DETAILED ACTION
Amendments made June 25, 2026 have been entered.
Claims 1-20 are pending;
Claims 16-20 have been withdrawn.
Elected Species: full-strength beverage; carbonated beverage; and Rebaudioside A.
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 .
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.
Claim Objections
The objection to claim 2 due to minor informalities has been withdrawn in light of applicant’s amendments made June 25, 2026.
Claim 3 is objected to because of the following informalities:
Claim 3 refers to the instant specification and thus is objected to as being in improper form. MPEP 2173.05(s) states “where possible, claims are to be complete in themselves.” It is further stated that “incorporation by reference is a necessity doctrine, not for applicant’s convenience”, and that it is to be permitted only where there is no practical way to define the invention in words. As the method of testing is set out in the specification in words, there is no need for there to be an incorporation by reference for the testing method.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1-15 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 due to not specifying the concentration in claims 1, 12, and 13 and for a broad and narrow limitation in claims 7 and 11-13 has been withdrawn in light of applicant’s amendments made June 25, 2026.
The rejection of claims 6 and 13 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends has been withdrawn in light of applicant’s amendments made June 25, 2026.
Claim 3 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 3 recites “wherein said foam height and said foam stability are determined in accordance with the foam height assay and foam stability assay, respectively, as set forth in Example 1. First it is noted that example 1 never recites method steps for “a foam height assay” or “foam stability assay”, however, does exemplify measuring of the foam height and foam stability by forming a mixture and shearing at “medium shear”. The term “medium shear” however is a relative term and it is unclear as to what degree of shear would and would not be encompassed by the term as no bench mark for measuring has been set for measuring what would and would not be considered “medium”.
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.
Note:
“About” is in reference to a number generally taken to include numbers that fall within a range of 1%, 5%, or 10% in either direction of the number unless otherwise stated or otherwise evident from the context (instant specification paragraph 18).
“Foam suppressing agent” refers to an agent that when added to a steviol glycoside control composition or a steviol glycoside control carbonated composition or beverage, can reduce the foam height and/or foam stability of the steviol glycoside control composition or the steviol glycoside control carbonated composition or beverage respectively by at least 0.5% (instant specification paragraph 20).
“Steviol glycoside control composition” is a composition that contains the same ingredients in the same concentration as a comparator composition (which comprises water; one or more steviol glycosides; and one or more foam suppressing agents described herein), except that the steviol glycoside control composition does not contain the one or more foam suppressing agents (instant specification page 25).
“Carbonated beverage” refers to a composition comprising carbon dioxide gas (instant specification paragraph 26).
Claims 1-7, 9-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Urai et al (WO 2016052659) in view of Sakurai et al (WO 2016208527).
Regarding claims 1, 4-5, 9-11, and 15, Urai et al (Urai) teaches a packaged carbonated, i.e. carbon dioxide containing, beverage with reduced foaming comprising: fragrances, acids, and 0.5-500ppm, more preferably 0.5-250ppm Rebaudioside A (Reb A, a steviol glycoside) (abstract, page 1 lines 42-47, page 2 lines 11-13 and 23-33, page 3 lines 29-32, and page 7 lines 59-60).
Urai does not teach the beverage comprising about 1ppb to 2000ppm total concentration of one or more foam suppressing agents comprising citral, nerol, geraniol, or combinations thereof as recited in claim 1, preferably from about 1ppb-700ppm as recited in claim 10, or about 25-100ppm as recited in claim 11.
Sakurai et al (Sakurai) teaches that the addition of an emulsifier and 1ppm or more of one or more fragrance components selected from the group consisting of limonene, linalool, geraniol, and citral provides excellent long-term stability of quality in terms of gas removal suppression, foaming suppression, and temporal stability of taste to packaged carbonated beverages (abstract and paragraphs 6, 8, 9, 10, 15, 20, 28). Sakurai teaches the total concentration of the fragrance component is not particularly limited, but may be for example, 1ppm or more and 500ppm or less, 300ppm or less, or 100ppm or less (paragraph 24). Sakurai teaches the beverage may contain natural sweeteners including stevia extracts (paragraphs 30 and 31), which would encompass rebaudisosides such as Reb A.
Regarding the composition as comprising about 1ppb to 2000ppm of one or more foam suppressing agents comprising citral, nerol, geraniol, or combinations thereof as recited in claim 1, preferably from about 1ppb-700ppm as recited in claim 10, or about 25-100ppm as recited in claim 11, it would have been obvious for the packaged carbonated beverage of Urai to comprise an emulsifier and 1ppm or more, including up to 500ppm, 300ppm, or 100ppm total concentration of one or more fragrance components selected from the group consisting of limonene, linalool, geraniol, and citral in order to provide excellent long-term stability of quality in terms of gas removal suppression, foaming suppression, and temporal stability of taste to the packaged carbonated beverage in view of Sakurai. Thus, the prior art makes obvious the beverage composition of Urai as comprising 1ppm-500ppm, or 1-300ppm, or 1-100ppm of the total concentration of foam suppressing agent which is citral and/or geraniol.
