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 .
Claims 1-14, as amended in the listing of 1/8/2024 are examined in the application.
Information Disclosure Statement
The information disclosure statement filed 1/12/2024 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.
Item #157, The Kasai reference was not received.
The other references cited have been reviewed.
Claim Objections
Claims 3 and 13 are objected to because of the following informalities:
Claim 3 is objected to for the recitation of “compound” in last line, as last word, it should be “compounds”.
Claim 13 recites “blocks bitterness” (emphasis added), which appears to be a typographical error. For the purposes of this office action, the above recitation will be assumed to be equivalent of “blocks bitterness” .
Claim 13 is further objected to for the recitation of “enhance”, which should be “enhances” and “umami” should be “umami flavor”
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (second Paragraph)
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 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 "The formulation of claim 1, wherein the one or more flavor
modifying compound is selected from the group consisting of " followed by a few structures. It is not clear if the structure is "one of" the structures shown or all of them, as the recitation in claim is "the one or more flavor modifying compound is" (see underlined part of limitation above). For the purposes of this office action, it will be assumed that the above structure or structures are representative of the compositions disclosed in para 7 of the PGPUB of the application.
For the purposes of this office action “flavor modulator” as recited in claim 9 will be regarded the same as flavor modifying compound.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejection of claims 1-14 made in the office action of 11/26/2025 under 35 U.S.C. 103 as being unpatentable over Patron (US 20170119032) have been withdrawn based on applicant’s amendments to claims of 2/25/2026.
Claims 1-10, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Patron (US 20170119032), hereinafter Patron in view of NPL article to Li et al “Cucurbitane glycosides from the fruit of Siraitia grosvenori and their effects on glucose uptake in human HepG2 cells in vitro”, Food Chem. 2017, 228, pp. 567-573, hereinafter Li (IDS reference).
Regarding claims 1-2, Patron teaches a formulations suitable for sweeteners (para 22) comprising Mogroside or lsomogroside variations (para 42), such as Mogroside IVE, lso-mogroside V and 11-oxo-Mogroside IVE - see para 42, which is substantially similar to claim 1. Patron also teaches that the formulation may further include one of more additional sweeteners and in this context, at least Luo-Han-Guo (fruit, powder, or extracts, agave etc. in para 199), as is disclosed, which reads on claim 2. Regarding the limitation of "(ii) one or more flavoring modifying compound; or (iii) a flavoring agent" of claim 1, Patron also teaches that the formulation may further comprise one or more flavoring modifying compound (para 244; also see para 116) or a flavoring agent (para 244, also see para 117). Patron also teaches formulations that are suitable for sweeteners or for enhancing the sweet taste of “e.g., food or beverage such as cola and ginger ale” (para 66) using a new sweetening compound that is isolated from Luo Han Guo (e.g., Siraitia grosvenorii), wherein the compound is a mogrol/triterpene glycoside represented by a generic formula (I) (see 0009-0018) (0008; 0337).
Patron does not specifically disclose the variation of isomogroside that is specifically "isomogroside IV E” as recited in claim 1. However, Patron teaches that individual isomers of disclosed compounds may exist and selective synthesis of selective isomers can be accomplished by known methods (para 151) and Patron teaches a specific mogroside compound 1 (para 106), which is (3-O-β-D-glucopyranosyl-(1->4)-β-D-glucopyranosyl mogrol 24-O-β-D-glucopyranosyl-(1->2)-β-L-glucopyranoside, and such isomers (para 151 or para 106), or '"resonance forms or tautomers of compounds that may be fairly represented by other chemical structures" (para 152), and other variations (para 153-155) are also considered within the scope of Patron's disclosure. Further, Patron teaches that sweeteners are characterized by properties such as at least odor, flavor, mouthfeel and aftertaste (para 7), and recognizes the need to improve the above properties by variations in composition (para 10).
Further, the variation of isomogroside that is specifically "isomogroside IV E” as recited in claim 1, was known in the art before the effective filing of the invention as taught by NPL to Li. Li teaches “Isomogroside IVe” in 3.1.1, as cited above, but it is also noted that the generic formula (I) encompasses isomogroside IVe as disclosed by Li (e.g., when R1 is absent, R2 is hydrogen, R3 is β-Glu-(1-> 4)-β-Glu, and 24-O- is coupled with β-Glu-(1-> 6)-β-Glu). Li recognizes that Luo Han Guo is well known throughout the world due to its ability to produce abundant of mogrosides which are natural low-calorie sweeteners (page 567, left column), the extract of Luo Han Guo is a safe additive recognized by FDA (page 567, left column), and that the mogroside compound of formula (I) is effective in promoting glucose uptake in human HepG2 cell in vitro (abstract), which is in the context of a diet.
