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 Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 08/05/2026 is acknowledged.
Applicant has overcome the following rejections by virtue of the amendment or cancellation of the claims and/or persuasive remarks: (1) the objection to the specification has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-15
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: None
Amended claims: 1, 3, 4, 11, and 15
New claims: None
Claims currently under consideration: 1-15
Currently rejected claims: 1-15
Allowed claims: None
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/05/2026 has been entered.
Claim Rejections - 35 USC § 103
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 1-3 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dierbach et al. (U.S. 2013/0236597 A1) in view of Vittori (U.S. 2017/0251707 A1).
Regarding claim 1, Dierbach et al. discloses a sweetener composition consisting essentially of about 1-10 ppm 1,3-propanediol (specifically, about 0.0001-0.006%, or 1-60 ppm) and a high-intensity sweetener ([0012]) that may further comprise a carbohydrate sweetener, such as sucrose ([0031], [0039]).
Dierbach et al. does not explicitly disclose the mixture as not including a high-intensity sweetener or a salt substitute or the carbohydrate sweetener as being at a concentration of about 18,000-62,000 ppm
However, Vittori discloses erythritol as having a bitter taste ([0016], claim 1).
It would have been obvious to one having ordinary skill in the art to produce a mixture according to Dierbach et al. that consists essentially of the 1,3-propanediol and a carbohydrate that is erythritol. Since Dierbach et al. discloses the 1,3-propanediol as being effective for reducing bitterness in both high-intensity sweeteners and salt substitutes ([0009]), which are not particularly similar food compounds, a skilled practitioner would readily recognize that 1,3-propanediol would be suited for reduction of bitterness of other food compounds. Also, since Dierbach et al. discloses the 1,3-propanediol is useful for suppressing bitterness and enhancing sweetness in food/beverage products ([0002]), a skilled practitioner would find its use in combination with bitter sweetener components in particular to be obvious, even beyond only sweeteners that may be characterized as being high-intensity sweeteners. A skilled practitioner would be motivated to consult Vittori to determine other such suitable sweeteners. Since Vittori discloses that erythritol exhibits a bitter taste ([0016], claim 1) and is also suited for use in sweetener compositions that are used as sugar substitutes ([0051]), the incorporation of at least some erythritol into a sweetening composition comprising sucrose and 1,3-propanediol would be obvious to a skilled practitioner.
Regarding the concentration, Dierbach et al. discloses a nutritive sweetener is an optional component ([0039]) and discloses a “sucrose sweetened beverage” comprising 10% sucrose (i.e., 100,000 ppm) ([0076]-[0077], Table 4). Dierbach et al. thus effectively discloses a range of concentrations of carbohydrate sweeteners from 0 ppm where the component is omitted up to 100,000 ppm. Such values render a range of concentrations for the carbohydrate sweetener of about 18,000-62,000 ppm obvious.
As for claim 2, Dierbach et al. discloses the carbohydrate sweetener as being sucrose ([0039]). Vittori discloses erythritol ([0016], claim 1).
As for claim 3, Dierbach et al. discloses a beverage composition comprising the sweetener composition ([0038]). Omission of another sweetener composition that does not constitute a part of the carbohydrate sweetener would be obvious according to the rationale detailed previously in relation to claim 1.
Regarding claim 12, Dierbach et al. discloses a method of reducing bitterness of a sweetener comprising providing a carbohydrate sweetener and adding about 1-10 ppm of 1,3-propanediol to form a sweetener composition, where the sweetener composition has improved bitterness as compared to sweetener that does not include the 1,3-propanediol ([0035], where the concentrations were detailed previously in relation to claim 1, citing paragraphs [0012], [0015], [0031], [0039], [0076]-[0077], and Table 4). Incorporation of at least some erythritol, which was taught in Vittori as exhibiting bitter taste attributes, would further be obvious according to the rationale discussed previously in relation to claim 1. Any sequence of adding ingredients is prima facie obvious (MPEP 2144.04 IV C), such that providing about 18,000-62,000 ppm of a carbohydrate sweetener to which 1,3-propanediol is added in order to produce a sweetener composition having the claimed concentrations would be obvious. Incorporation of erythritol would result in the method improving sweetness and reducing bitterness of a carbohydrate sweetener.
As for claim 13, Dierbach et al. discloses the sweetener as being sucrose ([0039]). Vittori discloses erythritol ([0016], claim 1).
As for claim 14, Dierbach et al. discloses a sweetener composition produced by the method of claim 12 ([0012], [0038]).
As for claim 15, Dierbach et al. discloses a beverage composition comprising the sweetener ([0038]). Omission of another sweetener composition that does not constitute a part of the carbohydrate sweetener would be obvious according to the rationale detailed previously in relation to claim 1.
Claims 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over DiGirolamo et al. (U.S. 20210145033 A1).
