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 .
This office action is in response to the application filed on April 28, 2023. The earliest effective filing date of the application is October 30, 2020.
Priority
The present application is a 371 National Stage Application of PCT/DE2021/200127 which has a filing date of September 23, 2021.
Status of Application
The amendment filed November 10, 2025 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 18, 21, and 22
Withdrawn claims: 8 – 10
Newly cancelled claims: 19 and 20
Amended claims: 1, 2, 4 – 6, 11, and 14
New claims: 21 and 22
Claims currently under examination: 1 – 7, 11 – 18, 21, and 22
The status of the objections and rejections regarding the disclosure upon entry of the present amendment stands as follows:
Objections: The previous objections to claims 4, 6, and 11 are withdrawn in light of Applicant’s amendments.
35 U.S.C. § 112 Rejections: The previous rejections under 35 U.S.C. § 112(b) of claims 2 – 6, 11, 14 – 16, and 18 are withdrawn in light of Applicant’s amendments. A new rejection, necessitated by Applicant’s amendments, under 35 U.S.C. § 112(b) of claim 22 is presented below.
35 U.S.C. § 102 Rejections: The previous rejections under 35 U.S.C. § 102(a)(1) of claims 1 – 3 are withdrawn in light of Applicant’s amendments. New rejections, necessitated by Applicant’s amendments, under 35 U.S.C. § 102(a)(1) of claims 1 – 3, 5, 12 – 14, 18, 21, and 22 over Massey are presented below.
35 U.S.C. § 103 Rejections: The previous rejections under 35 U.S.C. § 102(a)(1) of claims 4 – 18 are withdrawn in light of Applicant’s amendments. The previous rejections under 35 U.S.C. § 102(a)(1) of claims 19 and 20 are withdrawn due to the cancellation of the claims. New rejections, necessitated by Applicant’s amendments, under 35 U.S.C. § 103 of claims 6, 7, and 15 – 17 over Massey are presented below.
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.
Claim 22 is 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.
Claim 22 recites the limitation "the constituent" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, claim 22 is interpreted to claim the liquid filling further comprises a constituent selected from the group consisting of: capsicum extract, pepper powder, pepper extract, and ginger extract.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 – 3, 5, 12, 18, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Massey (EP 2059133 B1).
Regarding claims 1, 2, and 18, Massey teaches a confectionery composition (i.e., a chewing gum) comprising: (a) a center-fill composition (i.e., liquid filling) comprising a fluid carrier and polyol particles, suspended in said fluid carrier, wherein said polyol particles are selected from erythritol, maltitol, xylitol, mannitol, isomalt, lactitol, glycerol and combinations thereof (i.e., a solution of polyols) and are present in amounts of 5% to 80% by weight of said center fill composition; and (b) a confectionery region (i.e., gum region) surrounding said center fill composition (Abstract). Massey teaches suitable fluid carriers include corn syrups, sorbitol syrups, dextrose syrups, sugar syrups, maltitol syrups, and combinations thereof ([0108]). Therefore, the fluid carrier and polyols is a polyol syrup. Massey teaches the gum region, also referred to as the second region in center-fill chewing gum embodiments, may include one or more cavities therein to house the center-fill (i.e., liquid filling – [0047]). Massey teaches liquids that can be included in the center-fill (i.e., liquid filling) in some embodiments can include, but are not limited to polyol syrup (i.e., a solution of polyols); ethanol (i.e., an alcoholic beverage); liqueurs (i.e., an alcoholic beverage); and combinations thereof ([0119]).
While Massey does not teach the alcohol is diluted in a solution of polyols, this recitation is directed toward a method of production of the product of claim 1. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 1 has been considered when assessing the patentability of the product.
The structure implied by “the alcohol is diluted in a solution of polyols” is interpreted to be the liquid filling comprises alcohol and a solution of polyols. The confectionery composition of Massey as described above comprises a center-fill (i.e., liquid filling) comprising alcohol and a solution of polyols.
With respect to the limitation “the reduce water content”, it is interpreted that if the liquid filling comprises alcohol and a solution of polyols, the water content of the liquid filling is reduced. The confectionery composition of Massey as described above comprises a center-fill (i.e., liquid filling) comprising alcohol and a solution of polyols, therefore, the water content of the center-fill (i.e., liquid filling) is reduced.
