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 Response and Amendment after Non-Final Office Action filed 01/16/2026 is acknowledged.
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Withdrawn claims: None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, 2, 4, 5, 7, 8, 12, and 13
New claims: None
Claims currently under consideration: 1-15
Currently rejected claims: 1-15
Allowed claims: None
Specification
The abstract of the disclosure is objected to because it contains a paragraph number. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b) I C.
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).
Regarding claim 1, Dierbach et al. discloses a sweetener composition comprising about 1-10 ppm 1,3-propanediol (specifically, about 0.0001-0.006%, or 1-60 ppm) ([0012]) that may comprise a carbohydrate sweetener ([0031], [0039]).
Dierbach et al. does not explicitly disclose the carbohydrate sweetener as being at a concentration of about 18,000-62,000 ppm.
However, 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]).
As for claim 3, Dierbach et al. discloses a beverage composition comprising the sweetener composition ([0038]).
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). 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. Although Dierbach et al. does not specifically disclose the method as being for reducing bitterness of the carbohydrate sweetener per se, 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.” Thus, it is not necessary that Dierbach et al. specifically disclose that the bitterness reduction is specifically for the carbohydrate component of the sweetener.
As for claim 13, Dierbach et al. discloses the sweetener as being sucrose ([0039]).
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]).
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.
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]).
Response to Arguments
Claim Objections: Applicant did not address the objection to the specification (i.e., the abstract). The objection has been maintained herein.
Claim Rejections - 35 U.S.C. § 103 of claims 1-3 and 12-15 over Dierbach et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argued that the amendments to claims 1 and 12 to require the sweetener to be a carbohydrate sweetener distinguished the present claims from Dierbach et al., which teaches the addition of 1,3-propanediol to reduce bitterness of a high-potency sweetener (Applicant’s Remarks, p. 6, ¶3).
However, the present claims do not require the exclusion of a high-intensity sweetener, which may still be present in the claimed compositions/method. Dierbach et al. plainly states that “[o]ne or more sweeteners, nutritive or high intensity, can be included in the food or beverage” ([0031]) and that “the food or beverage may include an additional sweetener. Useful sweeteners may include both nutritive sweeteners, such as honey, fructose, sucrose, corn syrup, high fructose corn syrup, agave nectar, the like and high intensity sweeteners as described above, and combinations thereof.” ([0039]). Applicant’s assertion that the claims as presently amended distinguish from the disclosure of Dierbach et al. is unpersuasive.
Applicant argued that Dierbach et al. teaches only that carbohydrate sweeteners may be reduced in compositions where high-intensity sweeteners are added to maintain sweetness but does not teach “that 1,3-propanediol can be used in low concentrations in a sweetener composition with a carbohydrate sweetener at a high concentration” (Applicant’s Remarks, p. 6, ¶4).
Again, Dierbach et al. specifically teaches that nutritive sweeteners, such as sucrose, may be included in the compositions ([0031, [0039]), which undermines Applicant’s argument. The citation to Table 4 ([0076]-[0077]) is merely to show the concentration of sucrose that would be considered suitable for use according to Dierbach et al.
The rejections of claims 1-3 and 12-15 have been 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 concentrations disclosed for 1,3-propanediol and rebaudioside M in paragraph [0012] of DiGirolamo et al. effectively limit the concentrations of those two components in a mixed composition (Applicant’s Remarks, p. 7, ¶4). Applicant asserted examples of the reference comprising high concentrations of both components and further asserted that the amount of 1,3-propanediol is “excessively high, even when diluted”. Id.
However, the claim rejections do not rely only on the disclosure of paragraph [0012] in deeming the claimed composition obvious. Examiner maintains that the combination of cited paragraphs is adequate to deem the claimed concentrations obvious, since paragraph [0032] indicates solvent may be present in an amount of 25-99% by total weight of the composition, paragraph [0033] indicates the solvent may comprise water, and paragraph [0042] discloses the further dilution of the composition into a beverage. The examples do no limit the broader disclosure of the reference. MPEP 2123 II (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”).
