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 .
This office action is in response to the application filed on October 11, 2023. The earliest effective filing date of the application is April 15, 2021.
Priority
The present application is a 371 National Stage Application of PCT/EP2022/059664 which has a filing date of April 11, 2022.
Status of Application
The amendment filed April 6, 2026 with the Remarks has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 6, 11 – 19 and 23
Withdrawn claims: None
Previously cancelled claims: 20 – 22 and 24 – 27
Newly cancelled claims: 7 – 10
Amended claims: 1, 6, 11, and 19
Claims currently under examination: 1 – 6, 11 – 19 and 23
By not repeating the previously presented objection/rejection(s), it is sufficiently clear that said objection/rejection(s) are withdrawn.
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 – 6 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Bingley et al. (US 20090004360 A1 – IDS Filed on October 11, 2023) in view of Arthur et al. (Toxicological evaluation of the flavour ingredient 4-amino-5-(3-(isopropylamino)-2,2-dimethyl-3-oxopropoxy)-2 methylquinoline-3-carboxylic acid. Toxicology Reports. Vol 2. Pp. 1255 – 1264. (2015)).
Regarding claim 1, Bingley teaches a table top sweetener composition comprising maltodextrin (i.e., a carrier), sucralose (i.e., a sweetener), 2,4-dihydroxybenzoic acid, and 3-hydroxybenzoic acid (i.e., a positive allosteric modulator – p. 24, Example 1, Table 2).
Bingley teaches compositions that may include at least one active substance, such as sweeteners and at least one taste potentiator composition, such as a sweetness modifier ([0042]). Bingley teaches suitable sweeteners in the sweetness composition may be, but are not limited to sucralose, sucrose (i.e., a carbohydrate sweetener), sorbitol, and stevioside (Table 1). Bingley teaches "taste potentiator" refers to substances that may intensify, supplement, modify, modulate or potentiate the perception of an active substance during consumption of the composition ([0043]). Bingley teaches delivery of the sweetener in combination with at least one sweetness modifier may function synergistically with the sweetener to enhance the sweetness perception ([0042]). Bingley teaches the incorporation of the potentiators, therefore, allows for reduced amounts of sweetener without compromising the level of sweetness provided by the composition ([0042]). Bingley teaches due to the calories contained in many conventional sweeteners, such as sugar, these results may be highly desirable ([0042]).
Bingley does not teach the positive allosteric modulator in the table top sweetener is
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(i.e., 4-amino-5-[2, 2-dimethyl-3-[(1-methylethyl)amino]-3-oxopropoxy]- 2-methyl-3-quinolinecarboxylic acid (CAS:1359963-68-0)).
Arthur teaches 4-Amino-5-(3-(isopropylamino)-2,2-dimethyl-3-oxopropoxy)-2-methylquinoline-3-carboxylic acid (S9632; CAS 1359963-68-0) is a flavour with modifying properties (FMP – p. 1255, paragraph 1). Arthur teaches S9632 is a positive allosteric modulator of the human sweet receptor which, in addition to modifying certain aspects of the flavour profile, allow for a reduction of carbohydrate sweeteners in food and beverage products while maintaining the desired sweet taste of natural sugars (p. 1255, paragraph 1). Arthur teaches S9632 has been shown to function in food and beverage products with reduced sweetener to restore sweetness, as well as modify other aspects of the flavour profile, such as caramel, butterscotch and molasses attributes when present in a butterscotch pudding, or citrus and cherry attributes when used in a tropical punch beverage (p. 1255, paragraph 1). S9632 is shown below:
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Bingley and Arthur are combinable because they are concerned with the same field of endeavor, namely, sweetness modifiers. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the S9632 of Arthur as the sweetness modifier in the composition of Bingley because S9632 is known to be used in combination with sweeteners as a reduced calorie sweetness modifier and to modify other aspects of the flavour profile.
Furthermore, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted 3-hydroxybenzoic acid with the S9632 of Arthur before the effective filing date of the application because the S9632 of Arthur, like 3-hydroxybenzoic acid, is a known positive allosteric modulator of the human sweet receptor that is useful in food and beverage products.