Patron teaches a specific mogroside compound 1 (para106), which is (3-O-β-D-glucopyranosyl-(1->4)-β-D-glucopyranosyl mogrol 24-O-β-D-glucopyranosyl-(1->2)-β-L-glucopyranoside), which bears very high resemblance to the isomogroside IVe with the only difference of the two being that in the compound 1, the glucopyranoside that is linked to the 24-O-β-D-glucopyranoside of the skeleton is β-L-glucopyranoside, as opposed to β-D-glucopyranoside as in isomogroside IVe. In other words, isomogroside IVe of Li and compound 1 as disclosed by Patron are configurational isomers, in which compound 1 differs with the claimed compound in the absolute configuration of only one glucopyranoside unit (e.g., Leavo- vs Dextro- configuration).
One of the ordinary skill in the art before the effective filling date of the claimed invention, would have recognized that isomogroside IVe is an isomer of mogroside IV, a major well-known mogroside sweetener extracted from Luo Han Guo. Mogroside IV differs from isomogroside IVe in that the β-D-glucopyranoside that is coupled to the 3-O-β-D-glucopyranoside of the mogrol skeleton has a 1->6 glycosidic bond in mogroside IV, as opposed to a 1->2 glycosidic bond as in isomogroside IVe, which makes, isomogroside IVe and compound 1 as positional isomers.
In the instant case, both Li and Patron are directed to mogrosides extracted from Luo Han Guo. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Patron by using isomogroside IVe as disclosed by Li for another Luo Han Guo based mogroside with another sweetener, flavor enhancer or flavoring compound to sweeten a food or a beverage with reasonable expectation of success, at least for the purpose of providing a natural low-calorie sweetener based on mogrosides from Luo Han Guo.
Patron establishes that a mogroside represented by a generic formula that encompasses isomogroside IVe can be used as a sweetener in food, that Patron teaches a specific configurational isomer of isomogroside IVe which is also a sweetener, and that isomogroside IVe is a positional isomer of a well-known sweetener (e.g., mogroside IV) thus isomogroside IVe reasonably possesses the sweetening property. Based on the teachings above one of ordinary skill in the art before the effective filing of the invention, would have a reasonable expectation of achieving a sweetening composition by substituting one art recognized functional equivalent (i.e., replacing a one positional isomer from same source Luo Han Guo, for another) in a similar application; i.e. as a sweetener. The ordinary artisan would have been motivated to modify Patron at least for the purpose of using a variation of a known compound such as lsomogroside or Mogroside IVE or lso-mogroside V, to provide the same characteristic (i.e. sweetness) with a desired adjustment in one of more of odor, flavor, mouthfeel and aftertaste of the sweeter formulation.
Applicant is further referred to MPEP 2144.09 I and II, where it is stated that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities; and compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Further regarding claims 1 and 10, Patron in view of Li as applied above teaches the formulation of claim 1, but does not teach that isomogroside IVE is present in an amount. "from 100 ppm to 1000 ppm" (claim 1) and “200-600 ppm” (claim 10), see para 55-56 where 100-2000 ppm), which suggests one of ordinary skill to employ similar amounts of the claimed compound, and noting that this range overlaps with the claimed ranges. As noted for claim 1, the above is substituting one art recognized functional equivalent with another in a similar application; i.e. as a sweetener. Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wertheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 3, applicant requires the formulation of claim 1 wherein the flavor modifying compound is as shown in the formulas, or a salt or solvate thereof, or any combination thereof .
Referring to applicant's specification (see para 7 of PGPUB), it further describes compounds that encompass the above shown structures. In this context, the specification describes that "the one or more flavor modifying compound" is "hesperetin dihydrochalcone, hesperetin dihydrochalcone-4'-O'glucoside, neohesperetin dihydrochalcone, brazzein, hesperidin, phyllodulcin, naringenin, naringin, phloretin, glucosylated steviol glycosides, {2R,3R)-3-acetoxy- 5,7,4'-trihyd roxyflavanone, (2R,3R)-3-acetoxy-5,7,3'-trihydroxy-4'- methoxyflavanone, rubusosides, thaumatin, monellin, miraculin, glycyrrhizin and comestibly acceptable salts thereof (such as the mono-ammonium salt), naringin dihydrochalcone, myricetin, nobiletin, polymethoxy flavones, mixed methoxy- and hydroxyflavones, quercetin, amino acids, or any combinations thereof". Patron (para 188) teaches that at least Glycyrrhizin, Naringin Dihydrochalcone, Naringin and Thaumatin, and as such teaches claim 3.
