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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 12/03/2025 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the objections to claims 1 and 8 have been withdrawn; (2) the 35 U.S.C. 112(b) rejections of claims 1-10 have been withdrawn; and (3) the 35 U.S.C. 112(d) rejection of claim 9 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-10
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1-10
New claims: None
Claims currently under consideration: 1-10
Currently rejected claims: 1-10
Allowed claims: None
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6, 7, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sherwood et al. (U.S. 2007/0148305 A1).
Regarding claim 1, Sherwood et al. discloses a composition ([0068]) for an energy drink ([0003], [0050]), the composition comprising artificial sweetener/sugar ([0061]), caffeine ([0050]), taurine ([0058]), branched chain amino acids ([0011], [0114]), and a sufficient amount of a basic magnesium compound ([0051], claims 26-28, [0114]), wherein the composition is mixed with a water solution ([0068]) and heated ([0065]).
Although Sherwood et al. does not specifically disclose the amount of artificial sweetener/sugar as being to remove bitterness or the effect of the mixing/heating steps as being a reduction in bitterness of the energy drink and the amount of sugar/artificial sweetener present in the drink, MPEP 2144 IV states: “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” It is thus unnecessary for the reference to disclose the function of each component in the composition and each process step in the method. Since Sherwood et al. discloses an energy drink composition that meets the present compositional limitations, the disclosure of the reference anticipates the claimed composition.
As for claim 2, Sherwood et al. discloses the magnesium compound as being magnesium hydroxide (claim 28), wherein the amount of magnesium is 400-1000 mg/l (specifically, about 0.1-2.0% by weight, which equates to 1,000-20,000 mg/L) (claim 27).
As for claim 3, Sherwood et al. discloses heating as occurring at 60-100°C (specifically, about 140-188°F) ([0065]) for 1 minute to 10 hours ([0092]). The heating is presumed to occur at normal atmospheric pressure absent any indication otherwise.
As for claim 4, Sherwood et al. discloses the pH is in the range of 5.0-8.0 ([0063]).
As for claim 6, Sherwood et al. discloses the energy drink contains artificial sweeteners and/or steviol glycosides ([0061]).
As for claim 7, Sherwood et al. discloses the energy drink contains 100-500 mg/L caffeine (specifically, 0.01-0.085% by weight, or 100-850 mg/L) (claim 23).
As for claim 9, Sherwood et al. discloses the energy drink can be made into a concentrate to be diluted prior to consumption ([0067]).
As for claim 10, Sherwood et al. discloses the energy drink contains amino acids as fruit juice ([0058]-[0059]) and flavorings ([0058], [0061]), wherein the drink is pasteurized ([0065], [0189]). The limitations that the drink comprises “alcohol or no alcohol” and “is non-carbonated or carbonated” encompass all alternatives for the respective characteristics and thus need not be specifically disclosed.
Claim Rejections - 35 USC § 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sherwood et al. (U.S. 2007/0148305 A1).
Regarding claim 5, Sherwood et al. discloses the energy drink and indicates it may comprise a sweetener, such as sucrose (([0061]). Although Sherwood et al. does not specifically disclose a suitable concentration for the added sweetener, the concentration of sweetener/sugar in a food product is extremely well known to simply be based on consumer preference. Any concentration of sucrose in a beverage would be obvious to a skilled practitioner, especially where no synergistic effect is asserted as occurring and the sweetener is present exclusively for its sweet taste attribute. Further, the claimed energy drink does not require any concentration for any other sweetener component, such as artificial sweeteners or natural high-potency sugar substitutes (e.g., steviol glycosides), which further supports the determination that any concentration of sucrose would be obvious simply based on the taste of the overall composition, including any effect any additional sweeteners may impart to the beverage. The claimed concentration of 0.5 to 5.0 g/100 ml is thus considered obvious to a skilled practitioner.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sherwood et al. (U.S. 2007/0148305 A1) in view of Marcq et al. (U.S. 10,798,961 B2).
Regarding claim 8, Sherwood et al. discloses the energy drink of claim 1, as well as the inclusion of taurine and the branched-chain amino acids leucine, isoleucine, and valine ([0058]).
Sherwood et al. does not specifically disclose suitable concentrations for those components.
However, Marcq et al. discloses energy drink compositions (C4, L37-L38) that may comprise about 0.1-5% by weight (1,000-50,000 mg/L) taurine (C5, L40-L46) and about 0.1-5% by weight (1,000-50,000 mg/L) of the noted amino acids (C6, L18-L29).
It would have been obvious to one having ordinary skill in the art to incorporate taurine, leucine, isoleucine, and valine into the energy drink of Sherwood et al. at the claimed concentrations. Since Sherwood et al. does not specifically disclose suitable concentration ranges for such components, a skilled practitioner would be motivated to consult Marcq et al. for additional instruction. Since Marcq et al. discloses suitable concentrations that overlap or encompass the claimed ranges, the claimed ranges of from 250 to 4000 mg/l taurine and 2000 to 40,000 mg/l of the branched-chain amino acids leucine, isoleucine, and valine would be obvious to a skilled practitioner.
Response to Arguments
Claim Objections: Applicant has overcome the objections of claims 1 and 8 based on amendments to the claims. Accordingly, the claim objections have been withdrawn.
Claim Rejections - 35 U.S.C. § 112: Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 1-10 based on amendments to the claims. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Applicant has overcome the 35 U.S.C. § 112(d) rejection of claim 9 based on amendment to the claim. Accordingly, the 35 U.S.C. § 112(d) rejection has been withdrawn.
