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 .
Abstract
The abstract of the disclosure is objected to because it is directed to a parent application and not the claimed process. Correction is required. See MPEP § 608.01(b).
Specification
The disclosure is objected to because of the following informalities: please update the priority statement at paragraph [0001] of the Specification. Appropriate correction is required.
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Title
The title of the invention is not descriptive as it is directed to a parent application and not the claimed process. A new title is required that is clearly indicative of the invention to which the claims are directed.
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The disclosure is objected to because of the following informalities: Structures at paragraphs [0020], [0022] have blurry numbers.
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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 1-15 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.
The phrase “[a] process for preparation of a composition, the process comprising: adding rebaudioside-M to 1,3-propanediol to form a mixture; heating the mixture to form a solution of rebaudioside-M; and cooling the solution of rebaudioside-M” in Claim 1 is vague and indefinite as it is unclear what composition is produced by the process as the last method step refers to “cooling the solution”. Composition is not equated to solution.
The phrase “the mixture of rebaudioside-M” in Claim 4, line 1 is vague and indefinite as it is unclear whether it is just limited to “rebaudioside-M” or does it also include “1,3-propanediol” per Claim 1.
Claim 5 recites the limitation “the resulting composition” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “resulting composition”.
Claim 6 recites the limitation “the resulting composition” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “resulting composition”.
Claim 7 recites the limitation “the resulting composition” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “resulting composition”.
Claim 8 recites the limitation “the resulting composition” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “resulting composition”.
Claim 11 recites the limitation “the cooling of rebaudioside-M solution” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the cooling of the solution of the rebaudioside-M”.
Claim 12 recites the limitation “1,3-propanediol” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the 1,3-propanediol”.
Claim 13 recites the limitation “1,3-propanediol” in line 2. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider stating “the 1,3-propanediol”.
Claim 14 recites the limitation “the composition” in line 1. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “composition”. Claim 1 does not describe a process for preparing a composition but rather a “solution” that has been cooled.
Claim 15 recites the limitation “1,3-propanediol solution” in line 2. There is insufficient antecedent basis for this limitation in the claim. Applicant is advised to consider earlier stating “1,3-propanediol solution” and subsequently stating “the 1,3-propanediol solution”.
Clarification and/or correction required.
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.
Claims 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 2015/0327584) in view of Spelman et al. (US 2013/0209658).
Regarding Claim 1, Shi (‘584) teaches a process for preparing a composition (See Claims 14-16, paras. 13, 27, 39, 46-47, 52, 99, 158, 179-181, 186, 190-192, 196, 203.) comprising: adding steviol glycoside rebaudioside-M (See Claims 14-16, paras. 52, 99, 181, 203.) and an alcohol (See Claims 14-16, paras. 47, 158 wherein the alcohol can include ethanol and other alternative alcohols.) and cooling (See para. 201. Claim 14.), however, fails to expressly disclose the alcohol being 1,3-propanediol.
Applicant does not set forth any non-obvious unexpected results for selecting one alcohol over another.
Spelman (‘658) teaches a process similar to Shi (‘584) including preparing a composition by adding a steviol glycoside rebaudioside to an alcohol/solvent that is the same as taught by Shi (‘584) (See Abs., paras. 9, 17-19, 44-47, ethanol.) wherein the alcohol can alternatively be 1,3-propanediol (See paras. 9, 17-19, 44-47 and Claim 1.).
It would have been foreseeable and obvious and within the skill set of a person having ordinary skill in the art prior to the earliest effective filing date to substitute 1,3-propanediol alcohol as taught by Spelman (‘658) for other alcohols/solvents including ethanol as taught by Shi (‘584) and Spelman (‘658) to provide a solubilized sweetener composition that can be added to other food ingredients where people desire a sweet sensation at reduced caloric content. It would have been foreseeable and obvious to a person having ordinary skill in the art prior to the earliest effective filing date that the selection of solvents depended on price, availability, other production considerations such as tank availability, ease of handling, safety and regulatory issues. The selection of one alcohol/solvent over another would have been within the skill set of a person having ordinary skill in the art prior to the earliest effective filing date. It would have been reasonably foreseeable that alternatively using a 1,3-propanediol as taught by Spelman (‘658) would provide a sweetened product that is substantially as effective as if an ethanol solvent is used.
Regarding Claim 2, Shi (‘584) teaches adding one or more flavorings to the solution of rebaudioside-M; and optionally mixing the solution of rebaudioside-M and the one or more flavourings (See paras. 41, 56-64.).
Regarding Claim 3, Shi (‘584) teaches wherein the adding of one or more flavorings to the solution of rebaudioside-M is performed after the solution of rebaudioside-M has cooled (See paras. 41, 56-64.).