Regarding claims 2 – 5, Bingley teaches the table top sweetener composition (i.e., a potentiator composition) comprises 6.22 wt% 2,4-dihydroxybenzoic acid, and 6.22 wt% 3-hydroxybenzoic acid (i.e., a positive allosteric modulator – p. 24, Example 1, Table 2). Bingley teaches a beverage including the table top sweetener composition (i.e., a potentiator composition – [0206]). Bingley teaches the potentiator composition may be present in the beverage compositions in amounts of about 0.001% (i.e., 10 ppm) to about 0.100% (i.e., 1000 ppm – [0206]). Therefore by including the modified table top sweetener composition (i.e., a potentiator composition) in a beverage according to the recited range, the 2,4-dihydroxybenzoic acid and the S9632 of Arthur (i.e., a positive allosteric modulator) would each be present in a beverage in an amount of 0.0000622% (i.e., 0.622 ppm) to 0.00622% (i.e., 62.2 ppm).
The range of ppm of 2,4-dihydroxybenzoic acid in the beverage, 0.622 – 62.2 ppm, as disclosed by Bingley, overlaps with the claimed range of 1 – 5 ppm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of ppm of S9632 (i.e., a positive allosteric modulator) in the beverage, 0.622 – 62.2 ppm, as disclosed by Bingley, overlaps with the claimed range of 0.1 – 25 ppm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
As an example embodiment, a beverage comprising 0.064% of the table top sweetener composition (i.e., a potentiator composition) comprises 4 ppm of 2,4-dihydroxybenzoic acid and 4 ppm of S9632 (i.e., a positive allosteric modulator).
Regarding claim 6, the positive allosteric modulator
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is 2,4-dihydroxyl benzoic acid (CAS:89-86-1 – i.e., 2,4-dihydroxybenzoic acid) as stated in the instant specification (p. 9, lines 8 – 12). The 2,4-dihydroxybenzoic acid in the table top sweetener composition of Bingley is a positive allosteric modulator. Therefore by comprising 2,4-dihydroxybenzoic acid, the table top sweetener composition of Bingley comprises 2,4-dihydroxybenzoic acid and a positive allosteric modulator according to the broadest reasonable interpretation of the claim.
Regarding claim 23, Bingley teaches beverages such as soft or carbonated drinks, juice-based drinks, milk-based drinks, beverages made from brewed components such as teas and coffees, beverage mixes, beverage concentrates, powdered beverages, beverage syrups, frozen beverages, gel beverages, alcoholic beverages, and the like, comprising the potentiator compositions (such as the table top sweetener) of the present invention ([0205]). Bingley teaches the beverages may include any of the potentiator compositions (such as the table top sweetener) described herein ([0206]).
Claims 11 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Bingley et al. (US 20090004360 A1 – IDS Filed on October 11, 2023) in view of DuBois et al. (Non-caloric sweeteners, sweetness modulators, and sweetener enhancers. Annual Review of Food Science and Technology, Annual Reviews. Vol 3. Pp. 353 – 380. (2012) – IDS Filed on October 11, 2023).
Regarding claims 11 – 14, Bingley teaches an iced tea beverage comprising sucrose and sweetness potentiators (p. 28, Table 14). Bingley teaches 2,4-dihydroxybenzoic acid and 3-hydroxybenzoic acid (i.e., a positive allosteric modulator) are suitable sweetener potentiators when combined with sucrose (p. 6, Table 1, Sweetener, Sucrose).
Bingley teaches compositions that may include at least one active substance, such as sweeteners and at least one taste potentiator composition, such as a sweetness modifier ([0042]). Bingley teaches "taste potentiator" refers to substances that may intensify, supplement, modify, modulate or potentiate the perception of an active substance during consumption of the composition ([0043]). Bingley teaches delivery of the sweetener in combination with at least one sweetness modifier may function synergistically with the sweetener to enhance the sweetness perception ([0042]). Bingley teaches the incorporation of the potentiators, therefore, allows for reduced amounts of sweetener without compromising the level of sweetness provided by the composition ([0042]). Bingley teaches due to the calories contained in many conventional sweeteners, such as sugar, these results may be highly desirable ([0042]).