Regarding claim 3, applicant is once again requested to clarify whether the compounds disclosed in para 7 of PGPUB are at least a partial list of compounds covered by the structures shown in claim 3. Absent such clarification, it will be assumed that the compounds disclosed in para 7 of PGPUB, some of which are also disclosed in para 188 of Patron (as explained above) read on the structure claimed in claim 3.
Regarding claim 4, Patron teaches the formulation of claim 1, which is an ingestible composition (para 2).
Regarding claims 5-6, Patron para 2 discloses the formulation may be food or beverage, and para 183 of Patron discloses that By "Food or beverage products", it is meant "any edible product intended for consumption by humans or animals, including solids, semi-solids, or liquids (e.g., beverages} and includes functional food products (e.g., any fresh or processed food claimed to have a health- promoting and/or disease-preventing properties beyond the basic nutritional function of supplying nutrients)". As such, Patron teaches (as recited in claim 5) the ingestible composition of claim 4, which is in the form of a food or beverage product (para 2) and wherein (as recited in claim 6) the food or beverage product is for human or animal consumption.
Regarding claim 7, Patron teaches the ingestible composition of claim 6, wherein the beverage is may be fruit juice (para 57 and 68).
[AltContent: ]Regarding claim 8, Patron teaches the ingestible composition of claim 6, wherein the beverage product comprises: citric acid (para 57 and 186), caffeine (para 186), purple carrot (para 186), sodium benzoate (para 186), ascorbic acid (para 186), resveratrol (para 186), tangeretin (as tangerine and other citrus extracts/oil are disclosed in para 186, and tangeretin is known to be found in tangerine and citrus fruits), ester gum or brominated vegetable oil (para 186), gum Arabic (para 186), cellulose gum (para 186).
Regarding claim 9, Patron teaches the formulation of claim 1, wherein the formulation enhances the sweetness of the additional sweetener and/or flavor modulator (para 190, especially in the first sentence; also see para 191 that describes inclusion of "sweetness enhancers" and "flavor enhancers" with "sweetening agents").
Regarding claim 13, Patron teaches addition of "Peppermint Leaves" and "Peppermint Oil" (see para 188, especially on page 129, Col. 2, lines 16-17), which is known to enhance a cooling effect.
Regarding claim 14, Patron teaches the formulation of claim 1, wherein the flavor modifying compound is a compound that enhances sweetness (para 116).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/271414 (published as US20240065302 to Manam). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are directed a formulation comprising a sweetening compound; “and at least one or more of: (i) one or more additional sweetener; (ii) one or more flavoring modifying compound; or (iii) a flavoring agent.”
Current application 18/271412 (Published as 20240188613 A1) differs from the copending application 18/271414 in the primary sweetening compound which for current application 18/271412 is " isomogroside IV E”, which is recited in claim 2 of copending application. Further, the sweetener disclosed in claim 1 of copending application 18/271414 reads on “one or more additional sweetener”, as such all requirements of current claim 1 are taught by claims 1 and 2 of copending application 18/271414.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/271406 (published as 20240090547 A1 to Manam). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims are directed a formulation comprising a sweetening compound; “and at least one or more of: (i) one or more additional sweetener; (ii) one or more flavoring modifying compound; or (iii) a flavoring agent.”
Current application 18/271412 (Published as 20240188613 A1)differs from the copending application 18/271406 in the primary sweetening compound which for current application 18/271412 is " isomogroside IV E”, which is recited in claim 2 of copending application. Further, the sweetener disclosed in claim 1 of copending application 18/271406 reads on “one or more additional sweetener”, as such all requirements of current claim 1 are taught by claims 1 and 2 of copending application 18/271406.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to amended claim(s) 1-10, 13-14 have been considered but are moot because the new ground of rejection does not rely on the sole reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s main argument on page #8 in the response of 2/25/2026 is regarding the applied art to Patron not teaching isomogroside IV e and not in the amount as instantly claimed 100-1000ppm (claim 1) and 200-600 pmm (claim 10). This argument is not found persuasive as Patron in view of Li as applied in the rejection of claim1, teaches the specific compound isomogroside IVe and Para 56 of Patron teaches overlapping range of adding mogroside compounds. See rejection above for further details.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gan et al (WO2020201446A1), hereinafter Gan.
Gan teaches Isomogroside IVe (abstract, page #1, lines 5-10, page #2 summary lines 10-15, page #3, description of figures 1-4, lines 5-22). Gan teaches structure of Isomogroside IVe, also designated as “MC1” (page #1, lines 5-10). Gan specifically teaches that “the compositions are comestible compositions, including, but not limited to, packaged food and beverage products and tabletop sweeteners” (page #1, lines 10-15).
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 JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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, Nikki Dees can be reached on 571-270-3435. 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.
/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
Prosecution Insights