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 .
This office action is in regard to the application filed on October 8, 2023 and in response to Applicant’s Amendments and Arguments/Remarks filed on December 18, 2025. The earliest effective filing date of the application is April 16, 2018.
Status of Application
The amendment filed December 18, 2025 has been entered. Claims 31-43 and 46-50 are currently pending in the application. Claims 31, 42, 43, and 48 have been amended; claims 1-30 were previously canceled; claims 44 and 45 have been newly canceled. Claims 31-43 and 46-50 are presented for examination.
The claim identifiers for claims 32-41, 46, 47, 49, and 50 are “Presently Presented,” they should be “Previously Presented” since they are not currently amended, canceled, withdrawn, or new. See 37 CFR 1.121(c).
The previous claim objections have been withdrawn in view of applicant’s claim amendments. The previous double patenting rejections of claims 43-45 have been withdrawn and some of the double patenting rejections have been amended in view of applicant’s claim amendments and cancelation of claims 44 and 45; however, the essential double patenting rejections of claims 31-37, 42, and 48-50 have been maintained.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the implied phrase of “the disclosure relates to” in line 1. 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 42 and 48-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8-10, 14, 17, and 18 of U.S. Patent No. 10,602,758 (herein after referred to as ‘758). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 42, claim 1 of ‘758 claims a product composition comprising a sweetening agent and a taste modulator composition. Claim 1 of ‘758 claims all of the limitations of instant claim 42.
Claims 48, 49, and 50 are not patentably distinct from claims 14, 17, and 18, respectively, of ‘758.
Claims 31-37, 42, and 48-50 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-34, 38-40, 44, 47, and 48 of copending Application No. 17/406,939 (reference application) (herein after referred to as ‘939). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 31, claim 31 of ‘939 claims a taste modulator composition comprising a first, second, and optionally third taste modulator component. Claim 31 of ‘939 claims all of the limitations of instant claim 31.
Claims 32-37 are duplicates of claims 32, 33, 38, 39, 40, and 34, respectively, of ‘939.
Regarding claim 42, claim 31 of ‘939 claims a product composition comprising a sweetening agent and a taste modulator composition. Claim 31 of ‘939 claims all of the limitations of instant claim 42.
Claims 48-50 are not patentably distinct from claims 44, 47, and 48, respectively, of ‘939.
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 31-43 and 46-50 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (US PG Pub 2007/0116819, listed in IDS dated Oct. 8, 2023), herein after referred to as Prakash.
Regarding claims 31-36, Prakash discloses a sweet taste improving composition (i.e., a taste modulator composition) (claim 39) comprising of at least two sweet taste improving compositions (claim 48) and optionally a third sweet taste improving composition (claim 49), consisting essentially of:
at least one inorganic salt (claim 58) in the form of inorganic chloride (i.e., a first, second, and optionally third taste modulator component consisting essentially of a respective first, second, and/or third salt) of magnesium chloride (i.e., a first cation Mg2+ and a first anion), calcium chloride (i.e., a second cation Ca2+ and a second anion), and optionally potassium chloride (i.e., a third cation K+ and a third anion) (claim 63);
wherein the sweet taste improving inorganic salts (i.e., first, second, and optional third taste modulator components) are each present in an amount in the range of 25-5,000 ppm [0842], which is equivalent to 0.26-53 mM for magnesium chloride (i.e., the first taste modulator component), 0.23-45 mM for calcium chloride (i.e., the second taste modulator component), and 0.34-67 mM for potassium chloride (i.e., the optional third taste modulator component) (Examiner’s note: Per the specification of Prakash, ppm is equivalent to mg/L [0773], so amounts in ppm were first converted to mg/L and then converted to molarity using each respective molar mass).
The concentrations of the first, second, and third taste modulator components taught by Prakash overlap with or encompass the respective claimed ranges of instant claims 31-36. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Regarding claims 37-39, Prakash teaches magnesium chloride as a taste modulator (claim 63), thus the first anion is chloride.
Regarding claims 40 and 41, Prakash teaches calcium chloride as a second taste modulator (claim 63), thus the second anion is chloride.
Regarding claims 42, 43, and 46, Prakash discloses a food (claim 77) comprising:
a high-potency sweetener (i.e., a sweetening agent) (claim 39) that is rebaudioside A (i.e., a non-caloric sweetener) (claim 44); and
a sweet taste improving composition (i.e., a taste modulator composition) (claim 39) comprising of at least two sweet taste improving compositions (claim 48) and optionally a third sweet taste improving composition (claim 49), consisting essentially of
at least one inorganic salt (claim 58) in the form of inorganic chloride (i.e., a first, second, and optionally third taste modulator component consisting essentially of a respective first, second, and/or third salt) of magnesium chloride (i.e., a first cation Mg2+ and a first anion), calcium chloride (i.e., a second cation Ca2+ and a second anion), and optionally potassium chloride (i.e., a third cation K+ and a third anion) (claim 63);
wherein the sweet taste improving inorganic salts (i.e., first, second, and optional third taste modulator components) are each present in an amount in the range of 25-5,000 ppm [0842], which is equivalent to 0.26-53 mM for magnesium chloride (i.e., the first taste modulator component), 0.23-45 mM for calcium chloride (i.e., the second taste modulator component), and 0.34-67 mM for potassium chloride (i.e., the optional third taste modulator component) (Examiner’s note: Per the specification of Prakash, ppm is equivalent to mg/L [0773], so amounts in ppm were first converted to mg/L and then converted to molarity using each respective molar mass);
wherein the rebaudioside A (i.e., non-caloric sweetening agent) is present in an amount of 100-3,000 ppm (equivalent to 100-3,000 mg/L) ([0838]; [0876]).
