of ‘155 teaches wherein the high-intensity sweetener is selected from rebaudioside D, rebaudioside M, mogroside V, Luo Han Guo extract and a combination thereof. This reads on claims 1-3 and 16 of the instant application.
Conflicting claim 1 of ‘155 teaches the amino acid comprises an amino acid selected from 30 mM or less of DL-alanine, 50 mM of less of L-serine, 75 mM or less of glycine and a combination thereof, in amounts less than a taste recognition threshold. This reads on claims 1-3 of the instant application that teaches the amino acid comprises an amino acid selected from glycine, alanine, serine, and a combination, which includes all isomers for the amino acids listed, and claims 1-3 of the instant application teaches the claimed amounts which includes any amount less than a taste recognition threshold.
Conflicting claim 1 of ‘155 teaches wherein the amount of the high-intensity sweetener is 150 to 450 ppm. This reads on claims 1-3, which encompasses the amount of high-intensity sweetener in the conflicting claim.
Conflicting claim 4 of ‘115 teaches a low-intensity sweetener. This reads on claims 1-3 of the instant application.
Conflicting claim 4 of ‘115 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 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 coffee beverage and tea beverage, which are both types of beverages and conflicting claim 11 includes all types of beverages.
Claims 1-3, 8-9, 14, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, 11-13 and 15 of copending Application No. 18/023,894 (hereinafter ‘894) in view of Ryder, Easy Homemade Ices Tea, Simply Delicious, URL: https://simply-delicious-food.com/easy-homemade-iced-tea/#recipe (hereinafter Ryder). 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 and not a coffee beverage or a tea beverage. Ryder teaches a tea beverage (iced tea; pg. 1 title and paragraph 1) made with the juice of your choice such as apple juice, passion fruit, peach or apricot and 8 tea bags (fruit juice; pg. 1 paragraph 1, pg. 2 paragraph “What can you add to iced tea?”, pg. 4 Ingredients and Instructions), which makes an iced tea that is healthy, delicious and refreshing (pg. 1 paragraph 1).
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 the conflicting application ‘894 to incorporate the teachings of Ryder by having the iced tea comprise fruit juice and tea, making a tea that is healthy, delicious and refreshing, as recognized by Ryder (pg. 1 paragraph 1).
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 fruit juice 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 2 of ‘894 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 is within the claimed range for instant application claim 2 and is the exact same range for instant application claim 3.
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 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 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 A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside J, rebaudioside K, rebaudioside M, rebaudioside N, rebaudioside O, rebaudioside Q, rebaudioside R, Dulcoside A, Dulcoside C, rubusoside, steviol monoside, steviol bioside, stevioside, a luo han guo extract, mogroside V, thaumatin, brazzein, a Glycyrrhiza extract, saccharine, aspartame, acesulfame K, sucralose, and a combination thereof. This reads on claims 1-3 and 16 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, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, 14, 16 and 18 of copending Application No. 18/023,907 (hereinafter ‘907). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conflicting claim 1 of ‘907 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 of ‘907 teaches wherein the sweetness intensity of 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. This reads on claims 1-3 of the instant application.
Conflicting claim 1 of ‘907 teaches wherein the high-intensity sweetener is selected from rebaudioside D, rebaudioside M, mogroside V, Luo Han Guo extract and a combination thereof; wherein an amount of the high-intensity sweetener is 20 to 800 ppm. This reads on claims 1-3 and 16 of the instant application.
Conflicting claim 1 of ‘907 teaches wherein the amino acid is an amino acid selected from glycine, alanine, serine, and a combination thereof, wherein a content of glycine is 10 to 80 mM, a content of alanine is 1 to 30 mM and a content of serine is 1 to 30 mM. This reads on claims 1-3 of the instant application.
Conflicting claim 1 of ‘907 teaches wherein the beverage comprises a low-intensity sweetener and the low-intensity sweetener comprises glucose, sucrose, or a combination thereof. This reads on claims 1-3 of the instant application.
Conflicting claim 1 teaches a flavored water beverage. This reads on claims 1-3 of the instant application that teaches a coffee beverage and a tea beverage. It is noted that a flavored beverage is considered a coffee beverage or a tea, as it comprises water and a flavoring, which is either coffee or tea flavors.
Conflicting claim 8 of ‘907 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 ‘907 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 ‘907 teaches the low-intensity sweetener comprises at least one selected from the group consisting of fructose, maltose, an oligosaccharide, a high-fructose corn syrup, lactose, psicose, allose, tagatose, and a combination thereof. This reads on claim 14 of the instant application.
Conflicting claim 16 of ‘907 teaches wherein the high-intensity sweetener comprises at least one selected from the group consisting of rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside E, rebaudioside F, rebaudioside I, rebaudioside J, rebaudioside K, rebaudioside N, rebaudioside O, rebaudioside Q, rebaudioside R, Dulcoside A, Dulcoside C, rubusoside, steviol monoside, steviol bioside, stevioside, thaumatin, brazzein, a Glycyrrhiza extract, saccharine, aspartame, acesulfame K, sucralose, and a combination thereof. This reads on claim 16 of the instant application.
Conflicting claim 18 of ‘907 teaches wherein the beverage is packed in a container. This reads on claim 18 of the instant application.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues, on pgs. 12-13 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 for co-pending Applications 17/788,115, 18/023,894 and 18/023,907 on pgs. 13-14 of their remarks. These arguments have been considered but are moot because the 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.
Applicant argues the double patenting rejection for co-pending Application 17/787,751 on pg. 15. These arguments have been considered but are moot because co-pending Application 17/787,751 has been abandoned and the double patenting rejection withdrawn.
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