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 .
Non-compliance and Status of the Claims
Receipt of Remarks/Amendments filed on 11/23/2025 is acknowledged. Applicant elected Group I, Claims 1-3, 5-6, 11-12, 14-15, 17-19, 21, 23, 25 and 31, and submitted an amended claim set. Claims 4-5, 7-10, 13-14, 16, 18, 20, 22-24, 27 and 29 are cancelled. Applicant withdrew Claims 23, 25-26, 28, and 32. Applicant did not indicate traversal of the requirement; therefore, the response will be treated as one without traverse.
The reply filed on 11/23/2025 is not fully responsive to the prior Office action because of the following omission(s) or matter(s): The Examiner notes on the record that Applicant used the incorrect claim identifier for Claim 30, and therefore are non-compliant. Claim 30 indicate “original”, but was not elected and therefore withdrawn, and the identifier should indicate “Withdrawn” or “Withdrawn – currently amended” in accordance to CFR 1.121. See MPEP 714. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, for compact prosecution, Claim 30 will be considered withdrawn and not examined in lieu of issuing a noncompliance. Accordingly, Claims 1-3, 6, 11-12, 15, 17, 19, 21, and 31 correspond to the elected subject matter and are herein acted on the merits.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/09/2025 and 10/04/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
Claim Objections
Claims 1, 17, and 19 are objected to because of the following informalities:
Claims 1 and 19 are objected to because the acronym “MNEI” must be defined or spelled out when first used.
Clam 17 has a misspelling; coating is misspelled as “coting” Appropriate correction is required.
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.
Claims 15 and 17 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.
Claim 15, which depends from Claim 12 and ultimately from Claim 1, recites the limitation "the anti-sweet agent (ASA)". There is insufficient antecedent basis for this limitation in the claim. Neither Claim 1 nor Claim 12 refers to any anti-sweet agent.
Claims 15 and 17 are rejected for indefiniteness because it is unknown what is being refered to as “food compound” which electrostatically binds to an ASA, and/or has a melting point ranging from about 25°C to about 35°C. The Specification does not provide any identity of this compound. As such, one skilled in the art would not be appraised on what “food compound” is being used in the invention.
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.
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 1-3, 6, 11-12, 15, 17, 21 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (WO 2014/153000), hereinafter Luo.
Luo discloses provides edible compositions comprising a sweet taste modulator, food products comprising such edible compositions and methods of preparing such food products (Abstract). Luo provides methods of reducing the amount of sugar in a food product, methods of reducing the caloric intake in a diet, and methods of enhancing sweet taste in a food product (Abstract).
Regarding Claim 1, Luo expressly teaches the method of enhancing the sweet taste of a sweetener in an edible composition by adding a compound of Formula (I) (Claim 1). The Examiner gives “polyphenol” the broadest reasonable interpretation to mean more than one phenolic group, and as such, Luo teaches micropatching agent in the polyphenolic compounds of Formula I, (Claim 11). Additionally, Luo teaches embodiments containing natural functional ingredients such as saponins and antioxidants [0113]-[0118]. In particular embodiments, the antioxidant is a catechin such as, for example, epigallocatechin gallate (EGCG), which also reads on the micropatching agent claimed [0121].
Regarding the taste modifying protein (TMP), Luo teaches inter alia high-potency sweetener monellin, which is a variant of MNEI (Claim 25).
Regarding Claim 2, Luo provides flavonoid compounds for modulating or potentiating the sweet taste of a sweetener, wherein the compounds have molecular weight less than about 1000, 500, or 300 daltons [0032]. Regarding Claim 3, Luo describes the method of enhancing activation of the sweet receptor wherein its compound contacts a sweet receptor [0282]-[0287].
Regarding Claims 6 and 11, Luo teaches catechin, gallocatechins, epicatechin and its gallate forms, epigallocatechin and its gallate forms (ECGC) [0121].
Regarding Claim 12, Luo teaches that the rate of release of the sweet taste modulator may be regulated; Rapid release can be achieved by encapsulating the sweet taste modulator of the present invention with a material with high water solubility [0235].
Regarding Claim 15, Luo teaches inclusion of solubilizing agents inter alia cyclodextrin, as well as for molecular encapsulation ([0251], [0377]).
Regarding Claim 17, the instant Specification does not provide identities or examples of food compounds that bind anti-sweet agents (ASA), has a melting point ranging from about 25°C to 35°C, and is useful as encapsulating or coating material. However, Luo teaches additional ingredients including fatty acids; some fatty acids such as capric acid would have melting point near or within the claimed range, and would bind ASAs such as zinc salts.
Regarding Claims 21 and 31, Luo comprehends the importance of non-caloric artificial and natural high-potency sweeteners to reduce the level of sweeteners, but that their use is limited due to temporal and/or flavor issues, e.g., slow onset of sweetness, sweetness linger, bitter, metallic or licorice taste [0003]. Luo provides compounds that may be added to food products which allow for the use of reduced amounts of caloric sweeteners (e.g., sugars) while maintaining desirable sweet taste and avoiding the flavor issues associated with sugar substitutes, which reads on the claimed feature of sensory profile being close to sugar, and better sweetness potency and profile ([0003], Example 1).
Importantly, the recitation of “wherein the functional taste-improving composition has at least one improved food-related property compared with the TMP alone” is not given patentable weight as it merely states the result of the limitations in the claim and adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, claim 1 uses the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same. Furthermore, because Luo teaches the same components of the claimed composition, there is a reasonable expectation that the property would be the same.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Luo, as applied to Claim 1 above, and in view of Chen et al. (Biotechnol Lett (2011) 33:721–725), hereinafter Chen.
The teachings of Luo have been set forth supra.
Regarding Claim 19, Luo is silent on the sequence of the TMP. However, Chen cures the deficiency of Luo. Chen also teaches the sweet protein, monellin, and recognizes its use as a highly potent sweetener (Introduction, 1st paragraph). Chen relates that single-chain monellin with 97 amino acids and a molecular weight of 10.7 kDa, in which the two polypeptides are connected by a glycine residue had greatly improved thermal stability without changing its sweetness, and further relates that monellin is costly to extract from the fruit and the plant is difficult to grow (Introduction, 1st paragraph). Chen discloses a synthetic gene encoding single chain monellin and realized a high level expression of monellin in S. cerevisiae to give a maximal protein production (Introduction, 2nd paragraph; p. 725, last paragraph). The amino acid sequence of Chen has high sequence alignment rate with the sequences instantly claimed (Seq. 1-27), and is considered a variant by the Examiner.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Chen with that of Luo and prepare the monellin variant having the sequence provided by Chen and use this as TMP in the composition of Luo because Chen has taught the advantages of its monellin variant, and because natural monellin is costly to extract from the fruit and the plant is difficult to grow.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792