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 information disclosure statement filed 12/12/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Three NPL references are attached to the IDS filed 12/12/2025, but none of them appear to be relevant to the case, and none match the listing on the IDS. While one reference does refer to McMurry, the citation on the IDS does not appear consistent with the document itself other than the name McMurry. Another document provided is essentially two blank pages with only an error code and coding on one page. There appears to be no relevance and no correspondence to the documents cited on the IDS.
The information disclosure statement filed 12/12/2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the Uniprot document is not clear in its relevance or subject matter to be considered. The IDS cites Databases Unitprot and Schacherer but the document itself is not clearly related to the disclosed subject matter and it is not clear what the document is disclosing at all. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
No document reflecting Kasai as an author and no document that appears to be McMurry as author directed to “Sugars” is found in the record.
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, 4-9, and 12-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by 2023/0157324 (Higiro).
Higiro teaches a beverage comprising a sweetening amount of Reb M or sucrose and a non-sweetening amount of siamenoside I (abstract). Higiro also discloses that at least one additional sweetener can be added including carbohydrate sweeteners [0068], other steviol glycosides or mogrosides such as Reb D, Reb A, Eb B, Reb C, Reb D, Reb I, etc. [0071-73]. Higiro also discloses flavorants and flavoring ingredient additives which are considered flavor modifying compounds or flavoring agents [0087-88]. The flavorant is present in a concentration of 0.1-4000ppm. Tables 6 and 7 include examples (3, 6 and 7) with lemon lime flavor and citric acid which are considered flavor modifying compounds or flavoring agents.
Regarding claims 4-6, the food is a beverage for human consumption.
Regarding claims 7-8, the beverage may be carbonated, sparkling, or non-carbonated and include fruit juice, energy drinks, etc. and comprise citric acid, phosphoric acid [0042-0045], and various other materials, such as flavorants, organic acid additives, and polymer additives listed throughout the reference.
Regarding claim 9, Higiro states “It has been found, surprisingly, that use of low levels of siamenoside I (i.e., non-sweetening amounts of siamenoside I) influences the flavor profile of rebaudioside M- and sucrose-sweetened beverages in a positive manner, improving the flavor profiles of the beverages and providing a more rounded or balanced flavor profile. [0025]. Thus, the formulation is seen to enhance the sweetness of the additional sweetener.
Regarding claim 12, Examples 3, 6 and 7, each have siamenoside I in amounts less than 25ppm.
Regarding claims 13 and 14, as stated above flavor modifying compounds may be present. As described by Higiro, “the term ‘flavor enhancer’, as used herein, refers to a compound that positively impacts the perception of a non-sucrose sweetener in a consumable (e.g. a beverage) in such a way that the consumable tastes more like a sucrose-sweetened beverage. For example, certain negative taste properties of non-sucrose sweeteners can be reduced or eliminated with flavor enhancers, e.g. bitterness, sourness, astringency, saltiness and metallic notes” [0016]. This is seen to reduce the negative (bitterness, sourness, etc.) which in turn enhances sweetness.
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 12-14 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 13, the additional sweeteners can be a natural high potency sweetener including RebA, RebB, RebC, Reb M, etc. 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). Prakash ‘683 also 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 high potency 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 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 high potency sweeteners that are combinable with siamenoside to provide a sweetened beverage.
Regarding claim 12, the overlapping range of 1-1000 ppm present a prima facie case of obviousness and the example of 30ppm is indicative of use of the lower end of this range with effect.
Claims 1, 4-9, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0345049 (Galano).
Galano teaches the use of one or more mogrosides as a sweetness enhancer in sweetened composition [0002]. Galano teaches that one or more high intensity sweeteners and one or more low-potency sweeteners can act synergistically with at least one other sweetener (e.g. sucrose) to obtain a composition having a sweetness that is greater than the sum of the sweetness of the individual sweeteners [0080]. The sweetener may be present in a comestible such as sodas, fruit or vegetable juices to name a few [0218]. Galano discloses making a sweetened composition comprising at least one sweetener present in an amount having a sweetness equal to or greater than 1.5% w/v sucrose equivalents and one or more sweetness enhancers selected from mogroside IV, siamenoside and neomogrodside [0020]. Several examples are given where siamenoside is selected in combination sucrose. Galano teaches in Example 6 a combination of siamenoside and sucrose. The findings were that “It was surprisingly found that mogroside V, siamenoside, neomogroside and mogroside V act as sweetness enhancers since the increase in sweetness of the 5% (w/v) sucrose solution to which they were added was greater than the sweetness of the sweetener alone” [0312] and “As shown above, siamenoside, neomogroside and mogroside IV all have similar or better sweet taste quality on top of 5% sucrose and 0.03% citric acid compared to mogroside V” [0319]. Furthermore, “Siamenoside was described as having ‘more sweet body, sweeter, rounder with a little more upfront and more round lasting sweet’” [0313]. In example 8, sucrose, citric acid and siamenoside in combination with another flavor modifying compound (mogroside V) are also taught. Thus, Galano teaches a formulation comprising siamenoside, sucrose and citric acid and finds that samples with siamenoside at 25ppm [0316] enhance the sweetness of the sweetener. While sucrose is selected as the sweetener, Galano discloses that the sweetener may be sucrose, high-fructose corn syrup, AceK, aspartame, steviol glycosides and/or sucralose [0123]. Thus, while the examples are directed to sucrose, one of ordinary skill in the art would have found it obvious to use AceK or aspartame as the sweetener in combination with siamenoside with a reasonable expectation of successfully providing a sweetened beverage based upon the express disclosure of these materials by Galano.
Regarding the amount of high intensity sweetener (siamenoside), Galano discloses they may be present in a total amount of 15-50ppm [0028-29].
Claims 1, 3-9 and 12-14 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).
The sweetness enhancer/taste modulator is disclosed as Formula Compound 1 (excerpt from page 14):
PNG
media_image1.png
328
616
media_image1.png
Greyscale
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). The beverage may include a multitude of different compositions (page 35) including vitamins and caffeine.
Regarding claims 10-12, the sweetener (mogroside) 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).
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 RebA, RebB, RebC, Reb M, etc. 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 Reb M 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 RebM 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).
Regarding claim 12, Prakash ‘873 teaches that the mogroside is present in an amount of 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 (see in the rejection under 103 over Prakash ‘683 above) thus indicating combinations of RebM and siamenoside that are effective. Note that claim 1 does not preclude the presence of RebM. Here, the presence of the flavor modifying compound and any other sweeteners or flavoring agents meets the limitations of claim 1.
Response to Arguments
The objections and rejections under 112(b) are withdrawn in light of applicant’s amendments.
Regarding the 102 over Prakash ‘574, the rejection is withdrawn.
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
Regarding the 102 over Higiro, as explained above, the reference discloses flavor modifying compounds or flavoring agents which meet the required materials of claim 1. Claim 1 does not preclude the presence of RebM.
Regarding the 102 over Galano, the 102 is withdrawn and a new 103 is introduced above.
Regarding the 102 over Prakash ‘683, the 102 is withdrawn and a new 103 is introduced above.
Regarding the 103 over Prakash ‘873, a rejection under 103 over Prakash ‘873 in view of Prakash ‘683 is introduced above. Applicant argues that Prakash does not offer any examples where siamenoside is selected as the mogroside. 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.
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.
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.
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.
JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793