DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/13/2026 has been entered.
Claim Objections
Claims 3, 5, 7, 9, 11, 16, 17, 19, 20 are objected to because of the following informalities: the limitations in Claims 3, 5, 7, 9, 11 have been incorporated into amended Claim 1 and are therefore redundant. Claims 16, 17, 19, 20 include the percentages that have been amended into Claim 15 and are therefore redundant. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5, 7, 9, 11, 15-17, 19, 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 3, 5, 7, 9, 11, 15-17, 19, 20 teach percentages of ingredients but are missing a recitation of percentage “by weight” of the composition, and should be so amended.
The language of Claim 15 of “a mask agent selected from the group comprising” is indefinite as this appears to be closed language but the comprising term provides for other components outside of the claimed group to be chosen. Therefore, the metes and bounds of the claim are indefinite for search and consideration and applying prior art.
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 1-5, 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jincks et al. (USPA 2014/0141127), made of record by Applicant, and as evidenced by Rakita NPL 2021.
Regarding amended Claims 1, 2, 4, 8, Jincks teaches a protein shake composition comprising a protein such as soy protein (Paragraphs 211, 215), and a sweetener composition as Jincks teaches other components in the protein shake composition include:
a natural sweetener as Jincks teaches sugar in such protein beverages (Table 21) and other sweeteners such as stevia (Paragraph 233).
an artificial sweetener such as sucralose (Paragraph 233 and Table 21).
a mask agent, as Jincks teaches soy molasses can be used (Paragraph 233) where they are understood to both function as mask agents as Jincks teaches flavorings can be used that are sweet (Paragraph 233) and also teaches adding a soy masking flavor (Table 21). The soy molasses taught by Jincks meets the limitation of the mask agent selected from glutamic acids and where the mask agent further includes molasses as Rakita teaches that soy molasses naturally contains glutamic acid (Page 7 of the evidentiary reference supplied).
a protein binder, as Jincks teaches sugar alcohols can also be used as sweeteners (Paragraph 234), therefore meeting the limitation of the protein binder a having a chemical group that include alcohols.
A mouthfeel modulator, as Jincks teaches the beverage composition may include a carbohydrate component which includes modified starches including those made of corn (Paragraph 221) and also teach a thickening agent or stabilizer depending on the desired beverage to be produced, where suitable thickening agents include low DE maltodextrin (Paragraph 228). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for the protein shake of Jincks to have been comprised of the claimed components, in light of the teachings of Jincks and the known use of the above discussed components in a protein-based beverage.
Regarding amended Claims 1, 3, 5 and the limitations of the components as a percentage of the protein shake composition, Jincks teaches the amount of carbohydrates, which include sugars, in the beverage composition may range from about 1% to about 30% by weight (Paragraphs 221-222), and teaches a higher natural sweetener concentration as Jincks teaches sugar in an amount of 1.7% by weight (Table 21, for example) and teaches an amount of artificial sweetener such as sucralose within the claimed range (Table 21, for example). In addition, since Jincks teaches adding flavorings which can be sweet and teaches as will be appreciated by a skilled artisan, the selected of ingredients added to the beverage composition can and will depend on the type of beverage product desired (Paragraphs 230-233), it would have been well within the skill of one of ordinary skill in the art to determine the optimal level of natural and artificial sweeteners in the beverage/protein shake composition, depending on the level of sweetness/flavor desired in the final beverage product. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amount of sweeteners added involves only routine skill in the art. MPEP 2144.05 II.
In addition, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, since Jincks teaches the use of sweeteners for flavorings in a protein shake/beverage composition, it would have been obvious to one of ordinary skill in the art to optimize the concentrations of the different components in order to maximize the functional and sensorial contributions of each of the components, depending on the desired food product formulation. Such an optimization would be the result of routine experimentation for one of ordinary skill in the art, absent any evidence to the contrary.
Regarding amended Claims 1 and 7, Jincks teaches a soy masking agent in an amount of 0.150% by weight of the beverage/protein shake composition (Table 21), which is slightly higher than the claimed range, although the upper limit of “about 0.05%” is close to the disclosed amount of 0.150% by weight. Since Jincks teaches adding the soy masking agent presumably to mask the flavor of the soy protein, and also teaches adding other flavorings as set forth above, it would have been well within the skill of one of ordinary skill in the art to have adjusted the amount of masking agent used, depending on the level of masking functionality desired. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amount of masking agent added involves only routine skill in the art. MPEP 2144.05 II.
