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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/16/2026 has been entered.
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 1, 3-9, 13 and 14 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 1 refers to “syrup” but also refers to “maple syrup”, “agave syrup” and other syrups. It is not clear what the generic recitation of “syrup” refers to given the narrower recitations of specific syrups. Note that the recitation of “syrup” is considered to encompass any syrup, including high fructose corn syrup.
Claim 4 requires the formulation of claim 1 to be an ingestible composition. Claim 5 depends from claim 4 and requires the ingestible composition to be in the form of a food or beverage product, an animal feed product, a pharmaceutical composition, a nutritional product, a dietary supplement, or over-the-counter medication. While the formula itself is ingestible, it is not clear how the formulation which contains the cited materials of claim 1 can be considered a food, animal feed product, pharmaceutical composition etc. It is suggested to amend claim 5 such that it is directed to an ingestible composition comprising the formulation of claim 1 (claim 5) and claims 6-8 depend from claim 5 as currently drafted. Moreover, the limitation of claim 1 requiring the formulation to not contain any other sweeteners is not clear with regard to the claims to an ingestible composition considering that ingestible composition encompasses a wide range of foods and beverages which would be expected to have sugars added thereto.
Claim 7 refers to “tea type drinks”. The phrase “tea type” is unclear as the scope of what would be considered “tea type” is undefined.
Dependent claims are included as they inherit the issues identified above.
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, 4-9, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/213683 (Prakash ‘683).
Prakash ‘683 teaches siamenoside I is combined with at least one additional sweetener (page 2), and also discloses methods of preparing sweetened beverages (page 4). As explained on page 11, the additional sweeteners may be selected from a list including coupling sugars, invert sugar, soybean oligosaccharides and high potency sweeteners such as brazzein, hernandulcin, phyllodulcin, glycyphyllin, phloridzin, phyllodulcin, luo han guo, monatin, etc. (page 13). Prakash also explains that siamenoside may be present in any amount to impart the desired sweetness when the sweetener composition is present in a sweetened composition and gives an example where the effective amount is 1-1000ppm (page 16). This amount overlaps the claimed range and provides a prima facie case for obviousness absent a showing of criticality.
Further regarding the amount of siamenoside I, Prakash ‘683 teaches siamenoside I in citric acid buffer at 30 ppm blended with 470 ppm RebM95s and sensory evaluation indicated that the taste quality of the blend had improved, including less sweetness linger and significantly less bitterness compared to RebA95 alone (page 53). While the example is directed toward RebM95, Prakash clearly indicates that other sweeteners may be used other than RebM. Based upon the disclosure that siamenoside amounts may vary from 1-1000 ppm and the example of 30 ppm, one of ordinary skill would have found it obvious to use high potency sweeteners or other sweeteners other than RebM95 with a reasonable expectation of providing a sweetened beverage. Prakash clearly indicates that the range of 1-1000ppm is within the scope of the invention and provides an example to the effect. While the example chooses one particular high potency sweetener, Prakash lists several sweeteners that are combinable with siamenoside to provide a sweetened beverage. Moreover, it is within the purview of one ordinary skill to adjust the amounts of each sweetener to obtain the desired level of sweetness in the product.
Regarding the limitation “wherein the formulation does not contain any other sweeteners”, Prakash ‘683 discloses a list of sweeteners that significantly overlaps with the claimed list of sweeteners. It would have been obvious to choose any of the sweeteners listed based upon their known property of providing sweetening effect. Prakash ‘683 discloses a beverage comprises a blend of Siamenoside I and at least one other sweetener (pages 29- 30). Prakash ‘683 discloses several high potency sweeteners and is not limited to the example using RebM95. It would have been obvious to one of ordinary skill to use other well-known sweeteners provided by Prakash ‘683 with a reasonable expectation of providing a sweetener.
Regarding claims 13 and 14, Prakash ‘683 discloses flavorants and flavoring ingredients and additives may be added to improve the temporal and flavor profile of the sweetener to provide a sweetener composition with a taste similar to sucrose (page 17). Suitable flavorants and flavoring ingredients also include bitterness blockers (page 26).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/213683 (Prakash ‘683) in view of WO 2017/176873 (Prakash ‘873).
Prakash ‘683 discloses the formulation discussed above but does not disclose the flavor modifying compounds of instant claim 3. Prakash ‘873 discloses a consumable comprising a sweetener and at least one compound of Formula Compound I (abstract, page 14). The sweetener may be a mogroside such as siamenoside I (page 18-19).
