DETAILED ACTION
Background
The preliminary amendment dated June 27, 2023 (amendment) amending claims 3-7 and 9-10 has been entered. Claims 1-12 as filed with the amendment have been examined.
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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 3, 5 and 11 are objected to because of the following informalities:
In claim 3, at line 1 before “having a sweetness” delete the comma [[,]];
In claim 5, at line 3 before “han guo” make --luo-- lowercase; and,
In claim 11, at line 5 before the comma (,) insert -- to the intrinsic phospholipid--. 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.
Claim 2 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 2 recites the limitation "the phospholipid" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is not clear to what phospholipid the claim refers. Claim 1 from which claim 2 depends recites an intrinsic phospholipid and a foreign phospholipid. The Office interprets the claim as referring to either of the intrinsic phospholipid, the foreign phospholipid or to both of them.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7-8 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US6368651 B1 to Gerlat et al. (Gerlat), as evidenced by “Coffee, brewed - Nutrients - Survey (FNDDS) | USDA FoodData Central” downloaded on August 18, 2025 from https://fdc.nal.usda.gov/food-details/1104137/nutrients, pub. 10/30/2020 (USDA Coffee).
Unless otherwise disclosed, the Office considers 1 g of fluid and 1 ml of fluid as equivalent to one another.
Regarding instant claim 1, 4, and 7-8, Gerlat at col. 2, line 63 to col. 3, line 13 discloses foods (“oral compositions”) having an improved taste and improved sweetness comprising the (a) high-intensity sweetener neotame, which is 8000 times as sweet as sucrose, in a sweetening effective concentration. At Example 73, on col. 17, Gerlat discloses a coffee beverage (claims 7 and 8) containing “(b) an intrinsic phospholipid” (as disclosed at page 3, item [9] of the instant specification) and sweetened with 3.75 ppm neotame, lecithin (“(d) a foreign phospholipid”) in a concentration of 7 ppm, and a bulking agent which comprises (at Example 51 on col. 14) maltodextrin and dextrin (a “low intensity sweetener” in claim 4). The Gerlat compositions comprise taste modifying ingredients including (at col. 5, lines 54-55 and col 6., line 24) lecithin at below taste threshold concentrations (“taste recognition threshold”). Table 3 at page 47 of the instant specification confirms that 3.75 ppm of lecithin is below its taste recognition threshold. Further, USDA Coffee discloses that the amount of (c) sodium in 100g of coffee is 2 mg (2 mg/100mL in claim 1) such that the amount of sodium in 100 ml of the coffee beverage of Example 73 of Gerlat is less than 60 mg/100 mL.
Further regarding instant claim 1 and regarding instant claim 3, the 3.75 ppm neotame concentration in the coffee beverage of Example 73 of Gerlat is 8000 times as sweet as sucrose for a sweetness intensity of 0.00375 g/L x8000 =30 g/L, or 3°Brix sucrose, i.e. a sweetness intensity X1 of 3. Further, Gerlat at col. 3, lines 2-18 discloses that its taste modifying ingredients increase sweetness intensity, including at col. 4, lines 23-24, sodium chloride; further at col. 4, lines 66-67 including carbohydrates and (at col. 5, lines 12-17) sugars; and still further, at col. 5, line 67 including coffee flavoring; and, at col. 6, lines 24-25 including lecithin. Accordingly, the Office considers the sweetness intensity X2 of items (a) to (b) in Example 73 of Gerlat to be at least that of X1 as in claim 1 or at least 3; further considers the sweetness intensity X3 of items (a) to (d) in Example 73 of Gerlat to be more than that of X2 as in claim 1; and considers the sweetness intensity X4 of items (a) to (c) in Example 73 of Gerlat to be greater than X2 but less than X3 as in claim 3. Therefore, the coffee beverage in Example 73 of Gerlat satisfies the equation 0.1 <X2 <X3 in claim 1 and satisfies the equation 0.1 <X2 <X4 <X3 as in claim 3.