While Massey does not explicitly state the confectionery composition prevents water migration into the confectionery region (i.e., chewing gum mass), the instant specification states the liquid filling has a high content of dissolved particles, which leads to low water activity, such that the water does not migrate into the chewing gum mass [(0023]). The instant specification states in order to reduce the water content and at the same time also the alcohol content of the alcoholic beverage, the distillate can be diluted after the distillation in a solution of polyols such as maltitol and/or glycerol ([0024]). Therefore, because the ethanol is combined with polyol syrup to form the center-fill (i.e., liquid filling), the alcohol is inherently diluted to reduce the water content of the liquid filling to prevent water migration into the chewing gum mass, the center-fill (i.e., liquid filling) of Massey inherently prevents water migration into the confectionery region (i.e., chewing gum mass). MPEP § 2112.01.I states where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In this case, the center-fill (i.e., liquid filling) of Massey and the liquid filling of claim 1 have substantially identical in structure or composition, therefore they inherently have the same properties, including the prevention of water migration into the confectionery region (i.e., chewing gum mass). Furthermore, MPEP § 2112.I states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”. In this case, the fact that Massey is silent with respect to the prevention of water migration into the confectionery region (i.e., chewing gum mass) does not render novel the previously unappreciated properties of the center-fill (i.e., liquid filling).
Regarding claim 3, the instant specification states an alcoholic beverage is an alcohol-containing solution that can be obtained by distillation, fermentation, dilution, and/or mixing with ethanol ([0013]). In light of the definition provided by the instant specification, ethanol is considered an alcoholic beverage. Therefore, Massey teaches a confectionery composition comprising a center-fill (i.e., liquid filling) wherein the center-fill (i.e., liquid filling) comprises an alcoholic beverage with an alcohol content of more than 30 vol%.
Regarding claims 4 and 11, Massey teaches the ethanol may be included in the center-fill (i.e., liquid filling) at a concentration of 1 – 1500 ppm (i.e., 0.0001 wt% – 0.15 wt% – p. 33, Table 1 (continued), B. Warming Agents, Ethanol, Center-fill).
Regarding claims 5 and 12, Massey teaches as warming agents may also be included in any or all portions or regions of the chewing gum or confectionery composition, including the center-fill (i.e., liquid filling – ([0139]). Massey teaches warming components offer the perceived sensation of warmth, particularly in the oral cavity, and often enhance the perception of flavors, sweeteners and other organoleptic components (i.e., the warming agent enhances the thermal effect of the alcohol – [0158]).
Regarding claim 21, the instant specification states “The spirit can be selected, for example, from […] liqueur” ([0021]). Therefore, liqueurs are spirits.
Claims 13, 14, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Massey (EP 2059133 B1), as applied to claims 1, 2, and 12 above, and as further evidenced by NCBI (Capsaicin. NCBI Bookshelf. (2023) Retrieved from: https://www.ncbi.nlm.nih.gov/books/NBK459168/).
Regarding claims 13, Massey teaches a warming agent is capsaicin ([0158]). The instant specification states “the capsaicinoids contained in the capsicum extract - especially capsaicin - cause a heat or pain stimulus in the oral cavity that is perceived as spiciness” ([0029]). Furthermore, as evidenced by NCBI, capsaicin is a chili pepper extract, genus Capsicum (i.e., capsicum extract – p. 1, Continuing Education Activity, paragraph 1). Therefore, the capsaicin taught by Massey is a capsicum extract.
Regarding claims 14 and 22, Massey teaches as warming agents may also be included in any or all portions or regions of the chewing gum or confectionery composition, including the center-fill (i.e., liquid filling – ([0139]). Massey teaches warming components offer the perceived sensation of warmth, particularly in the oral cavity, and often enhance the perception of flavors, sweeteners and other organoleptic components (i.e., the warming agent enhances the thermal effect of the alcohol – [0158]). The instant specification states “the capsaicinoids contained in the capsicum extract - especially capsaicin - cause a heat or pain stimulus in the oral cavity that is perceived as spiciness” ([0029]). Furthermore, as evidenced by NCBI, capsaicin is a chili pepper extract, genus Capsicum (i.e., capsicum extract – p. 1, Continuing Education Activity, paragraph 1). Therefore, the capsaicin taught by Massey is a capsicum extract.
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:
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Massey (EP 2059133 B1).
Regarding claim 6, Massey teaches the capsicum may be included in the center-fill (i.e., liquid filling) at a concentration of 1 – 1500 ppm (i.e., 0.0001 wt% – 0.15 wt%) of the total weight of the center-fill (p. 33, Table 1 (continued), B. Warming Agents, Capsaicin, Center-fill). Massey teaches the center-fill (i.e., liquid filling) is approximately 8% by weight of the total chewing gum composition ([0120]). Therefore, the capsicum may be included in the center-fill at a concentration of 0.08 – 120 ppm (i.e., 0.000008 wt% – 0.012 wt%) of the total weight of the total chewing gum composition.
