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 October 16, 2025 has been entered. Claims 14-16, 19-20 and 33-47 are pending. Claims 1-13, 17-18, and 21-32 have been canceled. Claims 14-16 and 20 have been amended. Claims 33-47 are new.
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 14-16, 19-20, 33-39, and 42-47 are rejected under 35 U.S.C. 103 as being unpatentable over Purkayasatha et al. (US 2014/0199246).
Regarding claims 14-16 and 19-20, Purkayasatha teaches compositions comprising a sweetener than can be mogroside V, Luo Han Guo extract (e.g. swingle extract), thaumatin (e.g. a sweet-tasting protein), and combinations thereof ([0042-0044], [0052]-[0053]). It would have been obvious to have utilized the combination of sweeteners in the sweetening composition, as Purkayasatha teaches that the claimed components are known to be combined to form a sweetener composition.
Regarding claim 33, as stated above, Purkayasatha renders obvious a composition comprising swingle extract and mogroside V ([0042-0044], [0052]-[0053]).
With respect to the amount of mogroside V present, Purkayasatha teaches that the concentrations can vary depending on the desired level of sweetness. Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of mogroside V depending on the desired level of sweetness.
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 34, as stated above, Purkayasatha renders obvious a composition comprising thaumatin (e.g. a sweet-tasting protein) ([0042-0044], [0052]-[0053]).
With respect to the sweet-tasting protein being present at a concentration below the threshold of sweetness for the sweet-tasting protein, Purkayasatha teaches that the concentrations of components can vary depending on the desired level of sweetness. Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of sweet-tasting protein depending on the desired level of 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 35, as stated above, Purkayasatha teaches compositions comprising a sweetener than can be mogroside V, Luo Han Guo extract (e.g. swingle extract), thaumatin (e.g. a sweet-tasting protein), and combinations thereof ([0042-0044], [0052]-[0053]). It would have been obvious to have utilized the combination of sweeteners in the sweetening composition, as Purkayasatha teaches that the claimed components are known to be combined to form a sweetener composition.
While Purkayasatha teaches additional sweeteners present in the composition, the additional components are not considered to materially affect the basic and novel characteristics of the composition as they are all sweeteners and therefore Purkayasatha is considered to teach a composition consisting essentially of the mogroside or swingle extract and the sweet-tasting protein.
Regarding claim 36, Purkayasatha teaches additional sweeteners including sucrose can be used in combination with the mogroside V, swingle extract, and sweet-tasting protein ([0044]-[0049]). Therefore, it would have been obvious to have utilized additional sweetener in the sweetening composition, as Purkayasatha teaches that the claimed components are known to be combined to form a sweetener composition.
Regarding claim 37, as stated above, Purkayasatha teaches compositions comprising a sweetener than can be mogroside V, Luo Han Guo extract (e.g. swingle extract), thaumatin (e.g. a sweet-tasting protein), sucrose and combinations thereof ([0042-0049], [0052]-[0053]). It would have been obvious to have utilized the combination of sweeteners in the sweetening composition, as Purkayasatha teaches that the claimed components are known to be combined to form a sweetener composition.
While Purkayasatha teaches additional sweeteners present in the composition, the additional components are not considered to materially affect the basic and novel characteristics of the composition as they are all sweeteners and therefore Purkayasatha is considered to teach a composition consisting essentially of the mogroside or swingle extract, the sweet-tasting protein and the sugar.
Regarding claim 38-39, Purkayasatha teaches compositions further comprising glycosylated steviol glycosides (e.g. a glycosylation product of steviol) ([0045], [0077], Table 2). Therefore, it would have been obvious to have utilized these glycosylated steviol glycosides in combination with the other sweeteners, as Purkayasatha teaches these components to be combined to form a sweetener composition.
Regarding claim 42, as stated above, Purkayasatha teaches compositions comprising a sweetener than can be mogroside V, Luo Han Guo extract (e.g. swingle extract), thaumatin (e.g. a sweet-tasting protein), sucrose, glycosylated steviol glycoside and combinations thereof ([0042-0049], [0052]-[0053]). It would have been obvious to have utilized the combination of sweeteners in the sweetening composition, as Purkayasatha teaches that the claimed components are known to be combined to form a sweetener composition.
While Purkayasatha teaches additional sweeteners present in the composition, the additional components are not considered to materially affect the basic and novel characteristics of the composition as they are all sweeteners and therefore Purkayasatha is considered to teach a composition consisting essentially of the mogroside or swingle extract, the sweet-tasting protein, the sugar and the glycosylated steviol glycoside.
Regarding claim 43, as stated above, Purlayasatha renders obvious the composition of claim 14 and further teaches that it can be used in a beverage, such as a flavored water, which is an aqueous solution ([0068]).