In addition, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, since Jincks teaches the use of soy masking agents and other flavorings in a protein shake/beverage composition, it would have been obvious to one of ordinary skill in the art to optimize the concentrations of the different components in order to maximize the functional and sensorial contributions of each of the components, depending on the desired food product formulation. Such an optimization would be the result of routine experimentation for one of ordinary skill in the art, absent any evidence to the contrary.
Regarding amended Claims 1 and 9, Jincks teaches adding flavorings which can be sweet and include sugar alcohols (Paragraph 234), which meet the limitation of protein binders having an alcohol chemical group, and teaches as will be appreciated by a skilled artisan, the selected of ingredients added to the beverage composition can and will depend on the type of beverage product desired (Paragraphs 230-233). While Jincks does not teach a specific amount of sugar alcohols used, it would have been well within the skill of one of ordinary skill in the art to determine the optimal level of flavorings and sweeteners in the beverage composition, depending on the level of sweetness/flavor desired in the final beverage product. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amount of sweeteners added involves only routine skill in the art. MPEP 2144.05 II.
In addition, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
In the instant case, since Jincks teaches the use of sweeteners for flavorings in a protein shake/beverage composition, it would have been obvious to one of ordinary skill in the art to optimize the concentrations of the different components in order to maximize the functional and sensorial contributions of each of the components, depending on the desired food product formulation. Such an optimization would be the result of routine experimentation for one of ordinary skill in the art, absent any evidence to the contrary.
Regarding amended Claims 1, 10 and 11, Jincks teaches a mouthfeel modulator and teaches maltodextrin and starches used as thickening agents and teaches amounts of thickening agents that may be present in the beverage/protein shake composition range from about 0.05% to about 5% by weight, or about 0.1% by weight (Paragraph 228), which range overlaps with the claimed range.
Regarding amended Claim 12, Jincks teaches the drink is ready to drink (Paragraph 212).
Regarding amended Claim 13, Jincks teaches a variety of sweeteners can be included in the protein shake, where they include acesulfame potassium, but it is not a required addition (Paragraph 233). Therefore, Jincks provides for compositions not including acesulfame potassium where it is not used as a sweet flavoring component.
Regarding amended Claim 14, Jincks is taken as cited above and teaches the beverage may be a dry blended beverage or powder (Paragraph 213) and is taken as cited above in the rejection of amended Claims 1-13 and teaches or renders obvious the combination of the claimed components of the mask agent being selected from glutamic acids, a mouthfeel modulator that is a combination of maltodextrin and modified corn starch, as Jincks teaches the beverage composition may include a carbohydrate component which includes modified starches including those made of corn (Paragraph 221) and also teach a thickening agent or stabilizer depending on the desired beverage to be produced, where suitable thickening agents include low DE maltodextrin (Paragraph 228), and a protein binder that is a combination of alcohols, as Jincks teaches sugar alcohols can also be used as sweeteners (Paragraph 234), therefore meeting the limitation of the protein binder a having a chemical group that include alcohols. Jincks teaches at least one food additive as Jincks teaches a variety of components that can be included in the beverage compositions (Paragraph 223). Therefore, it would have been obvious to one of ordinary skill in the art for the ready to mix protein shake powder to have the same components as the ready to drink beverage as set forth above.
Claims 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Catani et al. (USPA 2007/0059418).