Regarding claim 4, DiGirolamo et al. discloses a sweetener composition that may consist of 90% water, 8% 1,3-propanediol, and 2% rebaudioside M ([0012], [0029], [0032], [0033]). DiGirolamo further discloses the preparation of a beverage via the addition of the sweetener composition, wherein 4-5 drops, or 0.2-0.25 ml, is dispensed in 235 ml of liquid ([0042]), which would result in concentrations of about 0.08% 1,3-propanediol and 0.02% rebaudioside M in the diluted composition, or about 800 ppm 1,3-propanediol and 200 ppm rebaudioside M. The diluted composition may be deemed the “sweetener composition” such that it would consist essentially of the claimed components at the claimed concentrations. The claimed concentrations are thus considered obvious to a skilled practitioner. The disclosed parameters are not considered to be sufficiently specific to support rejection of the present claim under 35 U.S.C. § 102(a)(1) on the basis of anticipation. MPEP 2131.03 II. DiGirolamo et al. does not require the addition of any other sweetener composition ([0006], [0024]), such that the beverage would be devoid of another sweetener composition.
As for claim 5, DiGirolamo et al. discloses the high-potency sweetener as being a stevia sweetener ([0024]).
As for claim 6, DiGirolamo et al. discloses the sweetener is preferably rebaudioside M alone or “in substantial excess of any other sweetener components” ([0024]), which renders the use of Stevia Reb M95 obvious.
As for claim 7, DiGirolamo et al. discloses a method comprising providing about 90-400 ppm of a high-potency sweetener and adding about 600-800 ppm 1,3-propandediol to the high-potency sweetener to form a sweetener composition consisting essentially of 90 to about 400 ppm of the high-potency sweetener and about 600-800 ppm of 1,3-propanediol ([0028]-[0029], [0039], where the concentrations were detailed previously in relation to claim 4, citing paragraphs [0012], [0029], [0032], [0033], and [0042]).
DiGirolamo et al. does not specifically disclose the method as being for improving sweetness and/or reducing bitterness of the sweetener.
However, MPEP 2144 IV states: “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
The disclosed method is thus adequate for deeming the claimed method obvious. That DiGirolamo et al. does not disclose the method as being for improving sweetness or reducing bitterness of the sweetener does not alter that conclusion.
As for claim 8, DiGirolamo et al. discloses the high-potency sweetener as being a stevia sweetener ([0024]).
As for claim 9, DiGirolamo et al. discloses the sweetener is preferably rebaudioside M alone or “in substantial excess of any other sweetener components” ([0024]), which renders the use of Stevia Reb M95 obvious.
As for claim 10, DiGirolamo et al. discloses a sweetener composition produced by the method of claim 7 ([0039], [0041]).
As for claim 11, DiGirolamo et al. discloses a beverage comprising the sweetener composition ([0041]-[0042]). DiGirolamo et al. does not require the addition of any other sweetener composition ([0006], [0024]), such that the beverage would be devoid of another sweetener composition.
Response to Arguments
Specification Objection: Applicant has overcome the objection of the specification based on amendment to the abstract. Accordingly, the objection has been withdrawn.
Claim Rejections - 35 U.S.C. § 103 of claims 1-3 and 12-15 over Dierbach et al.: Applicant’s arguments (Applicant’s Remarks, p. 6, ¶6 – p. 7, ¶1, ¶3) have been fully considered and are persuasive to the extent that Dierbach et al. requires either a high intensity sweetener or a salt substitute, which are presumed to be excluded by the amended claim. However, upon further consideration, new grounds of rejection are made in view of Dierbach et al. and Vittori.
The rejections of claims 1-3 and 12-15 have been updated and maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claims 4-11 over DiGirolamo et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the composition designated the “sweetener composition” in DiGirolamo et al. is required to have a minimum 1,3-propanediol concentration of at least 25% of the solvent (Applicant’s Remarks, p. 8, ¶2).