The sweetness enhancer/taste modulator is disclosed as Formula Compound 1 (excerpt from page 14):
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Prakash ‘873 teaches that taste modulators positively impacts the perception of a non-sucrose sweetener in a consumable (e.g. beverage) and masks bitterness, sourness, astringency, etc. (page 13). Compound 1 corresponds to the first flavor modifying compound of instant claim 3.
Prakash ‘873 teaches the beverage product may be carbonated, juice, coconut water, etc. and may include an additional natura, non-natural or synthetic sweetener (page 34-35). It would have been obvious to one of ordinary skill in the art at to add the sweetness enhancer/taste modulator of Prakash ‘873 to the sweetener of Prakash ‘683 to provide enhanced sweetness and mask bitterness of the sweetener. Prakash ‘873 also demonstrates that the sweetness enhancer/taste modulator can be used in combination with siamenoside I.
Claims 1, 3-9 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/176873 (Prakash ‘873) alone, or alternatively further in view of WO 2018/213683 (Prakash ‘683).
Prakash ‘873 teaches a consumable comprising a sweetener and at least one compound of Formula Compound I (abstract, page 14). The sweetener may be a mogroside such as siamenoside I (page 18-19) and specifically discloses use of the mogroside and compound of the formula without the requirement of RebM (page 26). Prakash ‘873 states that the consumable contains RebM and/or the mogroside sweetener and the sweetness enhancer/taste modulator disclosed as Formula Compound 1 (excerpt from page 14):
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Thus, RebM is considered optional and the consumable may include the mogroside and the Formula Compound 1. Prakash ‘873 teaches that the taste modulator positively impacts the perception of a non-sucrose sweetener in a consumable (e.g. beverage) and masks bitterness, sourness, astringency, etc. (page 13). Compound 1 corresponds to the first flavor modifying compound of instant claim 3.
Prakash ‘873 teaches the beverage product may be carbonated, juice, coconut water, etc. and may include an additional natura, non-natural or synthetic sweetener (page 34-35). The beverage may include a multitude of different compositions (page 35) including vitamins and caffeine.
Regarding the amount of siamenoside I, the sweetener (mogroside) of Prakash ‘873 may be present in an amount of 50-500ppm (page 25) and may also be present as a mixture of more than one mogroside (pages 18-19). This amount overlaps the claimed range, thus rendering the range prima facie obvious.
Prakash ’873 does not expressly give an example where siamenoside I is selected as the mogroside. However, Prakash ‘873 specifically teaches siamenoside I is a known mogroside and lists siamenoside I as a useful mogroside for the sweetener of the composition. Thus, one of ordinary skill would have selected siamenoside I as the mogroside sweetener with a reasonable expectation of successfully providing a sweetener for the consumable beverage disclosed.
Additionally, Prakash ‘683 discloses siamenoside I is combined with at least one additional sweetener (page 2), and also discloses methods of preparing sweetened beverages (page 4). As explained on page 13, the additional sweeteners can be a natural high potency sweetener including brazzein, hernandulcin, phyllodulcin, glycyphyllin, phloridzin, phyllodulcin, luo han guo, monatin, etc. (page 13). Prakash ‘683 also explains that siamenoside may be present in any amount to impart the desired sweetness when the sweetener composition is present in a sweetened composition and gives an example where the effective amount is 1-1000ppm (page 16). Prakash ‘683 provides to one of ordinary skill reasoning to select siamenoside as the mogroside that is combined with a high potency sweetener and the enhancers/taste modulator of Formula 1 in Prakash ‘873 with a reasonable expectation of success based upon the indication by Prakash ‘683 that siamenoside may be combined with high potency sweeteners for providing an improved sweet taste. Prakash ‘683 also indicates that amounts under 50ppm may be used (see in the rejection under 103 over Prakash ‘683 above).
Further regarding the amount of siamenoside, Prakash ‘873 teaches that the mogroside is present in an amount of about 50-500 ppm, but also teaches that the mogroside may be a blend of two or more mogrosides (pages 18-19) and includes siamenoside I as one of the mogrosides that may be used in combination with another mogroside. Prakash ‘873 also stated that the amount of mogroside may vary. It would have been obvious to one of ordinary skill to provide a mixture of mogrosides as disclosed by Prakash ‘873 where the amounts of each individual mogroside may vary so long as the total amount provides the desired amount of sweet flavor to the consumable. Prakash ‘683 also indicates that amounts under 50ppm may be used, thus indicating combinations of high potency sweeteners and siamenoside that are effective. Here, the presence of the flavor modifying compound and any other sweeteners or flavoring agents meets the limitations of claim 1.