Regarding Claim 4, Shi (‘584) teaches wherein the mixture of rebaudioside-M is heated to a temperature of 50 to 120 degrees C (See para. 15.).
Regarding Claim 5, Shi (‘584) teaches wherein the resulting composition does not comprise propylene glycol (See Claims 14-16, paras. 13, 27, 39, 46-47, 52, 99, 158, 179-181, 186, 190-192, 196, 203.).
Regarding Claim 6, Shi (‘584) teaches wherein the resulting composition does not comprise water (See claim 9 where the composition can be in an amorphous form, thus, interpreted as being substantially free of water. A specific water limitation is not set forth in the claim.).
Regarding Claim 7, Shi (‘584) teaches wherein the resulting composition does not comprise water and propylene glycol (See Claims 14-16, paras. 13, 27, 39, 46-47, 52, 99, 158, 179-181, 186, 190-192, 196, 203 and claim 9 where the composition can be in an amorphous form, thus, interpreted as being substantially free of water. A specific water limitation is not set forth in the claim.).
Regarding Claim 8, Shi (‘584) teaches the process discussed above, however, fails to expressly disclose wherein the resulting composition is substantially free of sweetening agents other than rebaudioside-M.
Spelman (‘658) discloses that the composition only has to include one steviol glycoside and 1,3-propaneiol (See para. 3.).
Therefore, it would have been foreseeable and obvious with Shi (‘584) in view of Spelman (‘658) that the composition is substantially free of sweetening agents other than the steviol glycoside component, which is rebaudioside M.
Regarding Claim 9, Shi (‘584) teaches wherein the rebaudioside-M is derived from a natural source (See Claims 14-16, paras. 52, 99, 181, 203. There is no difference based on source.).
Regarding Claim 10, Shi (‘584) teaches the process discussed above, however, fails to expressly disclose filtering the solution of rebaudioside-M after cooling the solution of rebaudioside-M to remove impurities.
It would have been foreseeable and obvious prior to the earliest effective filing date with Shi (‘584) and Spelman (‘658) before them to provide a product free of impurities and a means of doing this is by filtering. It would have been within the skill set of a person having skill in the art prior to the earliest effective filing date to select a filtering step to provide a safe composition.
Regarding Claim 11, Shi (‘584) teaches wherein the cooling of rebaudioside-M solution is performed at a controlled rate (See para. 201. Claim 14.).
Regarding Claim 12, Shi (‘584) teaches the process discussed above, however, fails to expressly disclose wherein the rebaudioside-M and 1,3-propanediol are added in a weight ratio of 1:1 to 1:10.
It would have been foreseeable and obvious prior to the earliest effective filing date with Shi (‘584) and Spelman (‘658) before them to provide a mix of ingredients, including the ratio as claimed, that satisfies a user’s preference. It would have been within the skill set of a person having skill in the art prior to the earliest effective filing date to select a ratio that satisfies consumers’ preference.
Regarding Claim 13, Shi (‘584) teaches wherein the heating of the mixture of rebaudioside-M and 1,3-propanediol is carried out under vacuum conditions to facilitate removal of impurities.
It would have been foreseeable and obvious prior to the earliest effective filing date with Shi (‘584) and Spelman (‘658) before them to provide a product free of impurities and a means of doing this under vacuum conditions for product purification. It would have been within the skill set of a person having skill in the art prior to the earliest effective filing date to select a filtering step to provide a safe composition.
Regarding Claim 14, Shi (‘584) teaches testing the composition for its sweetness level using a sensory evaluation or a chemical assay (See Claims 14-16, paras. 13, 27, 39, 46-47, 52, 99, 158, 179-181, 186, 190-192, 196, 203. The claims are interpreted as being directed to a process for preparing and not testing, thus, the language in the claim is not limiting.).
Regarding Claim 15, Shi (‘584) teaches the process discussed above, however, fails to expressly disclose wherein the preparation of the composition further comprises additional natural or synthetic sweeteners mixed with the rebaudioside-M and 1,3-propanediol solution.
Spelman (‘658) discloses that the composition can include sucrose (See para. 29.), which is known in the art as white table sugar.
It would have been foreseeable and obvious prior to the earliest effective filing date with Shi (‘584) and Spelman (‘658) before them to include sugar flavoring in the composition of Shi (‘584) depending on the intended food composition and the desired taste profile as different food compositions require different types of flavoring and sweeteners.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T O'HERN whose telephone number is (571)272-6385. The examiner can normally be reached M-Th 5:00 am - 3:30 pm.
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/BRENT T O'HERN/ Primary Examiner, Art Unit 1793 August 15, 2025