However, claim 4 is directed to a beverage composition comprising a sweetener composition that consists essentially of 1,3-propanediol and a high-potency sweetener. Claim 4 simply claims a composition—it does not matter whether the “sweetener composition” was very concentrated and added in a relatively small amount (e.g., 0.01%) or relatively dilute and added in a very large amount (e.g., 99.99%), such that formation of the beverage may comprise addition of only miniscule amounts of additional water (or even no water at all). The claimed “sweetener composition” does not have to be directly compared to the composition designated the “sweetener composition” in DiGirolamo et al. Instead, the claimed overall beverage merely has to be analyzed relative to broader disclosure of the reference, including compositions that may comprise the claimed components in the claimed concentrations regardless of how such a composition may be characterized in the reference in terms of being a “sweetener composition” or a beverage per se. As noted in the claim rejection, DiGirolamo et al. discloses a sweetener composition that may consist of 90% water, 8% 1,3-propanediol, and 2% rebaudioside M ([0012], [0029], [0032], [0033]). These concentrations fall within the scope of what is disclosed in DiGirolamo et al. Paragraph [0029] states: “The solvent or liquid base for the sweetener composition may comprise 1,3-propanediol and optionally one or more additional solvents.” No limit is provided regarding the amount of additional solvent that may be added. DiGirolamo further discloses the preparation of a beverage via the addition of the sweetener composition, wherein 4-5 drops, or 0.2-0.25 ml, is dispensed in 235 ml of liquid ([0042]), which would result in concentrations of about 0.08% 1,3-propanediol and 0.02% rebaudioside M in the diluted composition, or about 800 ppm 1,3-propanediol and 200 ppm rebaudioside M. The diluted composition may be deemed the “sweetener composition” (i.e., the “sweetener composition” of present claim 4) such that it would consist essentially of the claimed components at the claimed concentrations. The diluted composition of DiGirolamo et al. comprises the basis for deeming the claimed beverage obvious. Again, claim 4 is simply a composition claim, not a method claim. The claim does not require formulating a sweetener composition having 600-1,000 ppm of 1,3-propanediol and 90-400 ppm of a high-potency sweetener that is then added to a beverage. Only the overall composition requires analysis. Examiner maintains that the disclosure of DiGirolamo et al. is adequate to deem the claimed composition obvious.
Applicant next argued that the amendment to claim 4 should alter the analysis of the “consisting essentially of” transitional phrase (Applicant’s Remarks, p. 8, ¶3).
As noted in the updated claim rejection, DiGirolamo et al. does not require the addition of any other sweetener composition ([0006], [0024]), such that the beverage would be devoid of another sweetener composition. Examiner maintains that the “consisting essentially of’ transitional phrase has been properly considered. The claim amendment is not related to the water content, which appeared to be the basis for Applicant’s previous argument regarding the transitional phrase.
Applicant next argued that previous arguments regarding water content and rebaudioside M crystallization were not accorded adequate weight (Applicant’s Remarks, p. 9, ¶2 – p. 10, ¶3).
Examiner maintains the position detailed at paragraph 41 of the previous Office Action. In short, Applicant’s arguments have been considered but were not deemed sufficient to overcome the plain statement in DiGirolamo et al. that “The one or more additional solvents may be selected from water” ([0033]). The utility of a rebaudioside M sweetener, whether crystallized or not, is treated broadly in the specification of DiGirolamo et al. (“The present invention relates to a sweetener composition comprising rebaudioside-M and 1,3-propanediol which may be used in foods or beverages.”, Abstract) yet treated more narrowly in the asserted prosecution history (where crystallization was considered “undesirable and would frustrate the purpose of the sweetener composition as claimed”) (Exhibit A filed 01/16/2026 with Applicant’s Remarks). Crystallized sweetener would still have utility in foods generally as a sweetener, as suggested in the Abstract, even if such a characteristic may be undesired for more specific purposes in beverages or in solutions generally. Asserting such an opinion during prosecution, though, when the specification already indicated that the solvent may be water, cannot be said to be an unbiased position, as the applicants would be motivated to argue as necessary to overcome prior art rejections, which undermines the persuasiveness of the argument. Regardless, Applicant’s argument does not address the indication in paragraph [0033] that other solvents may replace water, which renders arguments directed only to water unpersuasive.
Applicant next essentially argued that the asserted data meets the requirement of MPEP 716.02(e) of comparing the claimed subject matter with the closest prior art (Applicant’s Remarks, p. 10, ¶5). Applicant asserted that a showing of unexpected results need not necessarily encompass the entire range of properties of a chemical compound or composition (Applicant’s Remarks, p. 11, ¶1). Applicant asserted that intermediate 1,3-propanediol amounts between the claimed concentrations and those of DiGirolamo et al. should be instructive for lower amounts as well (Applicant’s Remarks, p. 11, ¶1). Applicant alleged that the correct comparison was made based on the disclosure of DiGirolamo et al. (Applicant’s Remarks, p. 11, ¶2).
Examiner maintains all of the positions detailed in paragraph 43 of the previous Office Action. MPEP 716.02(e) is not presently at issue, as no comment was made as to whether DiGirolamo et al. should be considered the closest prior art or whether the asserted data was representative of DiGirolamo et al The scope of claim 4 is extremely broad relative to the asserted data, which precludes its effectiveness in overcoming the prima facie showing of obviousness for reasons detailed previously. MPEP 716.02(d). The effectively disclosed ranges of DiGirolamo et al. ([0012], [0032], [0033], and [0042]) that encompass the claimed concentrations undermine Applicant’s argument regarding the analyzed concentrations as related to extrapolating measured data to lower concentrations. DiGirolamo et al. discloses that other components, including other sweeteners, may be present in the composition ([0024], [0035], [0041]), such that data regarding rebaudioside M as the only high-potency sweetener is insufficient to render the asserted results commensurate in scope with the claims.
The rejections of claims 4-11 have been maintained herein.
Conclusion
Claims 1-15 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.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
