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 .
Claim Objections
Claim 10 is objected to because of the following informalities: Claim 10 appears to have typographical errors. For example, in line 4 it appears “beverage” should be “beverages”, and in line 5 it appears that there should only be one recitation of “and”. Appropriate correction is required.
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.
Claim 10 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 10 recites the beverage is “near water drinks”. It is unclear as to what drinks would and would not be considered “near” water drinks. For example, it is unclear as to what degree of similarity is required for the beverages to be considered “near”, i.e. close to, water.
Claim 10 recites “tea type drinks”. It is unclear as to what drinks would and would not be considered “tea type” drinks. For example, it is unclear as to what degree of similarity is required for the beverages to be considered tea “type”. Also see MPEP 2173.05b. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
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.
Claims 1, 3, 6, 7, 9-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Givaudan (WO 2009/023975).
Regarding claims 1 and 12, Givaudan teaches of a beverage comprising mogroside V and one or more sweeteners selected from the group including siamenoside I (see claims 2, 8-11, and 13), and thus encompasses a beverage comprising: a liquid matrix, siamenoside I, and at least one additional sweetener including mogroside V. It is noted that as the beverage is not a powdered beverage, it would encompass a composition comprising a liquid matrix. Furthermore, Givaudan teaches that the sweeteners, which include the siamenoside I, can be pure and isolated in form (page 12 line 1), and thus encompass siamenoside I as at least 80% pure.
Regarding claims 3, 6, 7, 9, and 10, Givaudan teaches the beverage can be acidic, i.e. acidified milk and fruit juices, carbonated and non-carbonated beverages, soft drinks, carbonated water, coffee, etc. (claims 11 and 13).
Regarding claims 11 and 14, Givaudan teaches one or more sweeteners selected from the group including siamenoside I and potassium acesulfame (AceK), saccharine, neohesperidin dihydrochalcone, and erythritol (claim 10).
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.
Claims 2, 4, 5, 8, 13, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Givaudan (WO 2009/023975) in view of Fischer et al (WO94/18855).
As discussed above, Givaudan teaches of a beverage, including fruit juices, comprising mogroside V and one or more sweeteners selected from the group including siamenoside I.
Givaudan is silent to the sweetness intensity of the beverage as equivalent to 10 Brix as recited in claim 2; to the beverage as a fruit flavored sparkling water selected from the group including lemon-line, orange, grape, strawberry, and pineapple as recited in claim 8; and to the beverage as further comprising: phosphoric acid as recited in claim 4, citric acid as recited in claim 5 or an organic acid additive selected from a group including citric acid as recited in claim 17, or an organic acid additive selected from a group including ascorbic acid as recited in claim 16; or thaumatin as recited in claim 13.
Fischer et al (Fischer) teaches of a sweetener for beverages comprising mogroside V and siamenoside I (abstract). Fischer teaches that the amount of Luo Han Guo, which are sweeteners including the mogroside V and siamenoside I are adjusted based on the desired degree of sweetness in the beverage (page 6 lines 25-37 and page 17 lines 24-28). Fischer teaches the acidification of the fruit juice produces a lighter color, less bitter product which is fruitier and less beany, wherein organic acids and inorganic acids including citric acid, lactic acid, and phosphoric acids can be used (page 9 lines 13-21 and page 19 lines 4-11). Fischer additionally teaches citric acid enhances sweetness and reducing a lingering sweetness effect (page 19 lines 4-11); and the addition of ascorbic acid, i.e. vitamin C, will supplement the beverage (page 19 lines 33-35). Fischer teaches the beverages can be carbonated and can be fruit flavored, wherein orange, lemon, and lime flavors are particularly preferred (page 7 lines 23-26 and page 13 line 35 through page 14 line 4). Fischer teaches that other natural sweeteners or sweetener enhancers can be used including thaumatin and glycyrrihizin (page 7 lines 6-9 and page 16 lines 11-20).
Regarding the sweetness intensity of the beverage as equivalent to 10 Brix as recited in claim 2, it would have been obvious to adjust the amount of sweetener taught by Givaudan, and thus the Brix in order to achieve the desired sweetness of the finished product in view of Fischer.
Regarding the beverage as further comprising: phosphoric acid as recited in claim 4, citric acid as recited in claim 5 or an organic acid additive selected from a group including citric acid as recited in claim 17, or an organic acid additive selected from a group including ascorbic acid as recited in claim 16, it would have been obvious for the fruit beverage of Givaudan to include phosphoric acid, organic citric acid and/or lactic acid for a lighter color, enhanced sweetness, nutritional value, and/or a fruitier less beany flavor in view of Fischer.
Regarding the beverage as a fruit flavored sparkling water selected from the group including lemon-line, orange, grape, strawberry, and pineapple as recited in claim 8, as discussed above, Givaudan teaches the beverage can be carbonated water. It would have been obvious for the carbonated water to be fruit flavored, including orange flavor as Fischer teaches it was a preferred flavor.