The range of weight percentage of the constituent which enhances the thermal effect of the alcohol in the liquid filling, 0.000008 – 0.012 wt% of total weight of the total chewing gum composition, as disclosed by Massey, overlaps with the claimed range of 0.002 – 0.015 wt% of the total weight of the chewing gum. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Massey (EP 2059133 B1), as applied to claims 1 and 2 above, and further in view of Bharat et al. (US 20060263476 A1).
Regarding claims 7 and 15, Massey does not teach the center-fill (i.e., liquid filling) is present in an edible capsule.
Bharat teaches conventional center-filled gum products having a liquid-filled center portion, a second layer of chewing gum or bubble gum material surrounding the liquid, and a hard outer shell or coating suffer from undesirable migration of the liquid into the gum base region ([0005]). Bharat teaches loss of the center-fill not only impacts the initial organoleptic qualities of the gum, i.e., initial liquid "burst", but also may alter the physical appearance and overall shelf-life stability of the product ([0005]). Bharat teaches a gum composition including a liquid-fill region; a gum region surrounding the liquid-fill region; and at least one barrier layer between the liquid-fill region and the gum region (i.e., an edible capsule), which resists loss of liquidity of the center-fill ([0012]). Bharat teaches the barrier layer (i.e., edible capsule) may include one of the following gelling hydrocolloids: agar, alginate, carrageenan, cellulose ethers, gelatins, gellan gum, locust bean gum, pectins, starches, xanthan gum and combinations of these ([0016]).
Massey and Bharat are combinable because they are concerned with the same field of endeavor, namely, center-filled chewing gum. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a barrier layer (i.e., edible capsule) between the alcoholic beverage and chewing gum in the product of Massey, as taught by Bharat because a barrier layer (i.e., edible capsule) resists loss of liquidity of the center-fill (i.e., liquid filling), thereby preserving the organoleptic qualities, physical appearance, and overall shelf-life stability of the product.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Massey (EP 2059133 B1), as applied to claims 5 and 12 above, and further in view of Bharat et al. (US 20060263476 A1).
Regarding claims 16 and 17, Massey does not teach the center-fill (i.e., liquid filling) is present in an edible capsule.
Bharat teaches conventional center-filled gum products having a liquid-filled center portion, a second layer of chewing gum or bubble gum material surrounding the liquid, and a hard outer shell or coating suffer from undesirable migration of the liquid into the gum base region ([0005]). Bharat teaches loss of the center-fill not only impacts the initial organoleptic qualities of the gum, i.e., initial liquid "burst", but also may alter the physical appearance and overall shelf-life stability of the product ([0005]). Bharat teaches a gum composition including a liquid-fill region; a gum region surrounding the liquid-fill region; and at least one barrier layer between the liquid-fill region and the gum region (i.e., an edible capsule), which resists loss of liquidity of the center-fill ([0012]). Bharat teaches the barrier layer (i.e., edible capsule) may include one of the following gelling hydrocolloids: agar, alginate, carrageenan, cellulose ethers, gelatins, gellan gum, locust bean gum, pectins, starches, xanthan gum and combinations of these ([0016]).
Massey and Bharat are combinable because they are concerned with the same field of endeavor, namely, center-filled chewing gum. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a barrier layer (i.e., edible capsule) between the alcoholic beverage and chewing gum in the product of Massey, as taught by Bharat because a barrier layer (i.e., edible capsule) resists loss of liquidity of the center-fill (i.e., liquid filling), thereby preserving the organoleptic qualities, physical appearance, and overall shelf-life stability of the product.
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
Applicant argues Ross does not describe a liquid filling containing both alcohol and a solution of polyols (p. 6, paragraph 2).
Applicant’s argument has been carefully considered but it is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues WCFF, Sizer, and Jani, do not supply the deficiency (a liquid filling containing both alcohol and a solution of polyols) of Ross (p. 6, paragraph 10; p. 7 paragraphs 1 – 9).
Applicant’s argument has been carefully considered but it is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues Hartel teaches away from the inclusion of alcohols in gum (p. 8, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. The cited passage of Hartel is in reference to coloring the gum base with glycerin-based colors rather than alcohol-based colors. In fact, Hartel teaches “water or alcohol based colors have limited solubility in gum base and are not used”, which implies that alcohol presence in a center-fill has limited dispersion into the gum base due to its limited solubility (p. 403, col. 3). While Hartel teaches away from the use of alcohol-based colorants in the gum base, Hartel does not comment on the presence of alcoholic beverages in the center-fill. Furthermore, the argument is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793