Regarding claim 44, Purkayasatha teaches compositions comprising a sweet-tasting protein as detailed above with regard to claim 14, but fails to specifically teach the specific amount of sweet-tasting protein.
However, where the additional sweeteners are taught to be present at about 2% sucrose equivalence sweetness [0064], one of ordinary skill would have been able to have arrived at the claimed amount through no more than routine experimentation in order to have provided the predictable result of a sweetener composition.
Regarding claim 45, Purkayasatha teaches compositions comprising a sweet-tasting protein and a mogroside or swingle extract as detailed above with regard to claim 14, but fails to specifically teach the ratio of sweet-tasting protein to mogroside or swingle extract.
However, where the additional sweeteners are taught to be present at about 2% sucrose equivalence sweetness [0064], one of ordinary skill would have been able to have arrived at the claimed ratio through no more than routine experimentation in order to have provided the predictable result of a sweetener composition.
Regarding claim 46, as stated above, Purkayasatha renders obvious the composition of claim 36 and further teaches that it can be used in a beverage, such as a flavored water, which is an aqueous solution ([0068]).
The additional limitations recited are option and therefore not required. Regardless, Purkayasatha teaches compositions comprising sugar, wherein the additional sweeteners are taught to be present at about 2% sucrose equivalence sweetness [0064], and therefore, one of ordinary skill would have been able to have arrived at the claimed amount through no more than routine experimentation in order to have provided the predictable result of a sweetener composition.
Regarding claim 47, as stated above, Purkayasatha renders obvious the composition of claim 38 and further teaches that it can be used in a beverage, such as a flavored water, which is an aqueous solution ([0068]).
The additional limitations recited are option and therefore not required. Regardless, Purkayasatha teaches compositions comprising mogroside or swingle extract and glycosylated steviol glycoside, wherein the additional sweeteners are taught to be present at about 2% sucrose equivalence sweetness [0064], and therefore, one of ordinary skill would have been able to have arrived at the claimed ratio through no more than routine experimentation in order to have provided the predictable result of a sweetener composition.
Claims 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Purkayasatha et al. (US 2014/0199246) as applied to claim 39 above, and further in view of Purkayasatha et al. (US 2014/0017378: hereinafter ‘378).
Regarding claim 40, Purkayasatha teaches a composition comprising glycosylated steviol glycosides, as detailed above with regard to claim 39.
Purkayasatha is silent as to the glycosylated steviol glycosides being a glycosylated rebaudioside as claimed.
‘378 teaches glycosylated steviol glycosides, where glycosylated steviol glycosides are produced by the glycosylation of stevioside and rebaudioside A (e.g., Example 1).
Therefore, where Purkayasatha teaches the inclusion of glycosylated steviol glycosides in the sweetener composition, and where ‘378 teaches the glycosylation of stevioside and rebaudioside A as the predominant steviol glycosides, it would have been obvious to have included the glycosylation products of stevioside or rebaudioside A as taught by ‘378 in the sweetener composition of Purkayasatha as glycosylated steviol glycosides as claimed were known to be included in sweetener compositions.
Regarding claim 41, Purkayasatha teaches a composition comprising glycosylated steviol glycosides as detailed above with regard to claim 39.
Purkayasatha is silent as to the glycosylated steviol glycosides being a glycosylated product as claimed.
‘378 teaches glycosylated steviol glycosides, where glycosylated steviol glycosides are produced by the glycosylation of stevioside and rebaudioside A (e.g., Example 1).
Therefore, where Purkayasatha teaches the inclusion of glycosylated steviol glycosides in the sweetener composition, and where ‘378 teaches the glycosylation of stevioside and rebaudioside A as the predominant steviol glycosides, it would have been obvious to have included the glycosylation products of stevioside or rebaudioside A as taught by ‘378 in the sweetener composition of Purkayasatha as glycosylated steviol glycosides as claimed were known to be included in sweetener compositions.
‘378 teaches that the stevia extract contains total steviol glycosides in an amount between 50-100% with Reb A being one of the predominant steviol glycoside molecules ([0039]). Therefore, it would have been obvious for the stevia extract to contain Reb A in an amount from 20-97% by weight in order to have provided the predictable result of a sweetener composition.
Response to Arguments
Applicant’s amendments and arguments have overcome the drawing objections, claim objections, 112 rejections, 102 rejection, and the double patenting rejection from the previous Office Action and therefore they have been withdrawn.
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive. Applicant’s arguments are considered moot based upon the new grounds of rejection as set forth above.
Further, The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
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.
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/STEPHANIE A KOHLER/ Primary Examiner, Art Unit 1791