The concentrations of the first, second, and third taste modulator components, as well as the amount of the non-caloric sweetening agent, as taught by Prakash and as set forth above, overlap with the respective claimed ranges of instant claim 42. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
The limitation of “wherein the at least one caloric sweetening agent is present in an amount of from about 1 wt.% to about 15 wt.%” is met through the rejection of the limitation of “a sweetening agent selected from at least one non-caloric sweetener, at least one caloric sweetener, and combinations thereof.” This limitation requires the selection of a non-caloric sweetener, a caloric sweetener, or a combination thereof; by selecting a non-caloric sweetener to meet the claim limitation, the later limitation regarding the amount of the caloric sweetener is also considered to be met.
Regarding claim 47, Prakash teaches that the product is a concentrated sweetener composition [0863].
Regarding claim 48, Prakash teaches that the food composition (claim 77) comprises a sweetener (i.e., a sweetening agent) (claim 39) that is a natural high-potency sweetener (claim 44).
Regarding claims 49 and 50, Prakash teaches that the food composition comprises rebaudioside A (claim 44), which is a stevia sweetener.
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.
Applicant argues, with regard to claims 31 and 42, that the Office Action improperly omitted the entire composition taught by Prakash and instead only used one component (the sweet-taste improving composition) to reject the claims. Applicant argues that the composition taught by Prakash also includes other components such as at least one fatty acid and at least one high-potency sweetener and that the inorganic salt taught in claims 48 and 58 are a further component to this overall composition (Remarks, p. 9-10).
This argument is not persuasive. Instant claim 31 is directed to a taste modulator composition. Prakash teaches a functional sweetened composition comprising multiple components including at least one sweet taste improving composition (claim 39). Thus, it is only the sweet taste improving composition (i.e., a taste modulator composition) component that is relevant to the instant claims at hand. This is further evidenced by the fact that instant claim 42 is directed to a product comprising both a sweetening agent and a taste modulator composition – the entire functional sweetened composition taught by Prakash in claim 39 is thus relevant to this instant claim. In other words, instant claim 42 comprises multiple components including a taste modulator composition that is essentially the same as the taste modulator composition in instant claim 31. Thus, it is not improper to only use the sweet taste improving composition to reject instant claim 31 as that is what the instant claim is directed to.
Furthermore, where instant claim 42 recites a product comprising multiple components, but not a fatty acid, the claim does not exclude the fatty acid taught by Prakash.
Lastly, the inorganic salts taught in claims 48 and 58 of Prakash are components of the specific sweet taste improving composition, not of the overall composition.
Applicant argues that there are “hundreds, possibly even…a thousand choices” to the component that can be in the “at least one sweet-taste improving composition” and that there is no guidance or direction to select one from the many, and that there are no examples taught by Prakash that have the magnesium and calcium with or without the potassium as claimed (Remarks, p. 10-11).
This argument is not persuasive. Prakash explicitly discloses that the composition can contain at least one inorganic salt and that that salt comprises a sodium, potassium, calcium, or magnesium salt (claim 59) as well as disclosing at least one inorganic chloride and that the inorganic chloride comprises a sodium, potassium, calcium, or magnesium chloride (claim 63). Thus, Prakash does not merely teach a myriad of choices, but teaches specific embodiments in the claims of those components. Additionally, the prior art does not need to teach examples with the components as claimed, as a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123(I).
Applicant argues that the range of 25 to 5000 ppm of Prakash is a generic range that applies to all of the functional ingredients taught by Prakash and there is no teaching or suggestion of a specified range for any one of magnesium, calcium, or potassium (Remarks, p. 11). Applicant also argues that the rationale applied for rejecting the range (In re Wertheim, as set forth above in the rejection) cannot be relied upon without exception or limitation and that a claimed narrow range within a prior art broad range is not necessarily or automatically prima facie obvious (Remarks, p. 8-9).
This argument is not persuasive. The range taught by Prakash is specifically for the salt additive of the sweet taste improving composition [0842], it is not a generic range for all of the functional ingredients. Since Prakash teaches that the salt is one or more of magnesium, calcium, and potassium, the range taught by Prakash suitably applies to these salts. Additionally, the ranges as instantly claimed have three orders of magnitude, just as Prakash does, as argued by the applicant. The range taught by Prakash still has three orders of magnitude when converted to mM as instantly claimed. Thus, the range taught by Prakash is not so broad so as that the In re Wertheim rationale should not apply. The range taught by Prakash sufficiently overlaps with that of the instant claims.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (remarks, p. 11), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.\
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791