Regarding the beverage as comprising thaumatin as recited in claim 13, it would have been obvious for the beverage of Givaudan to include thaumatin as Fischer teaches it was a known sweetener or sweetener enhancer used in combination with other sweeteners in beverages.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Givaudan (WO 2009/023975) in view of Woodyer et al (US 2014/02748).
As discussed above, Givaudan teaches of a beverage, including fruit juices, comprising mogroside V and one or more sweeteners selected from the group including siamenoside I.
Givaudan is silent to the beverage as comprising tagatose or psicose (allulose) as recited in claim 15.
Woodyer et al (Woodyer) teaches sweetener compositions for beverage products (abstract), wherein the use of allulose in combination with at least one mogroside, including mogroside V, siamenoside I, and mixtures thereof, provides for sweetness synergy (paragraphs 0017 and 0039).
Regarding the beverage as comprising tagatose or psicose (allulose) as recited in claim 15, it would have been obvious for the mogroside containing beverage of Givaudan to comprise allulose to provide sweetness synergy in view of Woodyer.
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.
Claims 1-3, 5, 9-11, 14, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-9, and 11 of U.S. Patent No. 11,653,680 (‘680). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a non-carbonated beverage (claim 1), and thus a composition with a liquid matrix, with a Brix of 10 (claim 7), including fruit juice (claim 11), and comprising: citric acid, siamenoside I which is at least about 80% pure, glycosylated steviol glycosides (claim 3), and rebaudioside M which is a glycosylated steviol glycoside (claim 1), organic acids including benzoic and malic acid (claim 8), and erythritol (claim 5). ‘680 is silent to the beverage as acidic as recited in claim 3, however as ‘680 claims the beverage as fruit juice, which was a known acidic beverage, and additionally claims the addition of acid to the beverage, to form an acidic beverage is considered encompassed or at least obvious over the claims of ‘680.
Claims 4, 12, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-9, and 11 of U.S. Patent No. 11,653,680 (‘680) in view of Fischer et al (WO94/18855).
As discussed above, although the claims at issue are not identical, they are not patentably distinct from each other because both claim a non-carbonated beverage (claim 1), and thus a composition with a liquid matrix, including fruit juice (claim 11), and comprising: siamenoside I which is at least about 80% pure, and rebaudioside M which is a glycosylated steviol glycoside (claim 1).
‘680 does not claim the beverage as comprising phosphoric acid as recited in claim 4, mogroside V as recited in claim 12, or at least one additional sweetener selected from the group including thaumatin as recited in claim 13.
Regarding the beverage as comprising phosphoric acid as recited in claim 4, Fischer teaches the acidification of the fruit juice produces a lighter color and less bitter product which is fruitier and less beany, wherein organic acids and inorganic acids including citric acid, lactic acid, and phosphoric acids can be used (page 9 lines 13-21 and page 19 lines 4-11). It would have been obvious for the beverage claimed by ‘680 to include phosphoric acid for a lighter color and/or a fruitier less beany flavor in view of Fischer.
Regarding the beverage as comprising mogroside V as recited in claim 12, or at least one additional sweetener selected from the group including thaumatin as recited in claim 13, Fischer teaches that other natural sweeteners or sweetener enhancers can be used for sweetening beverage compositions including mogroside V, thaumatin, and glycyrrihizin (page 6 lines 25-35, page 7 lines 6-9, page 16 lines 11-20, and page 17 lines 4-12). It would have been obvious for the beverage claimed by ‘680 to include mogroside V and/or thaumatin as Fischer teaches it was a known sweetener or sweetener enhancer used in combination with other sweeteners in beverages.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-9, and 11 of U.S. Patent No. 11,653,680 (‘680) in view of Woodyer et al (US 2014/02748).
As discussed above, although the claims at issue are not identical, they are not patentably distinct from each other because both claim a non-carbonated beverage (claim 1), and thus a composition with a liquid matrix, including fruit juice (claim 11), and comprising: siamenoside I which is at least about 80% pure, and rebaudioside M which is a glycosylated steviol glycoside (claim 1).
‘680 does not claim the beverage as comprising tagatose or psicose (allulose) as recited in claim 15.
Regarding the beverage as comprising tagatose or psicose (allulose) as recited in claim 15, Woodyer et al (Woodyer) teaches sweetener compositions for beverage products (abstract), wherein the use of allulose in combination with at least one mogroside, including mogroside V, siamenoside I, and mixtures thereof, provides for sweetness synergy (paragraphs 0017 and 0039). It would have been obvious for the mogroside containing beverage claimed by ‘680 to comprise allulose to provide sweetness synergy in view of Woodyer.
Claims 1-7, 9, 10, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, and 11-14 of copending Application No. 17/919,878 (‘878) as amended October 19, 2022 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a beverage, and thus a composition comprising a liquid matrix, comprising siamenoside I, rebaudioside M which is a glycosylated steviol glycoside (claim 1), citric acid, and phosphoric acid (claim 8). ‘878 claims the beverage has a Brix of at least 4 (claim 5) which encompasses the claimed amount of 10 recited in claim 2. ‘878 claims the beverage as carbonated or non-carbonated and selected from the group including fruit-flavored sparkling beverages, soft drinks, and fruit juice (claims 11-14).