Regarding instant claim 2, the Office interprets the claim as referring to either of the intrinsic phospholipid, the foreign phospholipid or to both of them. The Office considers the claimed foreign phospholipid that has a fatty acid having 14 or more carbon atoms to include the lecithin of Gerlat which comprises a phosphatidylcholine and thus comprises C16 and C18 fatty acids as disclosed in the instant specification at page 50, lines 21-22.
Regarding instant claims 10-11, Example 73 of Gerlat discloses as methods of enhancing the sweetness of oral compositions containing a high-intensity sweetener the coffee beverage “sweetened with” the high-intensity sweetener neotame and the added lecithin. Accordingly, Example 73 of Gerlat discloses “(a) adding the high-intensity sweetener corresponding to a sweetness intensity X1” as in claim 10 or in an amount of a taste recognition threshold or more as in claim 11; and discloses “(c) adding the foreign phospholipid to the intrinsic phospholipid in an amount of less than a taste recognition threshold”. Further, because claims 10 and 11 recite (b) “adding 60 mg/100mL or less” of the sodium, the Office considers the claimed step (b) in claims 10-11 to include adding no sodium to the coffee as in Example 73 of Gerlat.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over US2022/0295833 A1 to Higiro et al (Higiro) in view of US6368651 B1 to Gerlat et al. (Gerlat).
Unless otherwise disclosed, the Office considers 1 g of fluid and 1 ml of fluid as equivalent to one another.
Regarding instant claim 1, 5, 7-9 and 12, Higiro in Example 5 at [0206] and the accompanying table discloses a soymilk beverage in a 1000 g formulation 45 ppm of the (a) high-intensity sweetener Rebaudioside M (a “steviol glycoside” in claim 5) and 20 ppm sucralose, also a high-intensity sweetener for a total of 65 ppm of high-intensity sweetener as in (a) of claim 12. At Example 5, G Higiro further discloses the soymilk beverage (claims 7 and 8) containing a soybean milk base which comprises “(b) an intrinsic phospholipid” as disclosed at page 30, in [0092] of the instant specification (claims 1 and 12), (c) 1 part in 1000 of sodium chloride, and a maltodextrin. The Higiro compositions further comprise 0.04 g per 1000 g of soy lecithin, (“(b) a foreign phospholipid”) as a phospholipid from soybean as in claim 9.
Further regarding instant claims 1 and 12, the amount of sodium in the Example 5 oral composition of Higiro is 1 part in 1000 (100 mg/ 100 mL) multiplied by the fraction of sodium in NaCl, which has a MW of 58.45 and where sodium represents 23 parts out of the total of 58.45 parts, or just less than 40 wt% of NaCL. Accordingly, Example 5 of Higiro comprises 100 X about 40% or about 40 mg/100 mL of sodium (claims 1 and 12).
Still further regarding instant claim 1 and regarding instant claim 3, the Office considers the claimed a sweetening effective concentration of a high-intensity sweetener to include the 65 ppm of the high-intensity sweetener disclosed in Example 5 of Higiro because the composition of Example 5 of Higiro comprises the claimed amount of the high-intensity sweetener (about 20 to about 600 ppm) in claim 12 as an amount suitably above its taste recognition threshold. In addition, Gerlat at col. 3, lines 2-18 discloses that its taste modifying ingredients increase sweetness intensity, including at col. 4, lines 23-24, sodium chloride, (at col. 4, lines 66-67) carbohydrates, (at col. 5, lines 12-17) sugars, and (at col. 6, lines 24-25) including lecithin. Accordingly, the Office considers the sodium chloride, soy lecithin and maltodextrin of Higiro all to be taste modifying ingredients that increase the sweetness intensity of its oral composition. Absent a clear showing as to how the sweetness intensity of the soymilk beverage in Higiro differs from that of the oral composition as claimed, the Office considers the soymilk beverage of Example 5 of Higiro to have the claimed sweetness intensity X1 of the high-intensity sweetener of the taste recognition threshold or more or X1 as in claim 1, to have a sweetness intensity X2 of items (a) to (b) of at least that of X1 as in claim 1; to have a sweetness intensity X3 of items (a) to (d) to be more than that of X2 as in claim 1; to have a sweetness intensity X4 of items (a) to (c) of greater than X2 but less than X3 as in claim 3, and to thereby satisfy the equation 0.1 <X2 <X3 in claim 1 and the equation 0.1 <X2 <X4 <X3 as in claim 3. See MPEP 2112.01.I.
