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 Application
Receipt of the Response and Amendment after Non-Final Office Action filed 03/04/2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 22, 26, and 30-37
Withdrawn claims: None
Previously canceled claims: 1-21, 23-25, and 27-29
Newly canceled claims: None
Amended claims: None
New claims: 38-40
Claims currently under consideration: 22, 26, and 30-40
Currently rejected claims: 22, 26, and 30-40
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 22, 26, and 30-40 are rejected under 35 U.S.C. 103 as being unpatentable over Mao et al. (U.S. 2019/0345528 A1) in view of Prakash et al. (U.S. 2007/0128311 A1).
Regarding claim 22, Mao et al. discloses a beverage comprising a beverage matrix comprising water and an isolated and purified diterpene glycoside that has the formula of CC-00350 (i.e., rebaudioside D4) ([0140], [0145]-[0146], [0022], [0023]), wherein the diterpene glycoside is present in the beverage in an amount that provides a sucrose equivalent of greater than about 5% (w/v) ([0161], where a combination of sweeteners may provide a consumable product with a sweetness intensity equivalent to about 1-10% (w/v) sucrose solution, thus implicitly indicating that either sweetener alone may be present in a concentration that approaches that necessary to provide a sweetness equivalent to about 10% (w/v) sucrose).
Mao et al. does not specifically disclose the beverage matrix as comprising one of the four claimed additional components.
However, Prakash et al. discloses rebaudioside sweetener compositions ([0018]) comprising an acidulant that may be citric acid ([0038]).
It would have been obvious to one having ordinary skill in the art to incorporate citric acid into the beverage of Mao et al. Mao et al. teaches that the beverage product may comprise an acidulant ([0147]) but does not provide additional instruction. A skilled practitioner would thus be motivated to consult Prakash et al. for more specific instruction regarding suitable acidulants. Since Prakash et al. discloses the use of citric acid in a comparable composition, a skilled practitioner would find the addition of citric acid to the beverage composition of Mao et al. to be obvious.
As for claim 26, Mao et al. discloses the beverage as further comprising a sweetener ([0024], [0143], [0148]).
As for claims 30 and 37, Mao et al. discloses the diterpene glycoside as being present in an amount approaching that necessary to provide a sweetness equivalent to about 10% (w/v) sucrose ([0061]). Mao et al. does not explicitly disclose a suitable concentration in terms of ppm of the diterpene glycoside. However, Prakash et al. discloses that a diterpene glycoside may generally be added to a sweetened composition in an amount ranging from about 1-5,000 ppm ([0909]). Given the instruction in Mao et al. that a combination of sweeteners may be used to impart a sweetness equivalent to about 10% (w/v) of a sucrose solution ([0161])—a relatively high sweetness—but specific concentration of the sweetening agent is not provided, a skilled practitioner would be motivated to consult Prakash et al. for more specific instruction. The teaching in Prakash et al. that diterpene glycosides may be added in amounts ranging from about 1-5,000 ppm ([0909]) would be presumed as being instructive for achieving the sweetness taught in Mao et al. As such, incorporation of a diterpene glycoside in an amount ranging from 1-5,000 ppm would be obvious, which renders the claimed ranges of about 500-600 ppm (claim 30) and about 500-1,000 ppm (claim 37) obvious.
As for claim 31, Mao et al. discloses the beverage as being coffee or tea ([0146]).
As for claim 32, Mao et al. discloses the beverage as further comprising one or more sweeteners ([0148]).
As for claim 33, Mao et al. discloses the sweetener as comprising a carbohydrate sweetener ([0161]).
As for claim 34, Mao et al. discloses the sweetener as being sucrose ([0161]).
As for claims 35 and 36, Mao et al. discloses the sweetener as being rebaudioside M ([0140]).
As for claim 38 and 39, Mao et al. discloses the diterpene glycoside is present in the beverage in an amount that provides a sucrose equivalent of about 5-12 degrees Brix (claim 38) or about 7-10 degrees Brix (claim 39) ([0161], where a combination of sweeteners may provide a consumable product with a sweetness intensity equivalent to about 1-10% (w/v) sucrose solution, thus implicitly indicating that either sweetener alone may be present in a concentration that approaches that necessary to provide a sweetness equivalent to about 10% (w/v) sucrose, or about 10 degrees Brix).
As for claim 40, Mao et al. discloses the diterpene glycoside is present in the beverage in an amount that provides a sucrose equivalent of greater than about 6% (w/v) ([0161], where a combination of sweeteners may provide a consumable product with a sweetness intensity equivalent to about 1-10% (w/v) sucrose solution, thus implicitly indicating that either sweetener alone may be present in a concentration that approaches that necessary to provide a sweetness equivalent to about 10% (w/v) sucrose).