Claims 1, 4-9 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0054058 (Prakash ‘058) (cited on IDS filed 05/04/2026).
Prakash ‘058 discloses a formulation for sweetening a beverage comprising a sweetener and a dihydrochalcone, which is considered a flavor modifying compound or flavoring agent due to its ability to modulate taste attributes of the sweetener [0017]. Prakash ‘058 discloses that the sweetener is present in an amount of about 50 to about 600 ppm [0022] and that the sweetener may be a mogroside, specifically siamenoside I [0015, 0079, 0089, 0190]. While no example is provided where the amount of siamenoside is within the claimed range, Prakash ‘058 discloses that “about 50” ppm of the sweetener may be used, thus obviating the use of siamenoside in such an amount. Thus, it would have been obvious to one of ordinary skill in the art, based upon the disclosure of Prakash ‘058, to provide siamenoside I in the amount suggested in combination with the dihydrochalcone with a reasonable expectation of sweetening a beverage to at least some degree. The amounts of sweetener added are optimizable based upon the desired amount of sweetness in a final product. Regarding claims 7 and 8, the beverage may be a juice, milk or milk alternative, or water [0115, 0158] and may comprise phosphoric acid, citric acid and various additives [0158-0164]. Regarding claims 9, 13 and 14, as stated above the dihydrochalcone modulates taste attributes of the sweetener and exhibits one or more of the following: improved mouthfeel, a more sucrose-like taste, less sweetness linger, less licorice aftertaste, or less bitterness [0190].
Response to Arguments
Applicant’s amendments have overcome the rejection under 102 over Higiro (US 2023/0157324), and the rejection under 103 over Galano (US 2020/0345049); thus, the rejections are withdrawn.
Applicant's arguments filed 04/16/2026 have been fully considered but they are not persuasive and the rejections maintained are explained above.
Applicant argues that Prakash ‘683 teaches siamenoside I combined with at least one additional sweetener and that the reference teaches siamenoside I in citric acid buffer at 30 ppm blended with RebM95s. Applicant argues that Prakash ‘683 would not lead a person of ordinary skill to conclude that the siamenoside I imparted any particular benefit to the RebM95 solution and amended claim 1 excludes RebM95 as an option for the additional sweetener. A reference is not limited to its examples and the list of mogrosides is well-known to those of ordinary skill in the art and while one is selected for use in the examples, there is no indication that the other mogrosides, including siamenoside, would not perform in a similar manner. Nevertheless, Prakash ‘683 expressly discloses siamenoside and effects thereof as well as the amounts as claimed with regard to claim 1 and materials thus indicating to one of ordinary skill its usefulness in the same context set forth by Prakash ‘873. Regarding the argument that one of ordinary skill would not conclude that siamenoside I imparted any benefit, the disclosure of Prakash ‘683 is directed to siamenoside I sweetened compositions and recognizes that a low amount of siamenoside (30 ppm) combined with a high potency sweetener (RebM95 470 ppm) achieved a similar sweetness intensity to a single about of RebA at 600 ppm. Thus, the use of siamenoside I in a relatively small amount in combination with a high potency sweetener allowed for a diminished total amount of sweetener (500 ppm vs 600 ppm). This example indicates that lower amounts of siamenoside I can be used in combination with a high potency sweetener and still achieve sweetness comparable to RebA. Prakash ‘683 does not provide examples of siamenoside I in combination with other high potency sweeteners but lists several known high potency sweeteners (pages 13-14) that would be obvious to one of ordinary skill to use in place of RebM95.
Regarding Prakash ‘873 alone or in combination with Prakash ‘683, applicant argues that Prakash ‘873 provides three examples where none are siamenoside I and concludes that one of ordinary skill would not come to the conclusion regarding sweetness enhancing ability of Compound I or be motivated to select siamenoside I based on the results. As recognized by applicant, the first two experiments enhancement of the sweetness of a high potency sweetener was observed by using Compound I, thus demonstrating the effect of enhancing sweetness by use of Compound I. Prakash ‘873 does not provide examples using siamenoside I but clearly discloses that siamenoside I is an exemplary mogroside, thus indicating to one of ordinary skill the usefulness thereof. Moreover, the alternative citation of Prakash ‘873 in combination with Prakash ‘683 provides ample reason for selecting siamenoside I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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