Regarding amended Claims 15-21, Catani teaches a sweetener composition comprising a mix of sweeteners including both natural and artificial sweeteners, such as stevia sweeteners and artificial sweeteners including sucralose as a preferred high intensity sweetener (Paragraphs 19-24), a mask agent, as Catani teaches sugar alcohols such as erythritol, isomalt, maltitol can be used (Paragraphs 24-25), therefore teaching and rendering obvious to one of ordinary skill in the art amended Claims 15 and 18, a protein binder which has a chemical group including alcohols, in light of the above teaching of the sugar alcohols, and also teaches various aroma components that can be added such as benzaldehyde (Paragraph 35), which meets the limitation of a compound with a chemical group of aldehyde, and a mouthfeel modulator, as Catani teaches the use of texture enhancers, bulking agents, binders, etc., where a preferred bulking agent is maltodextrin (Paragraphs 28 and 34). Since Catani does not teach acesulfame potassium as a required artificial sweetener and teaches sucralose as a preferred high intensity sweetener, Catani is deemed to teach that the sweetener composition does not include acesulfame potassium. Therefore, the claimed sweetener composition would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, based on the teachings of Catani.
Regarding the claimed amounts of the natural, artificial sweeteners, and the claimed mask agent and protein binder both being sugar alcohols, Catani is silent as to the % by weight amount in the sweetener composition but teaches the amount of the combination of sweeteners is effective to provide a sweet taste or mask a bitter taste in a foodstuff (Paragraph 20). Therefore, the exact percentage of the combination of sweeteners in the sweetener composition is deemed to be a result effective variable with regard to the preparation of a sweetener composition having the disclosed purpose of providing a sweet taste or masking a bitter taste. It would require routine experimentation to determine the optimum value of a result effective variable, such as the % by weight of natural and artificial sweeteners and sugar alcohols present, in the absence of a showing of criticality in the claimed % by weight of natural and artificial sweeteners. In re Boesch, 205 USPQ 215 (CCPA 1980), In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). One of ordinary skill in the art would have been motivated by Catani to have adjusted the amount of sweeteners in the sweetener composition in order to provide the desired effect, be it sweetening/flavoring or masking of bitterness.
Regarding the claimed amounts of the mouthfeel modulator, Catani teaches the sweetener composition can include various food grade additives including food grade flavors, texture enhancers, bulking agents which include resistant starches and maltodextrins, binders, etc. and that the food grade additives may comprise up to 60% by weight of the composition, preferably from about 5% to about 40% (Paragraphs 28-38), which meets the claimed amount of mouthfeel modulator/bulking agent as maltodextrin. Therefore, since Catani teaches the bulking agents are used to increase the bulk of the composition without significantly increasing calories and can increase the volume of a composition for convenience, in accurately measuring and dispensing such compositions, it would have been well within the skill of one of ordinary skill in the art to have adjusted the amount of bulking agent/mouthfeel modulators present depending on the amount of bulking agent desired/decrease in calories desired/volume desired of final composition. Given the guidelines taught by Catani, it would have been well within the skill of one of ordinary skill in the art to have determined an optimal amount of bulking agent in the sweetener composition for the reasons set forth above.
Response to Arguments
The claim objections and 112b rejections previously set forth have been withdrawn, however new claim objections and 112b rejections have been set forth above. Applicant’s arguments with respect to the pending claims have been considered but are not persuasive for the following reasons. The assertions of unexpected benefits or results associated with the claimed protein shake composition or sweetener are not commensurate in scope with the claims currently pending. Applicant’s Claims 1 and 15 are very broad, encompass a wide combination of ingredients in the sweetener compositions and therefore one of ordinary skill in the art would not have expected any combination of the claimed components would be capable of functioning as the sweetener composition intended by Applicant.
It is the Examiner’s position that the claimed combination of specifically claimed components in amounts recited in the composition of Claim 1 and the sweetener composition of Claim 15 would be allowable, provided the specific components are incorporated into Claims 1 and 15. In other words, the Examiner would be willing to allow Claims 1 and 15 provided Claim 1 is amended to incorporate the limitations of Claims 2, 4, 8, 10, and provided Claim 15 is amended to incorporate the limitations of Claims 16, 17, 19, and 20. Regarding the rejection of Claim 14, the Examiner does not believe the claim is allowable as currently pending unless amounts of the claimed components in the sweetener composition are added.
Therefore, for the reasons set forth above, the Examiner is still not persuaded as to the patentability of the claims as they currently stand and a rejection is deemed proper at this time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA A WATTS whose telephone number is (571)270-7368. The examiner can normally be reached Monday-Friday. 9am-4:30pm.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/Primary Examiner, Art Unit 1791 10/9/26
