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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 30, 2026 has been entered. Claims 14, 19-20, 33-39, 41-43, and 45-52 are pending. Claims 15-16, 40, and 44 have been canceled. Claims 14, 34-35, 37, 42-43, and 45-47 have been amended. Claims 48-52 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, 19-20, 33-39, 42-43, and 45-51 are rejected under 35 U.S.C. 103 as being unpatentable over Purkayasatha et al. (US 2014/0199246).
Regarding claims 14 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.
With respect to the thaumatin 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 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 and a mogroside or swingle extract (e.g. a sweet-tasting protein) ([0042-0044], [0052]-[0053]), but fails to specifically teach the ratio of thaumatin 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 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, Purkayasatha 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]). Therefore, Purkayasatha renders obvious an aqueous solution comprising a mogroside or swingle extract and thaumatin ([0042-0044], [0052]-[0053]).
With respect to the thaumatin being present in an amount of 0.5 to 7 ppm, 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 thaumatin 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)
Further, 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 thaumatin and a mogroside or swingle extract as detailed above with regard to claim 43, but fails to specifically teach the ratio of thaumatin 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 43 and further teaches that it can be used in a beverage, such as a flavored water, which is an aqueous solution ([0068]).
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.
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 46 and further teaches that it can be used in a beverage, such as a flavored water, which is an aqueous solution ([0068]).
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.
The additional limitations recited are optional 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.
Regarding claims 48-49, Purkayasatha teaches compositions comprising a sweetener than can be mogroside V ([0042-0044], [0052]-[0053]).
Regarding claim 50, as stated above, Purkayasatha renders obvious an aqueous solution 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 51, 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.
Claims 41 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Purkayasatha et al. (US 2014/0199246) as applied to claims 39 and 51 above, and further in view of Purkayasatha et al. (US 2014/0017378: hereinafter ‘378).
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.
Regarding claim 52, Purkayasatha teaches a composition comprising glycosylated steviol glycosides as detailed above with regard to claim 51.
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 arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Purkayasatha presents an extremely long list of possible sweeteners to combine together and therefore it would not have been obvious to combine the specifically selected claimed sweeteners.
This is not found persuasive as 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.)”
Therefore, as Purkayasatha suggests the use of the claimed sweeteners together, 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.
Applicant further argues that none of the examples in Purkayasatha use thaumatin as a sweetener, let alone in combination with a mogroside.
This is not found persuasive per MPEP 2123: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
In the instant case, Purkayasatha suggests the use of the claimed sweeteners together, and therefore, 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.
With respect to the thaumatin 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)
Applicant further argues unexpected results using a very small amount of thaumatin, which shows that trace amounts of thaumatin are able to increase the sweetness and removed the bitter aftertaste.
This is not found persuasive as applicant’s arguments are not commensurate in scope with the claims. The independent claims are very broad and do not recite the specific components and amounts of components used in the examples in the specification that achieve the unexpected results. The examples appear to use an amount of 1 ppm thaumatin, however, the claims recite a broader range than 1 ppm. Do the unexpected results occur at amounts higher than 1 ppm? Therefore, it is not clear what is needed in the composition to achieve such unexpected results.
For the reasons stated above, a 103 rejection is maintained.
Conclusion
No claims are allowed.
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.
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, 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.
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.
/STEPHANIE A KOHLER/ Primary Examiner, Art Unit 1791
Prosecution Insights