Claim Rejections - 35 U.S.C. § 102(a)(1) of claims 1-4, 6, 7, 9, and 10 over Sherwood et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Sherwood et al. does not disclose “the specific combination and functional relationship of the features as claimed, particularly with regard to using a basic magnesium compound to reduce bitterness from caffeine and/or taurine in an energy drink” (Applicant’s Remarks, p. 6, ¶1 – p. 7, ¶1). Applicant asserted that Sherwood et al. is more concerned with a protein beverage than an energy drink and that the potential additives are not disclosed in an exemplary combination as presently claimed (Applicant’s Remarks, p. 7, ¶2 – p. 7, ¶3). Applicant argued that there is no disclosure in Sherwood et al. tying the magnesium ingredient to improved bitterness (Applicant’s Remarks, p. 7, ¶4). Applicant asserted that heating is taught only in the context of pasteurization, not bitterness mitigation (Applicant’s Remarks, p. 7, ¶5 – p. 8, ¶1).
As noted in the claim rejection, though, MPEP 2144 IV states: “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” It is thus unnecessary for the reference to disclose the function of each component in the composition and each process step in the method. Since Sherwood et al. discloses an energy drink composition that meets the present compositional limitations, the disclosure of the reference anticipates the claimed composition. That Sherwood et al. characterizes the beverage as a protein beverage instead of an energy drink does not alter the analysis, since the reference does teach the inclusion of energy-providing components. Applicant’s arguments are thus unpersuasive.
Applicant next argued that Sherwood et al. teaches maintaining an acidic pH of about 2-3.4 (Applicant’s Remarks, p. 8, ¶2; p. 9, ¶2).
However, Sherwood et al. specifically indicates the protein drink may include a pH adjusting agent and that “[t]he adjusted pH of the protein drink typically ranges from about 2.0 to about 5.5” ([0063]), which overlaps the claimed range and thus undermines Applicant’s argument.
Applicant argued that Sherwood et al. does not recognize the degree of sugar/sweetener reduction that may be achieved as presently claimed (Applicant’s Remarks, p. 8, ¶3).
However, claim 1 does not require any degree of sugar/sweetness reduction, any baseline sugar/sweetener concentration against which the reduction may be measured, or any degree of bitterness. The claim is merely directed to a composition that is encompassed by the disclosure of Sherwood et al. and is consequently unpatentable due to being anticipated.
Applicant argued that Sherwood et al. does not disclose the claimed features together in the same embodiment (Applicant’s Remarks, p. 8, ¶5 – p. 9, ¶1).
However, Examiner maintains that the disclosure of Sherwood et al. of a beverage to which various ingredients may be added is adequate to anticipate the present claims. The disclosure of the reference need not recite an exact embodiment as presently claimed.
Applicant then argued that Sherwood et al. should not be read as teaching a “sufficient amount of basic magnesium compound to reduce bitterness of the energy drink” (Applicant’s Remarks, p. 9, ¶3).
As noted in the rejection of claims 1 and 2, though, claim 27 of Sherwood et al. discloses an amount of magnesium compound that overlaps and exceeds the claimed concentration, which serves as an adequate basis for determining that the disclosure of Sherwood et al. recites a magnesium concentration that is sufficient to reduce bitterness, even if the effect is not specifically recited.
Applicant’s arguments are unpersuasive.
The rejections of claims 1-4, 6, 7, 9, and 10 have been maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claim 5 over Sherwood et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the claimed sucrose concentrations were substantially lower than conventional energy drinks due to the effect produced by the magnesium compound (Applicant’s Remarks, p. 10, ¶2). Applicant alleged that Sherwood et al. indicates more sweetener could be added if a protein/additive imparted undesired bitterness (Applicant’s Remarks, p. 10, ¶3). Applicant alleged that “achieving a good taste with only 0.5-5 g/100ml cannot be achieved without the use of the basic magnesium compound to reduce the bitterness” (Applicant’s Remarks, p. 10, ¶4).
Examiner disagrees and maintains that any amount of sucrose in a beverage would be obvious. Neither of claim 1 or claim 5 require any amount of any component other than sugar, so there would not be any preconceived required minimum of any of the alleged bitter ingredients on the basis of what was deemed conventional for energy drinks. Also, no degree of bitterness is required. Neither claim requires the exclusion of any additional components, such as bitterness masking agents, that would additionally modify the taste of the composition. Applicant’s assertion that “achieving a good taste with only 0.5-5 g/100ml cannot be achieved without the use of the basic magnesium compound to reduce the bitterness” is unpersuasive due to being substantially narrower in scope than the claims, which do not require (i) any particular taste, (ii) any amount of any bitter component, a (iii) the exclusion of other components that affect taste.
The rejection of claim 5 has been maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claim 8 over Sherwood et al. and Marcq et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that Marcq et al. addresses bitterness masking via a different mechanism than that asserted as being characteristic of the claimed composition (Applicant’s Remarks, p. 11, ¶5 – p. 12, ¶1).
However, Marcq et al. is relied on only for its instruction regarding component concentrations in a comparable beverage type. The mechanism by which the secondary reference addresses bitterness is of no consequence and not related to the present rejection based on the combination of Sherwood et al. and Marcq et al. Examiner maintains that the disclosure of Marcq et al. is adequate for all that is relied on in the present claim rejections. Applicant’s argument is unpersuasive.
The rejection of claim 8 has been maintained herein.
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.
Claims 1-10 are rejected.
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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.
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793