Yet still further regarding instant claims 1 and 12, Example 5 of Higiro discloses 0.04 parts/1000 parts soy lecithin or 40 ppm which may or may not be below its taste recognition threshold. Table 3 at page 47 of the instant specification discloses that 20-50 ppm of soy lecithin is below its taste recognition threshold. However, 40 ppm of soy lecithin or foreign phospholipid is equivalent to (d) 40 µg/mL as in claim 12.
Gerlat discloses at col. 5, lines 54-55 and col 6., line 24 compositions comprising taste modifying ingredients including lecithin at below taste threshold concentrations to enhance their sweetness and/or improve their flavor. Further, Gerlat at col. 3, lines 2-18 discloses that its taste modifying ingredients increase sweetness intensity or improve flavor. Still further, Table 3 at page 47 of the instant specification confirms that the 3.75 ppm of lecithin disclosed in the coffee beverage of Example 73 of Gerlat is below its taste recognition threshold.
As of the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Gerlat for Higiro to include its soy lecithin in an amount below its taste recognition threshold. Both references disclose beverages as low sodium oral compositions comprising an intrinsic phospholipid, a high-intensity sweetener and lecithin or a foreign phospholipid. The ordinary skilled artisan in Higiro would have desired to include less than 25 ppm of its soy lecithin in its Example 5 soymilk beverage as in Gerlat to improve the sweetness and/or flavor of the beverage without impairing the emulsifying function of the lecithin.
Regarding instant claim 2, the Office considers the claimed phospholipid that has a fatty acid having 14 or more carbon atoms to include the soy lecithin of Higiro which comprises a phosphatidylcholine and therefore comprises C16 and C18 fatty acids as disclosed in the instant specification at page 50, lines 21-22.
Regarding instant claims 4 and 6, the Office considers the claimed “low intensity sweetener” to include the maltodextrin of Example 5 of Higiro, particularly in light of Higiro at [0148] which lists various low intensity sweeteners such as glucose, sucrose, fructose, maltose, lactose, corn syrup, psicose, allose, xylose, ribose (as in claim 6) and maltodextrin as being equivalents. The ordinary skilled artisan in Higiro would have found it obvious in Higiro to include any of the sugars or low intensity sweeteners in claim 6 in its soymilk beverage of Example 5 as Higiro discloses all of these carbohydrates as desirable ingredients that fulfill the same function as one another.
Regarding instant claims 10-11, Example 5 of Higiro discloses a method of enhancing the sweetness of an oral composition provided by a high-intensity sweetener; however, Higiro does not disclose in order “(a) adding to an intrinsic phospholipid or the oral composition a high-intensity sweetener corresponding to a sweetness intensity X1” as in claim 10 or “in an amount or a taste recognition threshold or more” as in claim 11; then “(b) adding the sodium in an amount of 60 mg/100 mL or less” as in claims 10-11 and then “(c) adding the foreign phospholipid in an amount of less than a taste recognition threshold” to the oral composition. However, Higiro discloses in Example 5 a soybean milk base for making a beverage, while Example 73 of Gerlat discloses “sweetening the” intrinsic phospholipid oral compositions with a high-intensity sweetener, a foreign phospholipid in less than a taste recognition threshold and less than 60 mg/100 mL of sodium. Accordingly, the ordinary skilled artisan in Higiro would have desired to add its high-intensity sweetener, its intrinsic phospholipid and its sodium in the claimed amounts to its intrinsic phospholipid soymilk base or oral composition as in Gerlach to make a stable, sweetened beverage.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable US6368651 B1 to Gerlat et al. (Gerlat), as evidenced by “Coffee, brewed - Nutrients - Survey (FNDDS) | USDA FoodData Central” downloaded on August 18, 2025 from https://fdc.nal.usda.gov/food-details/1104137/nutrients, pub. 10/30/2020 (USDA Coffee) as applied to claim 4, above.