Bingley does not teach the positive allosteric modulator in the table top sweetener is
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(i.e., 3-[(4-amino-2, 2-dioxido-1H-2, 1, 3-benzothiadiazin-5-yl)oxy]-2, 2-dimethyl-N- propylpropanamide (CAS:1093200-92-0)).
DuBois teaches the discovery of the sucralose (SUL) enhancer was quickly followed by the discovery of sucrose-selective enhancer
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3-[(4-amino-2, 2-dioxido-1H-2, 1, 3-benzothiadiazin-5-yl)oxy]-2, 2-dimethyl-N- propylpropanamide (ADBT – p. 372, paragraph 1). DuBois teaches in human sensory panel studies, ADBT at 8.8 mg L-1 was observed to enhance 6% sucrose to equivalence with 10.6% sucrose (i.e., 1.8-fold – p. 372, paragraph 1). DuBois teaches early sensory studies of sucrose-ADBT formulations are consistent with the expectation that PAMs will enable dramatic calorie reduction with retention of the desirable temporal profiles of CHO sweeteners (p. 372, paragraph 1).
Bingley and DuBois are combinable because they are concerned with the same field of endeavor, namely, sweetness modifiers. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the ADBT of DuBois as a sweetness modifier in the composition of Bingley because ADBT is known to be used in combination with sweeteners as a reduced calorie sweetness modifier.
Furthermore, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted 3-hydroxybenzoic acid with the ADBT of DuBois before the effective filing date of the application because ADBT of DuBois, like 3-hydroxybenzoic acid, is a known positive allosteric modulator that is able to enhance the sweetness of sucrose.
Regarding claims 15 – 18, Bingley teaches an iced tea beverage comprising 7 w/v% sucrose and sweetness potentiators (p. 28, Table 14). Bingley teaches 2,4-dihydroxybenzoic acid and 3-hydroxybenzoic acid (i.e., a positive allosteric modulator) are suitable sweetener potentiators when combined with sucrose (p. 6, Table 1, Sweetener, Sucrose). Bingley teaches the potentiator composition may be present in the beverage compositions in amounts of about 0.001% to about 0.100% ([0206]). Therefore by including the modified table top sweetener composition (i.e., a potentiator composition) in a beverage according to the recited range, the 2,4-dihydroxybenzoic acid and the ADBT of DuBois (i.e., a positive allosteric modulator) would each be present in a beverage in an amount of 0.0000622% (i.e., 0.622 ppm) to 0.00622% (i.e., 62.2 ppm).
The range of ppm of 2,4-dihydroxybenzoic acid in the beverage, 0.622 – 62.2 ppm, as disclosed by Bingley, overlaps with the claimed range of 0.1 – 5 ppm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of ppm of ADBT (i.e., a positive allosteric modulator) in the beverage, 0.622 – 62.2 ppm, as disclosed by Bingley, overlaps with the claimed range of 0.1 – 25 ppm. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
As an example embodiment, a beverage comprising 0.064% of the table top sweetener composition (i.e., a potentiator composition) comprises 4 ppm of 2,4-dihydroxybenzoic acid and 4 ppm of ADBT (i.e., a positive allosteric modulator).
Regarding claim 19, the positive allosteric modulator
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is 2,4-dihydroxyl benzoic acid (CAS:89-86-1 – i.e., 2,4-dihydroxybenzoic acid) as stated in the instant specification (p. 9, lines 8 – 12). The 2,4-dihydroxybenzoic acid in the iced tea beverage of Bingley is a positive allosteric modulator. Therefore by comprising 2,4-dihydroxybenzoic acid, the iced tea beverage of Bingley comprises 2,4-dihydroxybenzoic acid and a positive allosteric modulator according to the broadest reasonable interpretation of the claim.
Response to Arguments
Applicant's arguments filed April 6, 2026 have been fully considered but they are not persuasive.
Applicant argues the specification provides an ascertainable basis for the ppm recited in claims 2 – 5 and 15 – 18 (p. 9, paragraph 1).