Regarding the foam height and/or stability of the beverage as recited in claims 2 and 3, Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. 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 re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case as the prior art encompasses the same type of edible composition, i.e. a carbonated beverage, comprising the same type and amounts of active ingredients as claimed and disclosed, i.e. 1-500ppm foam suppressing agent and 0.5-500ppm Reb A, the product of the prior art would be expected to encompass or alternatively make obvious a product with the same properties to the product as claimed. Therefore, as a prima facie case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different. It is further noted, that a “steviol glycoside control composition” is defined as a composition that contains the same ingredients in the same concentration as a comparator composition (which comprises water; one or more steviol glycosides; and one or more foam suppressing agents described herein), except that the steviol glycoside control composition does not contain the one or more foam suppressing agents (instant specification page 25), thus further supporting the position that a prior art reference with the same foam suppressing agents as claimed and disclosed would have the same properties as claimed.
Regarding the foam suppressing agent as consisting of citral, nerol, geraniol, or combinations thereof as recited in claim 6, the claimed limitation is considered a product by process step as it first forms a “foam suppressing agent” component to be added when forming the beverage composition. In product by process claims the method is considered as much as it affects the product claimed. In the instant case, as the composition is one comprising the foam suppressing agent, the claimed limitation would impart to the beverage a composition comprising the components within the foam suppressing component including citral, nerol, geraniol, or combinations thereof. As discussed above, Urai is silent to the beverage as comprising citral nerol, geraniol, or combinations thereof, however, it would have been obvious for the packaged carbonated beverage of Urai to comprise an emulsifier and 1ppm or more, including up to 500ppm, 300ppm, or 100ppm of total concentration of one or more fragrance components selected from the group consisting of limonene, linalool, geraniol, and citral in order to provide excellent long-term stability of quality in terms of gas removal suppression, foaming suppression, and temporal stability of taste to the packaged carbonated beverage in view of Sakurai. Thus, the prior art makes obvious the beverage composition of Urai as comprising 1ppm-500ppm, or 1-300ppm, or 1-100ppm of the total concentration of foam suppressing agent which is citral and/or geraniol.
Regarding claim 7, as discussed above, Urai teaches a reduced foaming packaged carbonated beverage containing carbon dioxide comprising 0.5-500ppm, more preferably 0.5-250ppm Reb A (a steviol glycoside), wherein it would have been obvious for the beverage to comprise 1ppm-500ppm, or 1-300ppm, or 1-100ppm of the foam suppressing agent which is citral and/or geraniol in view of Sakurai. Thus, the composition of the prior art would have an overlapping ratio to that as claimed, including 20:1 (20ppm Reb A and 1ppm foaming agent) to 5:1 (5ppm Reb A and 1ppm foaming agent).
Regarding the total concentration of the foam suppressing agent as about 0.0001-0.2% by weight as recited in claim 13, as discussed above, it would have been obvious for the beverage of Urai to comprise 1ppm-500ppm, or 1-300ppm, or 1-100ppm of the foam suppressing agent which is citral and/or geraniol in view of Sakurai. The ppm taught by Sakurai can be multiplied by 10,000 to arrive at the weight percent disclosed by the prior art, i.e. about 0.0001-0.5% which encompasses the claimed range.
Regarding claim 14, Urai teaches a Brix of 0.5-13.5 (page 1 line 49 and page 2 lines 49-58).
Regarding the claimed ranges and ratios, it is further noted that the prior art discloses overlapping ranges. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Urai et al (WO 2016052659) in view of Sakurai et al (WO 2016208527), further in view of Prakash et al (US 2007/0116839).
As discussed above, Urai teaches a carbonated beverage containing 0.5-500ppm Reb A (a steviol glycoside), wherein it would have been obvious for the carbonated beverage of Urai to comprise an emulsifier and 1ppm or more, including up to 500ppm, 300ppm, or 100ppm of one or more fragrance components including geraniol and/or citral in order to provide excellent long-term stability of quality in view of Sakurai.
Urai is not specific to the beverage as having a pH of about 2.2-7.5 as recited in claim 8.
Prakash et al (Prakash) teaches a high potency sweetener composition in combination with a sweet taste improving composition, wherein the product comprising the compositions includes carbonated beverages and the high potency sweetener is reb A (paragraphs 872 and 874). Prakash teaches that the combination of the high potency sweetener and sweet taste improving composition is at a pH that does not materially or adversely affect the taste of the functional sweetener composition or the functional sweetened composition, wherein an example of the pH range is from about 2-8 (paragraph 857).
