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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 02/18/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the objections to the claims 10, 11, and 15 have been withdrawn; (2) the 35 U.S.C. 112(b) rejections of claims 6-8, 12, 13, and 19 have been withdrawn; (3) the 35 U.S.C. 102(a)(1) rejections of claims 1, 2, 4-8, 10, and 11 over Ray et al. and FooDB have been withdrawn; (4) the 35 U.S.C. 102(a)(1) rejections of claims 14-17 over Ray et al. have been withdrawn; (5) the 35 U.S.C. 103 rejections of claims 12 and 13 over Ray and FooDB have been withdrawn; and (6) the 35 U.S.C. 103 rejections of claims 19 and 20 over Ray have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-20
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: 2, 3, 6, 12, and 15-19
Amended claims: 1, 7, 8, 10, 11, 13, 14, and 20
New claims: None
Claims currently under consideration: 1, 4, 5, 7-11, 13, 14, and 20
Currently rejected claims: 1, 4, 5, 7-11, 13, 14, and 20
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4, 5, 7-11, 13, 14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakata et al. (JP 2015-221032A, citations to the English translation) in view of De Marino et al. (De Marino et al., “Megastigmane and Phenolic Components from Laurus nobilis L. Leaves and Their Inhibitory Effects on Nitric Oxide Production,” J. Agric. Food Chem., 2004, 52, 7525-7531).
Regarding claim 1, Sakata et al. discloses a method of enhancing the sweetness of a sweetness modifier (i.e., a sweetener) comprising the step of adding to the sweetness modifier an olfactory effective amount of laurel tree extract (p. 1, ¶7; p. 3, ¶5).
Sakata et al. does not specifically disclose the laurel tree extract as comprising a megastigmane derivative that falls within the list of compounds or one of the listed compounds as being at a concentration of from about 0.1 ppb to about 500 ppm in the sweetness modifier.
However, De Marino et al. discloses that laurel tree extract comprises lauroside A (Abstract; p. 7525, column 1, ¶1).
It would have been obvious to one having ordinary skill in the art to perform the method of Sakata et al. with a laurel tree extract comprising lauroside A. Sakata et al. discloses the laurel tree extract may be obtained by essentially any known method (p. 3, ¶4), such that the use of an extract obtained via the method disclosed in De Marino et al. (p. 7526, column 1, ¶4 – column 2, ¶2) would be encompassed by the possible extraction methods considered in Sakata et al. A skilled practitioner would be motivated to consult De Marino et al. in order to identify a specific extraction method suitable for performing an extraction as mentioned in Sakata et al. Obtaining an extract containing lauroside A as taught in De Marino et al. and incorporating it into the method of Sakata et al. would thus be obvious to a skilled practitioner.
As for the concentration, Sakata et al. discloses the laurel tree extract may be at a concentration in the beverage of from 0.0001 to 5% w/v (p. 2, ¶9), which equates to 1-50,000 ppm. De Marino et al. discloses 404 g of leaf material (p. 7526, column 1, ¶4) yielded 2.5 mg of lauroside A (p. 7527, column 1, ¶2), which equates to 6 ppm (i.e., 2.5 mg / 404 g = 0.006 mg/g, or 6 ppm). Addition of laurel tree extract at a concentration in the beverage in the range of 1-50,000 ppm would cause the lauroside A in the extract to be added at 0.000006-0.3 ppm, or 0.006 ppb to 0.3 ppm. Sakata et al. discloses the sucralose may be at a concentration in the beverage of from 0.0008-0.04 w/v% (p. 2, ¶5), which equates to 8-400 ppm. Considering exemplary concentrations that fall within those ranges of 0.001 ppm lauroside A and 100 ppm sucralose, the lauroside A would be at a concentration of 10 ppm relative to the sucralose, which falls within the claimed range of about 0.1 ppb to about 500 ppm. The claimed range would thus be obvious to a skilled practitioner.
As for claim 4, Sakata et al. discloses the sweetness modifier as being erythritol (p. 1, ¶7).
As for claim 5, Sakata et al. discloses the sweetness modifier as being sucralose (p. 1, ¶7).
As for claims 7 and 8, the range calculated previously in relation to claim 1 of 0.006 ppb to 0.3 ppm for the lauroside A in 8-400 ppm sucralose renders the claimed ranges of about 1 ppb to about 100 ppm (claim 7) and about 10 ppb to about 10 ppm (claim 8) for the megastigmane derivative obvious.
As for claim 9, Sakata et al. discloses the megastigmane derivative as being provided as a botanical extract of Laurus nobilis (p. 3, ¶4).