Applicant further argued that the transitional phrase in claim 4—“consisting essentially of”—was not properly considered in the claim rejections (Applicant’s Remarks, p. 7, ¶4).
However, the phrase “consisting essentially of” applies only to the “sweetener composition”, which is apparently only an intermediate component. The overall composition is merely limited by the “comprising” transitional phrase, which undermines Applicant’s argument. Further, it is unclear what material would constitute the remainder of a beverage composition that consisted essentially of at most 800 ppm 1,3-propanediol and 400 ppm sweetener, since beverage are presumptively made largely of water. Further still, MPEP 2111.03 III states: “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’” There does not appear to be a clear indication in the specification/claims as to what the basic characteristics of the claimed invention actually are, especially as related to the water content of a composition or what the remainder of the composition may be if not water. For all these reasons, Applicant’s argument is unpersuasive.
Applicant next argued that the inventors of DiGirolamo et al. argued during prosecution that additional water would crystalize rebaudioside M “making the resulting composition useless” (Applicant’s Remarks, p. 8, ¶2).
However, the actual DiGirolamo et al. reference that is cited states: “The one or more additional solvents may be selected from water” ([0033]). Even though the reference indicates a preference for reduced water or even omission of water, this broader disclosure nonetheless renders the inclusion of water obvious. MPEP 2123 II (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”). The exemplary composition detailed in the claim rejection thus is not “directly contradictory” to the disclosure of the reference. The prosecution history of that application is not directly pertinent to the present analysis. While the inventors may have considered crystallized rebaudioside M useless, such a characterization does not necessarily apply for uses that may be beyond the scope of the use intended by the inventors of the application. Even if it were determined that water should be omitted, paragraph [0033] indicates various other solvents that may replace water. For all these reasons, Applicant’s arguments are unpersuasive.
Applicant then asserted the Gahan Declaration purporting to show that the claimed range of 1,3-propanediol with rebaudioside M provided desirable taste attributes and that exceeding the claimed range of 1,3-propanediol produced undesirable taste (Applicant’s Remarks, p. 8, ¶3). Applicant asserted that the 1,3-propandiol concentration of 9% and the rebaudioside M concentration of 1% far exceed the claimed ranges and would have undesirable taste attributes (Applicant’s Remarks, p. 8, ¶4).
The asserted data is insufficient to overcome the prima facie showing of obviousness for the following reasons. First, MPEP 716.02(d) states: “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” The data in Table 1 of the Gahan Declaration analyzes only rebaudioside M at a concentration of 350 ppm. No basis is apparent for determining the effect of 1,3-propanediol on the taste of rebaudioside M at concentrations other than 350 ppm, particularly for lower concentrations approaching the lower limit of the claimed range. Also, claim 4 is not even limited to being a steviol glycoside, much less rebaudioside M. Even claims 6 and 9 merely limit the high-potency sweetener to being either Reb A97 or Reb M95, neither of which taste the same and both of which may comprise additional steviol glycosides that would not necessarily provide a consistent taste for any composition that may be characterized as “Reb A97” or “Reb M95”. Further, claim 4 requires only an extremely small portion of the claimed food or beverage to be any material in particular; the asserted data does not account for compositions comprising other ingredients that may overwhelm the tastes of either of 1,3-propanediol or the high-potency sweetener. The data thus cannot be said to support the notion that the claimed composition would exhibit a synergistic taste effect where the taste may not even be perceived due to tastes from other ingredients. Regardless, DiGirolamo et al. is not limited to only disclosing 1,3-propanediol and rebaudioside M concentrations that allegedly exceed the claimed concentration ranges. As noted in the claim rejection, the combined disclosures of paragraph [0012], [0032], [0033], and [0042], show that a composition comprising as low as 8% 1,3-propanediol and 2% rebaudioside M may be further diluted by adding 0.25 ml into 250 total ml, which would result in a concentrations of 800 ppm and 200 ppm, respectively—concentrations that fall within the claimed concentration ranges. For all these reasons, Applicant’s arguments are unpersuasive.
The rejections of claims 4-11 have been maintained herein.
Conclusion
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.
Claims 1-15 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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