Regarding the beverage as having a pH of about 2.2-7.5 as recited in claim 8, it would have been obvious for the beverage of Urai, which contains high potency sweetener Reb A to have a pH of about 2-8 as Prakash teaches that it is a pH that would not materially or adversely affect the taste.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Urai et al (WO 2016052659) in view of Sakurai et al (WO 2016208527), further as evidenced by AquaCalc (https://www.aqua-calc.com/calculate/food-volume-to-weight pages 1-2) and PubChem (pages 1-32 https://pubchem.ncbi.nlm.nih.gov/compound/geraniol#section=MeSH-Entry-Terms and https://pubchem.ncbi.nlm.nih.gov/compound/Citral#section=Depositor-Supplied-Synonyms).
As discussed above, Urai teaches carbonated beverage, wherein it would have been obvious for the carbonated beverage of Urai to comprise an emulsifier and 1ppm or more, including up to 500ppm, 300ppm, or 100ppm of one or more fragrance components including geraniol and/or citral in order to provide excellent long-term stability of quality in view of Sakurai.
Urai and Sakurai are not specific to the volume percent of the foam suppressing agent as recited in claim 12, however, by using the density of the beverage composition the foam suppressing agents, the volume of the disclosed elements can be calculated.
Regarding the total concentration of the foam suppressing agent as present in a concentration of about 0.0001-0.1% v/v as recited in claim 12, it is noted that the claimed limitation is simply another manor of reciting a more limited range of the about 1ppb to 2000ppm recited in claim 1. Regardless, as discussed above, it would have been obvious for the beverage of Urai to comprise 1ppm-500ppm, or 1-300ppm, or 1-100ppm of the total concentration of the foam suppressing agent which is citral and/or geraniol in view of Sakurai. By using the density of the beverage composition and the foam suppressing agents, the approximate volume of the disclosed elements can be calculated. As evidenced by AquaCalc 1ml of carbonated beverage is about 100 grams (pages 1-2), and as evidenced by PubChem the density of citral is about 0.89 g/ml (page 15) and the density of geraniol is about 0.87-0.89 g/ml (page 32). Thus, the beverage of Urai in view of Sakurai comprises about 0.125-6.25% vol/vol total concentration of the foam suppressing agent.
Response to Arguments
Applicant's arguments filed June 25, 2026 regarding the remaining rejections and objection have been fully considered but they are not persuasive.
Applicant argues that claim 3 should not be objected to because MPEP 2173.05s recognizes that claims may reference standardized test methods where necessary to define a property. This argument is not convincing. First it is noted that MPEP 2173.05s does not refer to standardized test methods, but rather to tables and figures. Regardless, MPEP 2173.05s states “where possible, claims are to be complete in themselves.” It is further stated that “incorporation by reference is a necessity doctrine, not for applicant’s convenience”, and that it is to be permitted only where there is no practical way to define the invention in words. As the method of testing is set out in the specification in words, there is no need for there to be an incorporation by reference for the testing method and the objection to the claim remains.
Applicant argues that the parameters for testing in claim 3 are clear. This argument is not convincing as the term “medium shear” is a relative term without clear metes and bounds.
Applicant argues that Urai teaches a different solution than the claimed invention, specifically that Urai replaces Reb A with other steviosides to reduced foaming instead of using a foam suppressing agent. This argument is not convincing as the rejection was made over a combination of references, and not over Urai alone; the claims are directed to a product, and not a method of reducing foam; and Urai teaches of a beverage with reduced foaming comprising an overlapping amount of one or more steviol glycosides within the claimed range, wherein the use of the claimed foam suppressing agents would have been obvious in view of Sakurai.
Applicant argues that Urai and Sakurai teach different solution pathways and thus there is no motivation or expectation of success when combining them. This argument is not convincing as the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Applicant argues that the office has not established that the claimed foam reduction properties are inherent because the prior art does not specifically teach them. This argument is not convincing. First it is noted that the foam suppressing properties are recited in claims 2 and 3 and not in every claim. Second it is noted that the foam suppressing properties are measured in comparison to a control beverage composition which does not include citral, nerol, geraniol, or a combination thereof. As the prior art makes obvious a beverage composition comprising citral and/or geraniol within the claimed and disclosed amounts, the product of the prior art would be expected to have the same foam reduction properties when compared to the control. A chemical and its properties cannot be separated. 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 re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicant argues that as seen in Example 1, paragraphs 117-119 the addition of citral, nerol, or geraniol provides for unexpected results in terms of foaming a Reb A or Reb J composition. This argument is not convincing at least because the evidence is not commensurate in scope with the claims such that it is clear the argued result would be present in all compositions encompassed by the claims. For example, the claims are directed to any edible composition, and are not limited to a model beverage comprising a buffer of pH 3; the claims comprise one or more steviol glycosides in a concentration of about 100-7000ppm and are not limited to Reb A or J at 660ppm respectively; and the claims are directed to 1ppb-2000ppm citral, nerol, and/or geraniol and are not limited to 60ppm citral, or 60ppm nerol, or 60ppm geraniol. Additionally, reference is made to Burke et al US 2007/0148099 which shows that the use of aroma components including nerol and geraniol reduce foaming (abstract and paragraphs 35-36).
Conclusion
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 KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/ Primary Patent Examiner, Art Unit 1792
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