As for claim 10, Sakata et al. discloses adding a flavoring in an appropriate amount (p. 4, ¶5), which suggests that the flavoring may be added as desired to achieve any degree of flavoring. MPEP 2144.05 II. The claimed concentration range of about 10 ppb to about 10 ppm would thus be obvious.
As for claim 11, Sakata et al. discloses adding a stevia composition as a component in a beverage (p. 1, ¶2), which renders the addition of a stevia component as a flavoring obvious.
As for claim 13, the range calculated previously in relation to claim 1 based on the combined disclosures of Sakata et al. and De Marino et al. of 0.006 ppb to 0.3 ppm applies to the lauroside A. Sakata et al. discloses adding a flavoring in an appropriate amount (p. 4, ¶5), which suggests that the flavoring may be added as desired to achieve any degree of flavoring. MPEP 2144.05 II states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” As such, any concentration of the flavoring component (the stevia component) would be obvious to a skilled practitioner, and any relative ratio between the megastigmane derivative and the stevia composition would likewise be obvious. The claimed range of weight ratios of about 1:50 – 1:5,000 would thus be obvious to a skilled practitioner.
Regarding claim 14, Sakata et al. discloses a composition comprising a sweetness modifier (i.e., a sweetener) and a laurel tree extract (p. 1, ¶7; p. 3, ¶5).
Sakata et al. does not specifically disclose the composition as comprising a stevia composition, the laurel tree extract as comprising a megastigmane derivative that falls within the list of compounds, or the sweetness enhancer (i.e., the megastigmane derivative and the stevia composition) as being at a concentration of from about 0.1 ppb to about 5,000 ppm.
However, De Marino et al. discloses that laurel tree extract comprises lauroside A (Abstract; p. 7525, column 1, ¶1).
It would have been obvious to one having ordinary skill in the art to produce the composition of Sakata et al. with a laurel tree extract comprising lauroside A. Sakata et al. discloses the laurel tree extract may be obtained by essentially any known method (p. 3, ¶4), such that the use of an extract obtained via the method disclosed in De Marino et al. (p. 7526, column 1, ¶4 – column 2, ¶2) would be encompassed by the possible extraction methods considered in Sakata et al. A skilled practitioner would be motivated to consult De Marino et al. in order to identify a specific extraction method suitable for performing an extraction as mentioned in Sakata et al. Obtaining an extract containing lauroside A as taught in De Marino et al. and incorporating it into the composition of Sakata et al. would thus be obvious to a skilled practitioner.
As for the stevia composition, Sakata et al. discloses adding a stevia composition as a component in a beverage (p. 1, ¶2), which renders the addition of a stevia component obvious.
As for the concentration, the claimed range applies to “the sweetness enhancer”, which is a combination of both the lauroside A and the stevia composition. Sakata et al. discloses the laurel tree extract may be at a concentration in a beverage of from 0.0001 to 5% w/v (p. 2, ¶9), which equates to 1-50,000 ppm. De Marino et al. discloses 404 g of leaf material (p. 7526, column 1, ¶4) yielded 2.5 mg of lauroside A (p. 7527, column 1, ¶2), which equates to 6 ppm (i.e., 2.5 mg / 404 g = 0.006 mg/g, or 6 ppm). Addition of laurel tree extract at a concentration in the beverage in the range of 1-50,000 ppm would cause the lauroside A in the extract to be added at 0.000006-0.3 ppm, or 0.006 ppb to 0.3 ppm. Sakata et al. discloses adding a flavoring in an appropriate amount (p. 4, ¶5), which suggests that the flavoring may be added as desired to achieve any degree of flavoring. MPEP 2144.05 II. As such, any concentration of the flavoring component (the stevia component) would be obvious to a skilled practitioner. Since the lauroside A concentration falls below the claimed range and the stevia component may be at any concentration, the claimed concentration range of about 1-5,000 ppm would be obvious to a skilled practitioner.
Regarding claim 20, Sakata et al. discloses a consumable (i.e., a beverage) comprising a sweetness modifier (i.e., a sweetener) and a laurel tree extract (p. 1, ¶7; p. 3, ¶5).
Sakata et al. does not specifically disclose the composition as comprising a stevia composition, the laurel tree extract as comprising a megastigmane derivative that falls within the list of compounds, or the sweetness enhancer (i.e., the megastigmane derivative and the stevia composition) as being at a concentration of from about 0.1 ppb to about 5,000 ppm.
However, De Marino et al. discloses that laurel tree extract comprises lauroside A (Abstract; p. 7525, column 1, ¶1).