Applicant’s argument has been fully considered and it is persuasive. The rejection under 35 U.S.C. § 112(b) of claims 2 – 5 and 15 – 18 has been withdrawn.
Applicant argues the claims, as amended, recite a product comprising a synthetic component, therefore the rejection under 35 U.S.C. § 101 (p. 9, paragraph 2).
Applicant’s argument has been fully considered and it is persuasive. The rejection under 35 U.S.C. § 101 of claims 1 – 6, 11 – 19 and 23 has been withdrawn.
Applicant argues the claims, as amended, are not anticipated by Bingley (p. 9, paragraph 3).
Applicant’s argument with respect to the rejection of claims 1, 6, 10 – 14, 19, and 23 under 35 U.S.C. § 102 has been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection under 35 U.S.C. § 103 is made in view of Bingley.
Applicant argues there is no disclosure, teaching, or suggestion in either Bingley or Karanewsky to combine 2,4-dihydrobenzoic acid and S2218 sulfate salt (p. 10, paragraph 1).
Applicant’s argument with respect to the claims has been considered but is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues neither Bingley nor Karanewsky show or explain the synergistic effect of combining 2,4-dihydrobenzoic acid and S2218 sulfate salt (p. 10, paragraph 1).
Applicant’s argument with respect to the claims has been considered but is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues there is no disclosure, teaching, or suggestion in either Bingley or Dubois to combine 2,4-dihydrobenzoic acid and ADBT (p. 10, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. Bingley teaches compositions that may include at least one active substance, such as sweeteners and at least one taste potentiator composition, such as a sweetness modifier ([0042]). Bingley teaches any of a variety of substances that function as taste potentiators may be employed in the compositions ([0046]). Bingley teaches 2,4-dihydroxybenzoic acid and 3-hydroxybenzoic acid (i.e., a positive allosteric modulator) is a suitable taste potentiator combination ([0046]; p. 6, Table 1, Sweetener, Sucrose). Dubois teaches ADBT is a positive allosteric modulator (i.e., taste potentiator) known to be used in combination with sweeteners as a reduced calorie sweetness modifier (p. 372, paragraph 1). Therefore, while Bingley and Dubois do not explicitly teach the combination of 2,4-dihydroxybenzoic acid and ADBT, it would have been obvious to one of ordinary skill in the art to have combined 2,4-dihydrobenzoic acid and ADBT based on the suitability of ADBT for the intended use of taste modification, and the interchangeability of ADBT with other positive allosteric modulators such as 3-hydroxybenzoic acid.
Applicant argues neither Bingley nor Dubois show or explain the synergistic effect of combining 2,4-dihydrobenzoic acid and ADBT (p. 10, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues there is no disclosure, teaching, or suggestion in either Bingley or Arthur to combine 2,4-dihydrobenzoic acid and S9632 (p. 10, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. Bingley teaches compositions that may include at least one active substance, such as sweeteners and at least one taste potentiator composition, such as a sweetness modifier ([0042]). Bingley teaches any of a variety of substances that function as taste potentiators may be employed in the compositions ([0046]). Bingley teaches 2,4-dihydroxybenzoic acid and 3-hydroxybenzoic acid (i.e., a positive allosteric modulator) is a suitable taste potentiator combination ([0046]; p. 24, Example 1, Table 2). Arthur teaches S9632 is a known positive allosteric modulator (i.e., taste potentiator) to be used in combination with sweeteners as a reduced calorie sweetness modifier and to modify other aspects of the flavour profile (p. 1255, paragraph 1). Therefore, while Bingley and Arthur do not explicitly teach the combination of 2,4-dihydroxybenzoic acid and S9632, it would have been obvious to one of ordinary skill in the art to have combined 2,4-dihydrobenzoic acid and S9632 based on the suitability of S9632 for the intended use of taste modification, and the interchangeability of S9632 with other positive allosteric modulators such as 3-hydroxybenzoic acid.
Applicant argues neither Bingley nor Arthur show or explain the synergistic effect of combining 2,4-dihydrobenzoic acid and S9632 (p. 10, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
No claims are allowed.
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 LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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