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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, 19-20 in the reply filed on 12/18/2025 is acknowledged. The traversal is on the ground(s) that there is no undue search burden on the Examiner. This is not found persuasive because applicant’s argument is unsupported by probative evidence, and therefore deemed purely speculative. Given the distinct nature of inventions, it is likely that the search for each invention would require different fields of search, require application of different prior art, and also raise different non-prior art issues under 35 USC 101 and/or 35 USC 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 5-9, 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR1020140082504).
Lee teaches a toothpaste composition comprising “silicon dioxide 1.0 weight%, sodium monofluorophosphate 0.37 weight%, D- sorbitol liquid 63 weight%, glycerine 0.8~1.2 weight%, polyethylene glycol (PEG-1500) 1.5~2.5 weight%, carboxymethylcellulose sodium 0.8~1.5 weight%, hydrated silicic acid 3.5~4.5 weight%, xylitol 0.2~1.2 weight%, steviol glycoside 0.1~1 weight%, green tea extract 0.1~1.5 weight%, sage extract 0.1~1.5 weight%, ginseng extract 0.5~1.5 weight%, propolis extract 0.1~1.5 weight%, oyster 0.1~1 weight%, (L) - menthol 0.1~2 weight%, call mint odor (HF-61399) 0.2~1.5 weight%, combination perfume (apple essence) (HF-30630) 0.1~1.5 weight% and purified water 25~35 weight%” (Abstract).
The prior art is anticipatory insofar as it teaches a composition comprising steviol glycoside 0.1-1 wt% (clm 2), which suffices as an agent, i.e. a natural high-intensity sweetener, that regulates a cooling effect or taste, wherein the amount is sufficient to regulate a cooling effect or taste, especially in view of the instant claim 7.
The prior art composition further comprises menthol, as per claim 5, mint odor or xylitol, which suffices as a flavoring substance, as per claim 6, sage extract, which suffices as a bitter substance, as per claim 9. The prior art toothpaste is a consumable product, as per claims 8-9 insofar as it is an oral hygiene product (see Specification at p. 29, [0126-0127]).
The prior art composition is a flavor or sweetening composition as per claims 19-20 insofar as it comprises a high intensity sweetener and glycerin, wherein the weight ratio of glycerin to high intensity sweetener is, at the low end of the prior art ranges for each, 0.8 to 0.1 or 8/1, which falls within the claimed range of 99:1 to 1:99. As a consumable product, it is capable of performing the intended use of claims 19-20.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR1020140082504) as applied to claim 1 above, and further in view of Miyake (US 4,219,571).
Lee, which is taught above, differs from claims 3-4 insofar as it does not teach a glycosylated stevia glycoside.
Miyake teaches that steviol glycoside a.k.a stevioside, is known for imparting “bitterness and astringency” in addition to being sweet (col. 2, lines 1-9). Miyake teaches an alternative steviol glycoside, i.e., “alpha-glycosyl stevioside” (a glycosylated stevia glycoside) (Abstract), which “[p]ossesses neither of the bitterness nor astringency”, and has been associated with steviol glycoside, and “[p]ossesses a substantially and desirably improved water solubility” (col. 2, lines 32-37).
In both the syrup and powder from, the new sweetener comprises “unreacted stevioside” (SG), as per claim 4 (col. 6, lines 43-50).
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s filing to use glycosylated stevia glycoside in the compositions of Lee for the advantage of the desirable improved water solubility as well as avoiding the bitterness and astringency associated with stevia glycoside.
Conclusion
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612