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 .
The Amendment filed May 27, 2026 has been entered. Claims 1, 5-7, 12-13, 18-21, 24, 27-28, 30-32, 34, 38, 42-44, 46-48, 51-54 and 57 are pending. Claims 1, 6, 34, and 38 have been amended.
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, 5-7, 12-13, 18-21, 24, 27-28, 30-32, 34, 38, 42-44, 46-48, 51-54 and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Putter et al. (US 2014/0004244 A1; Jan. 2, 2014) in view of Fischer et al. (US 2015/0366251, Dec. 24, 2015).
Regarding claim 1, Putter discloses a sweetener composition comprising a non-nutritive sweetener ([0263]), trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
While Putter teaches a sweetener composition as described above, Putter fails to teach that it further comprises 3-methylbutanol.
Fischer discloses compositions for flavor enhancement, wherein the composition can be sweetener compositions ([0052]). Fischer teaches that 3-methybutanol is an aroma substance that can be used to enhance flavor in sweetener compositions ([0005], [0031]).
As Fischer teaches that 3-methylbutanol is well known in the art for enhancing flavor and aroma in sweetener compositions, it would have been obvious to one of ordinary skill in the art to further add 3-methylbutanol to the composition of Putter in order to further enhance the flavor and aroma and arrive at a desired taste profile.
Regarding claim 5, the composition of Putter comprises the same ingredients as in claim 1 and therefore would necessarily be substantially free of any compounds having a molecular weight of greater than 500 daltons.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 6, Putter discloses a sweetener composition comprising a non-nutritive sweetener ([0263]) and a flavor-modifying composition comprising trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
While Putter teaches a sweetener composition as described above, Putter fails to teach that it further comprises 3-methylbutanol.
Fischer discloses compositions for flavor enhancement, wherein the composition can be sweetener compositions ([0052]). Fischer teaches that 3-methybutanol is an aroma substance that can be used to enhance flavor in sweetener compositions ([0005], [0031]).
As Fischer teaches that 3-methylbutanol is well known in the art for enhancing flavor and aroma in sweetener compositions, it would have been obvious to one of ordinary skill in the art to further add 3-methylbutanol to the composition of Putter in order to further enhance the flavor and aroma and arrive at a desired taste profile.
Regarding claim 7, the composition of Putter comprises the same ingredients as in claim 1 and therefore would necessarily be substantially free of any compounds having a molecular weight of greater than 500 daltons.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 12, Putter teaches a sweetener composition as described above, comprising a non-nutritive sweetener ([0263]), trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
With respect to the amount, it would have been obvious to one of ordinary skill in the art to vary the amount depending on the desired sweetness of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 13, Putter teaches that the non-nutritive sweetener can be one of the claimed sweeteners ([0071]).
Regarding claim 18, Putter teaches that the non-nutritive sweetener can be rebaudioside D and stevioside ([0071]). With respect to the rebaudioside D and stevioside being present as an aqueous glycoside composition, it would have been obvious to have the non-nutritive sweetener as an aqueous glycoside composition comprising rebaudioside D and stevioside depending on the desired use of the sweetener composition.
Regarding claims 19-20, With respect to the amount of rebaudioside D and stevioside, it would have been obvious to one of ordinary skill in the art to vary the amount depending on the desired sweetness of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 21, Putter teaches that the at least one sweetener can be mixtures thereof and therefore it would have been obvious to have a second steviol glycoside selected from one of the claimed sweeteners as Putter teaches rebaudioside A, B and C ([0071]).
Regarding claims 24 and 27, Putter discloses a ready to drink beverage comprising water and a sweetener composition as recited in claim 1 ([0117], [0120], [0505]-[0513]) as Putter discloses a sweetener composition comprising a non-nutritive sweetener ([0263]), trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
The acidulant and flavorant are optional and therefore not required.
Regarding claim 28, Putter teaches that the beverage further comprises caffeine ([0478]-[0480]).
Regarding claim 30, Putter teaches that the sweetener can be non-caloric and teaches reduced calorie consumable products ([0082]), and therefore it would have been obvious for the ready to drink beverage to have fewer than 200 calories per 8 oz se
Regarding claim 31, Putter teaches that the beverage can further comprise a nutritive sweetener ([0081]).
Regarding claim 32, Putter teaches that the consumable product comprising the sweetener of claim 1 can be a beverage concentrate ([0117], [0120], [0123], [0505]-[0513]).