It would have been obvious to one having ordinary skill in the art to produce the composition of Sakata et al. with a laurel tree extract comprising lauroside A. Sakata et al. discloses the laurel tree extract may be obtained by essentially any known method (p. 3, ¶4), such that the use of an extract obtained via the method disclosed in De Marino et al. (p. 7526, column 1, ¶4 – column 2, ¶2) would be encompassed by the possible extraction methods considered in Sakata et al. A skilled practitioner would be motivated to consult De Marino et al. in order to identify a specific extraction method suitable for performing an extraction as mentioned in Sakata et al. Obtaining an extract containing lauroside A as taught in De Marino et al. and incorporating it into the composition of Sakata et al. would thus be obvious to a skilled practitioner.
As for the stevia composition, Sakata et al. discloses adding a stevia composition as a component in a beverage (p. 1, ¶2), which renders the addition of a stevia component obvious.
As for the concentration, the claimed range applies to “the sweetness enhancer”, which is a combination of both the lauroside A and the stevia composition. Sakata et al. discloses the laurel tree extract may be at a concentration in a beverage of from 0.0001 to 5% w/v (p. 2, ¶9), which equates to 1-50,000 ppm. De Marino et al. discloses 404 g of leaf material (p. 7526, column 1, ¶4) yielded 2.5 mg of lauroside A (p. 7527, column 1, ¶2), which equates to 6 ppm (i.e., 2.5 mg / 404 g = 0.006 mg/g, or 6 ppm). Addition of laurel tree extract at a concentration in the beverage in the range of 1-50,000 ppm would cause the lauroside A in the extract to be added at 0.000006-0.3 ppm, or 0.006 ppb to 0.3 ppm. Sakata et al. discloses adding a flavoring in an appropriate amount (p. 4, ¶5), which suggests that the flavoring may be added as desired to achieve any degree of flavoring. MPEP 2144.05 II. As such, any concentration of the flavoring component (the stevia component) would be obvious to a skilled practitioner. Since the lauroside A concentration falls below the claimed range and the stevia component may be at any concentration, the claimed concentration range of about 1-5,000 ppm would be obvious to a skilled practitioner.
Response to Arguments
Claim Objections: Applicant has overcome the objections of claims 10, 11, and 15 based on amendment to the claims and/or cancellation. Accordingly, the claim objections have been withdrawn.
Claim Rejections - 35 U.S.C. § 112: Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 6-8, 12, 13, and 19 based on amendment to the claims and/or cancellation. Accordingly, the 35 U.S.C. § 112(b) rejection has been withdrawn.
Claim Rejections - 35 U.S.C. § 102(a)(1) of claims 1, 2, 4-8, 10, and 11 over Ray et al. and FooDB; and claims 14-17 over Ray et al.; 35 U.S.C. § 103 of claims 12 and 13 over Ray et al. and FooDB; and 35 U.S.C. § 103 of claims 19 and 20 Ray et al.: Applicant has overcome the 35 U.S.C. § 102(a)(1) and § 103 rejections of claims 1, 2, 4-8, 10-17, 19 and 20 over Ray et al., with/without FooDB, based on amendments to the claims and/or cancellation. Accordingly, the 35 U.S.C. § 102(a)(1) and § 103 rejections have been withdrawn.
However, the claims that remain pending are newly rejected under 35 U.S.C. § 103 in view of Sakata et al. and De Marino et al.
Claim Rejections - 35 U.S.C. § 103 of claims 1-3, 9, 14, and 18 over Sakata et al. and De Marino et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that neither cited reference teaches that lauroside A “contributes to sweet taste, nor that it should be selected, isolated, or used as an individual component set for sweet applications at the specific concentrations of the present invention.” (Applicant’s Remarks, p. 6, ¶5). Applicant asserted that there is no reason apparent in the prior art for a skilled practitioner to modify the laurel tree extract of Sakata et al. to select lauroside A as a single compound for use as a sweetener component (Applicant’s Remarks, p. 7, ¶1-¶2).
However, the present claims do not require the selection of lauroside A alone, which undermines Applicant’s arguments. The claims also do not require any recognition that the lauroside A in particular has any effect on sweet taste or that it must be specifically selected and isolated or used as an individual component. MPEP 2144 IV (“It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”). Laurel tree extract comprising lauroside A meets the limitations of the present claims as described in the claim rejection. Applicant’s arguments are thus unpersuasive.
The rejections of claims 1, 9, and 14 have been maintained herein.
Conclusion
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.
Claims 1, 4, 5, 7-11, 13, 14, and 20 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
Prosecution Insights