DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed May 7, 2026 has been received and entered. The text of those sections of Title 35, U.S. Code, not included in this action can be found in a prior Office action. Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.
3. Claims 1 and 26-36 are pending.
Election/Restrictions
4. In the reply filed on September 26, 2025, applicant elected Group I, claim 29 with claims 1, 26-28, and 35 as linking claims, with traverse.
5. Claims 30-34 and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
6. Claims 1, 26-29, and 35 are examined on the merits.
Specification
7. The specification is objected to for the reasons set forth in the previous Office action. Applicant argues:
The office action asserts that by deleting reference citations from the specification,
applicant has impermissibly added new matter to the specification. However, after some
amount of searching, applicant finds no support for such an assertion in the relevant case
law, the rules, or the MPEP. Therefore, applicant respectfully requests that a citation to
the relevant basis for this assertion please be provided. In the absence of such, applicant
suggests that no new matter has been added to the specification.
MPEP section 608.04 states that omission of material in comparison to the original disclosure can also be considered new matter. A significant alteration in the scope of the disclosure by deleting all mention of prior art that was originally disclosed as relevant is an omission that is considered new matter.
Applicant also argues:
The office action further states that the deletions represent a significant change in
scope in the original disclosure. Without commenting on whether such a change in scope
has occurred or not, applicant does suggest that the only possible change would be a
reduction in scope, which is permissible. Applicant further suggests that the references
constituted mere background information that was not necessary for inclusion in the
application for either understanding or practicing the invention, as a person of ordinary
skill in the art would obviously be aware of the material published therein.
However, applicant has a duty to disclose material that is relevant to the application. Background information on the state of the art is clearly relevant to the application and falls within applicant’s duty to disclose information. Prior art admissions can also be considered prior art (see MPEP section 2129). The deletion of this relevant information is in direct contrast with applicant’s duty to disclose and must be reintroduced.
Claim Rejections - 35 USC § 101
8. Claims 1, 27-29, and 35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues:
Applicant suggests that claim 1 et seq. of the present case is analogous to claim 2 of example 2 (or example 10, depending on the version referenced) in the July 2015 update on subject matter eligibility, as promulgated by the patent office…
Applicant suggests that the present claims 1 et seq. also combine nature-based
products with an added preservative, for which there is no naturally occurring counterpart, and thus the slower spoiling of the claimed combination is markedly different from properties of the components by themselves in nature.
However, the example referenced by applicant was found to be patent eligible because the claims contained the language “an effective amount of an added preservative…”. Applicant’s claims do not require that the preservative is present in an amount that would be effective as discussed in the example. Therefore, applicant’s argument is not persuasive.
Claim Rejections - 35 USC § 103
9. Claim(s) 1, 26-29, and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US 2011/0135803) for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues:
However, these substances as mentioned by Robinson are not combined into a sports drink. In fact, these substances are not all combined into even one product that is taught by Robinson. Robinson describes several dairy-containing beverages, including (1) a liquid dairy component as described in association with Fig. 10, (2) a dry product as described in association with Fig. 11, (3) a soluble coffee as described in association with Fig. 1, and (4) coffee products as described in association with Fig. 2.
The substances recited in claim 1 are selectively lifted from separate ones of these
four different products of Robinson to form a facsimile of claim 1 - but they are not all
combined into a single product by Robinson, nor does Robinson teach that they should be
so combined into a single product.
However, the reference specifically teaches that additional ingredients can be added to vary the characteristics of the beverage. The reference teaches that additional ingredients include sugar (a sweetener), carrageenan (an emulsifier as defined by applicant at paragraph 70), hydroxy cellulose (rheology modifier as defined by applicant at paragraph 71), essential oils including fennel oil, clove oil, peppermint oil, thyme oil, basil oil (preservatives as defined by applicant at paragraph 67), dietary fiber, vitamins, selenium (trace mineral), and water (see, for example, paragraph 56, 61, 76, and 77). An artisan would be motivated to select the among the specifically disclosed ingredients in order to formulate a product that best achieves the characteristics desired by the artisan. The reference also demonstrates that all of applicant’s broadly claimed ingredients are well known to be used when formulating beverage compositions. Selecting these well known ingredients for combination is not considered to be inventive. Therefore, applicant’s arguments are not persuasive.
In response to applicant's argument that the reference does not teach a “sport drink”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
10. No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