Unless otherwise disclosed, the Office considers 1 g of fluid and 1 ml of fluid as equivalent to one another.
As applied to claim 4, Gerlat at col. 2, line 63 to col. 3, line 13 discloses foods (“oral compositions”) having an improved taste and improved sweetness comprising a (a) an amount of the high-intensity sweetener as neotame corresponding to a sweetness intensity X1; and, at Example 73 on col. 17, Gerlat discloses a coffee beverage which is (as disclosed at page 3, item [9] of the instant specification) (b) an intrinsic phospholipid, and contains (d) 7 ppm of a foreign phospholipid as lecithin and (c) less than 60 mg/ 100 mL of sodium. Further Example 73 of Gerlat discloses a bulking agent or low intensity sweetener which comprises (at Example 51 on col. 14) maltodextrin and dextrin.
Gerlat does not disclose an example containing a low intensity sweetener selected from glucose, sucrose, fructose, maltose, a high-fructose corn syrup, lactose, psicose, allose, tagatose, xylose, ribose, and a combination thereof. However, at col. 5, lines 12-18 Gerlat discloses suitable carbohydrate low intensity sweeteners including sucrose and fructose. The ordinary skilled artisan in Gerlat would have desired to include any of sucrose or fructose in its coffee beverage in Example 73 as Gerlat discloses each of them as a suitable carbohydrate that is also a taste modifying ingredient.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US6368651 B1 to Gerlat et al. (Gerlat), as evidenced by “Coffee, brewed - Nutrients - Survey (FNDDS) | USDA FoodData Central” downloaded on August 18, 2025 from https://fdc.nal.usda.gov/food-details/1104137/nutrients, pub. 10/30/2020 (USDA Coffee).
Unless otherwise disclosed, the Office considers 1 g of fluid and 1 ml of fluid as equivalent to one another.
Gerlat at col. 2, line 63 to col. 3, line 13 discloses foods (“oral compositions”) having an improved taste and improved sweetness comprising (a) a high-intensity sweetener as neotame and, at Example 73 on col. 17 discloses a coffee beverage (as disclosed at page 3, item [9] of the instant specification) as (b) an intrinsic phospholipid containing 3.75 ppm of the high-intensity sweetener, (d) 7 ppm of a foreign phospholipid as lecithin (less than 250 µg/mL of a phospholipid). Further, USDA Coffee discloses that the amount of (c) sodium in 100g of coffee is 2 mg (2 mg/100mL in claim 1) such that the amount of sodium in 100 ml of the coffee beverage of Example 73 of Gerlat is less than 60 mg/100 mL.
Gerlat does not disclose one example comprising from 20 to 600 ppm of the high-intensity sweetener and the claimed (d) foreign phospholipid. However, at Example 51, Gerlat discloses a coffee beverage comprising 25 to 52 ppm of aspartame and 3.75 ppm of the neotame as high-intensity sweeteners. The ordinary skilled artisan in Gerlat would have found it obvious to include in its oral compositions as the coffee beverage of Example 73 from about 20 to about 600 ppm of a high-intensity sweetener because Example 51 of Gerlat discloses that adding from about 29 to about 56 ppm of the high-intensity sweetener provides a desirably sweet coffee beverage.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791