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 22, 26, and 30-36 over Mao et al. and Prakash et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Mao et al. “repeatedly sets an upper limit of a sucrose equivalence of 4% (w/v) for rebaudioside D4”, citing paragraphs [0141], [0161], [0164], where such a concentration limit falls below the claimed range of greater than about 5% (w/v) (Applicant’s Remarks, p. 5, ¶4 – p. 6, ¶1). Applicant asserted that Examiner mischaracterized paragraph [0161] and improperly overly broadened its disclosure (Applicant’s Remarks, p. 6, ¶2). Applicant asserted that paragraph [0161] “establishes that when used as the sole sweetener in a product, rebaudioside D4 provides the product with ‘a sweetness intensity equivalent to about 1% to about 4% (w/v-%) sucrose solution’” (Applicant’s Remarks, p. 7, ¶2).
Examiner maintains the position expressed in the previous Office Action that the disclosure of paragraph [0161] of Mao et al. is adequate to deem the claimed concentration of rebaudioside D4 obvious. All three paragraphs cited by Applicant in Mao et al. qualify the disclosed concentration range to applying to only “some” or “certain” embodiments, thus implicitly meaning that the disclosure effectively encompasses other embodiments that are not likewise limited:
“In some embodiments, the consumable product can have a sweetness intensity equivalent to about 1% (w/v-% to about 4% (w/v-% sucrose solution.” ([0141]);
“In certain embodiments that may be combined with any of the preceding embodiments, the rebaudioside as described herein (e.g., Reb W1, Reb W2, Reb D4, Reb M, or a combination thereof such as Reb D4 and Reb M) is the only sweetener, optionally wherein the product has a sweetness intensity equivalent to about 1% to about 4% (w/v-%) sucrose solution.” ([0161]);
“In certain embodiments, a rebaudioside as described herein (e.g., Reb W1, Reb W2, Reb D4, Reb M, or a combination thereof such as Reb D4 and Reb M) is the only sweetener included and/or added to the consumable products and the beverage products. In some embodiments, the consumable products and the beverage products comprising the rebaudiosides have a sweetness intensity equivalent to about 1% to about 4% (w/v-%) sucrose solution, about 1% to about 3% (w/v-%) sucrose solution, or about 1% to about 2% (w/v-%) sucrose solution.” ([0164]).
No instruction in Mao et al. can be said to necessarily require a firm upper limit as Applicant asserts.
As noted previously, paragraph [0161] of Mao et al. discloses that combinations of sweeteners may provide a sweetness intensity of about 1-10% (w/v), where no indication is provided that only a certain degree of sweetness may be provided by any of the individual components. Examiner maintains that the disclosure is thus properly interpreted as indicating that there is no limit on the degree of sweetness provided by any of the sweeteners that contribute to sweetness up to a sweetness intensity of about 10% (w/v). Even assuming Applicant’s asserted narrow reading of the disclosure is the only acceptable interpretation of paragraph [0161], it does not make sense that the rebaudiosides of note (i.e., the list including rebaudioside D4) should be capped at providing only 4% sweetness, while any other conventionally-used steviol glycosides (e.g., rebaudioside A, stevioside, etc.) may provide up to 6% sweetness, since compounds appearing in each list are commonly disclosed in the art as being used interchangeably in terms of concentrations (e.g., especially rebaudioside M and rebaudiosides D and A). The narrow interpretation asserted by Applicant improperly disregards the broader instruction in Mao et al. Examiner maintains that the disclosure of paragraph [0161] renders the limitation of claim 22 obvious.
Applicant then argued that the disclosure in Mao et al. regarding a liquid concentrate is not equivalent to a beverage (Applicant’s Remarks, p. 8, ¶3).
However, the claim rejection does not rely on the liquid concentrate per se as constituting the beverage. Paragraphs [0145]-[0146] clearly disclose the product as being a beverage. The disclosure of a liquid concentrate was noted only to show that Mao et al. contemplated higher sucrose equivalence values. Examiner maintains that the disclosure valuably supplements the other citations in the reference regarding suitable steviol glycoside concentrations, namely, suggesting that a concentration of 4% rebaudioside D4 should not be considered to be a firm upper limit.
Further still, as noted previously, MPEP 2144.05 II A states: “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical”, which further supports the determination that the claimed concentration of the diterpene glycoside would be obvious.
Applicant argued that Prakash et al. does not remedy the alleged deficiency of Mao et al. (Applicant’s Remarks, p. 8, ¶4).
Prakash et al. is not relied on for any instruction regarding the concentration of rebaudioside D4 in a beverage. Examiner maintains that the disclosure of Prakash et al. is adequate for all that is relied on in the present claim rejections.
The rejections of claims 22, 26, and 30-37 have been maintained herein.
Conclusion
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.
Claims 22, 26, and 30-40 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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