Regarding claim 34, Putter discloses a method of making the sweetener composition of claim 1 comprising adding to the non-nutritive sweetener ([0263]), trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
While Putter teaches a sweetener composition as described above, Putter fails to teach that it further comprises 3-methylbutanol.
Fischer discloses compositions for flavor enhancement, wherein the composition can be sweetener compositions ([0052]). Fischer teaches that 3-methybutanol is an aroma substance that can be used to enhance flavor in sweetener compositions ([0005], [0031]).
As Fischer teaches that 3-methylbutanol is well known in the art for enhancing flavor and aroma in sweetener compositions, it would have been obvious to one of ordinary skill in the art to further add 3-methylbutanol to the composition of Putter in order to further enhance the flavor and aroma and arrive at a desired taste profile.
Regarding claim 38, Putter discloses a method of making the sweetener composition of claim 1 comprising adding to the non-nutritive sweetener ([0263]) a flavor-modifying composition comprising trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples).
With respect to the non-nutritive sweetener being an aqueous solution, it would have been obvious to add the flavor modifying agent to an aqueous solution comprising a non-nutritive sweetener depending on the desired use of the sweetener composition.
While Putter teaches a sweetener composition as described above, Putter fails to teach that it further comprises 3-methylbutanol.
Fischer discloses compositions for flavor enhancement, wherein the composition can be sweetener compositions ([0052]). Fischer teaches that 3-methybutanol is an aroma substance that can be used to enhance flavor in sweetener compositions ([0005], [0031]).
As Fischer teaches that 3-methylbutanol is well known in the art for enhancing flavor and aroma in sweetener compositions, it would have been obvious to one of ordinary skill in the art to further add 3-methylbutanol to the composition of Putter in order to further enhance the flavor and aroma and arrive at a desired taste profile.
Regarding claims 42-44, as stated above, Putter teaches adding the flavor modifying agent to the non-nutritive sweetener thereby resulting in a sweetener comprising a non-nutritive sweetener ([0263]), trans-whiskey lactone [0063] (e.g. trans-4-methyl-5-butyldihydro-2(3H)-furanone), and delta-tetradecalactone ([0047]-[0071]; See Examples), which are the same components as claimed.
Putter fails to teach that the flavor modifying composition is comprised within an oak barrel or oak chips, however, the examiner notes that it would have been obvious to use any method for adding the flavor modifying composition to the non-nutritive sweetener as it would result in the same compound as taught by Putter, a sweetener comprising a non-nutritive sweetener, trans-4-methyl-5-butyldihydro-2(3H)-furanone, and delta-tetradecalactone.l
Regarding claim 46, With respect to the amount of non-nutritive sweetener, it would have been obvious to one of ordinary skill in the art to vary the amount depending on the desired sweetness of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claims 47-48, Putter teaches that the non-nutritive sweetener can be one of the claimed sweeteners ([0071]).
Regarding claim 51, Putter teaches that the non-nutritive sweetener can be rebaudioside D and stevioside ([0071]). With respect to the rebaudioside D and stevioside being present as an aqueous glycoside composition, it would have been obvious to have the non-nutritive sweetener as an aqueous glycoside composition comprising rebaudioside D and stevioside depending on the desired use of the sweetener composition.
Regarding claims 52-53, With respect to the amount of rebaudioside D and stevioside, it would have been obvious to one of ordinary skill in the art to vary the amount depending on the desired sweetness of the composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 54, Putter teaches that the at least one sweetener can be mixtures thereof and therefore it would have been obvious to have a second steviol glycoside selected from one of the claimed sweeteners as Putter teaches rebaudioside A, B and C ([0071]).
Regarding claim 57, Putter teaches that the sweetener can further comprise a nutritive sweetener ([0081]).
Response to Arguments
Applicant’s amendments and arguments were found persuasive to overcome the 102 rejection from the previous Office Action and therefore it has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Fischer. Fischer discloses compositions for flavor enhancement, wherein the composition can be sweetener compositions ([0052]). Fischer teaches that 3-methybutanol is an aroma substance that can be used to enhance flavor in sweetener compositions ([0005], [0031]).
As Fischer teaches that 3-methylbutanol is well known in the art for enhancing flavor and aroma in sweetener compositions, it would have been obvious to one of ordinary skill in the art to further add 3-methylbutanol to the composition of Putter in order to further enhance the flavor and aroma and arrive at a desired taste profile.
For the reasons stated above, a 103 rejection is maintained.
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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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