‘878 is silent to the siamenoside I as at least 80% pure as recited in claim 1, however, as ‘878 claims the element as an individual component, it would have been obvious to include it in a pure form.
‘878 is silent to the beverage as acidic as recited in claim 3, however as ‘878 claims the beverage as fruit juice (claim 14), which was a known acidic beverage, and additionally claims the addition of acid to the beverage (claim 8), to form an acidic beverage is considered encompassed or at least obvious over the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8, 11-13, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, and 11-14 of copending Application No. 17/919,878 (‘878) as amended October 19, 2022 (reference application) in view of Fischer et al (WO94/18855).
As discussed above, although the claims at issue are not identical, they are not patentably distinct from each other because both claim a beverage, and thus a composition comprising a liquid matrix, comprising siamenoside I and rebaudioside M which is a glycosylated steviol glycoside (claim 1). ‘878 claims the beverage as carbonated or non-carbonated and selected from the group including fruit-flavored sparkling beverages, soft drinks, and fruit juice (claims 11-14).
‘878 is silent to the beverage as a fruit flavored sparkling water selected from the group including lemon-line, orange, grape, strawberry, and pineapple as recited in claim 8; and to the beverage as further comprising: a glycosylated steviol glycoside as recited in claim 11, or mogroside V as recited in claim 12, or thaumatin as recited in claim 13, or an organic acid additive selected from a group including ascorbic acid as recited in claim 16.
Regarding the beverage as a fruit flavored sparkling water selected from the group including lemon-line, orange, grape, strawberry, and pineapple as recited in claim 8, Fischer teaches beverages can be carbonated and can be fruit flavored, wherein orange, lemon, and lime flavors are particularly preferred (page 7 lines 23-26 and page 13 line 35 through page 14 line 4). It would have been obvious for the fruit flavor sparking water claimed by ‘878 to be orange flavor as Fischer teaches it was a preferred flavor.
Regarding the beverage as further comprising: a glycosylated steviol glycoside as recited in claim 11, or mogroside V as recited in claim 12, or thaumatin as recited in claim 13, Fischer teaches that other natural sweeteners or sweetener enhancers can be used for sweetening beverage compositions including mogroside V, thaumatin, and glycyrrihizin (page 6 lines 25-35, page 7 lines 6-9, page 16 lines 11-20, and page 17 lines 4-12). It would have been obvious for the beverage claimed by ‘878 to include mogroside V, which is a glycosylated steviol glycoside, and/or thaumatin as Fischer teaches it was a known sweetener or sweetener enhancer used in combination with other sweeteners in beverages.
Regarding the beverage as further comprising: an organic acid additive selected from a group including ascorbic acid as recited in claim 16, Fischer teaches the addition of ascorbic acid, i.e. vitamin C, will supplement the beverage (page 19 lines 33-35). It would have been obvious for the beverage claimed by ‘878 to include ascorbic acid as Fischer teaches it supplements beverages.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, and 11-14 of copending Application No. 17/919,878 (‘878) as amended October 19, 2022 (reference application) in view of Givaudan (WO 2009/023975).
As discussed above, although the claims at issue are not identical, they are not patentably distinct from each other because both claim a beverage, and thus a composition comprising a liquid matrix, comprising siamenoside I and rebaudioside M which is a glycosylated steviol glycoside (claim 1).
‘878 does not claim the beverage as comprising at least one additional sweetener comprising erythritol as recited in claim 14.
Givaudan teaches of a beverage comprising mogroside V and one or more sweeteners selected from the group including siamenoside I (see claims 2, 8-11, and 13). Givaudan teaches one or more sweeteners selected from the group including siamenoside I and potassium acesulfame (AceK), saccharine, neohesperidin dihydrochalcone, and erythritol (claim 10). It would have been obvious for the beverage claimed by ‘878 to include erythritol as Givaudan teaches it was a known additional sweetener that can be added to beverages containing siamenoside I and other sweeteners.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, and 11-14 of copending Application No. 17/919,878 (‘878) as amended October 19, 2022 (reference application) in view of Woodyer et al (US 2014/02748).
As discussed above, although the claims at issue are not identical, they are not patentably distinct from each other because both claim a beverage, and thus a composition comprising a liquid matrix, comprising siamenoside I and rebaudioside M which is a glycosylated steviol glycoside (claim 1).
‘878 does not claim the beverage as comprising tagatose or psicose (allulose) as recited in claim 15.
Regarding the beverage as comprising tagatose or psicose (allulose) as recited in claim 15, Woodyer et al (Woodyer) teaches sweetener compositions for beverage products (abstract), wherein the use of allulose in combination with at least one mogroside, including mogroside V, siamenoside I, and mixtures thereof, provides for sweetness synergy (paragraphs 0017 and 0039). It would have been obvious for the mogroside containing beverage claimed by ‘878 to comprise allulose to provide sweetness synergy in view of Woodyer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792