DETAILED ACTION
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 11/07/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 7, 12-17, 19-27
Withdrawn claims: 19, 21
Previously cancelled claims: 1-6, 8-11, 18
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 7, 12-17, 20, 22-27
Currently rejected claims: 7, 12-17, 20, 22-27
Allowed claims: None
Claim Rejections - 35 USC § 103
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 7, 12-17, 20, and 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash (WO 2016/085924; previously cited).
The applied reference has a common applicant and joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 7, Prakash teaches an isolated and purified steviol glycoside wherein the steviol glycoside is a diterpene glycoside of formula (1) (page 4, lines 8-9). The compound of Formula (1) is pictured below:
PNG
media_image1.png
198
352
media_image1.png
Greyscale
Prakash teaches that the R1, R2, R4, and R5 of the steviol glycoside may be hydrogen; and that R3 of the steviol glycoside may be a saccharide (page 3, lines 4-9). In Formula (1) of Prakash, the location depicted as being “R3” is where the “Glc VII” moiety would be located to provide claimed compound CC-00345. Therefore, from this disclosure in Prakash, a skilled practitioner “is able to "at once envisage" the specific compound within the generic chemical formula”. MPEP §2131.02.III. Therefore, Prakash at least suggests that the steviol glycoside is CC-00345 as presently claimed.
Regarding claims 12 and 20, Prakash teaches a consumable comprising a steviol glycoside (page 4, lines 17-21) wherein the steviol glycoside is a diterpene glycoside of formula (1) (page 5, lines 13-14). Prakash teaches that the R1, R2, R4, and R5 of the steviol glycoside are hydrogen; and that R3 of the steviol glycoside is a saccharide (page 3, lines 4-9). From this disclosure in Prakash, a skilled practitioner “is able to "at once envisage" the specific compound within the generic chemical formula”. MPEP §2131.02.III. Therefore, Prakash at least suggests that the steviol glycoside is CC-00345 as presently claimed.
Regarding claim 13, Prakash teaches the invention as described above in claim 12, including the consumable is a beverage or beverage product (page 5, lines 13-16).
Regarding claim 14, Prakash teaches the invention as described above in claim 13, including the consumable the beverage is a zero-calorie, low-calorie, or mid-calorie beverage (page 92, lines 1-5).
Regarding claim 15, Prakash teaches the invention as described above in claim 14, including the steviol glycoside is provided in purified form (page 89, lines 14-19). Prakash also teaches that the steviol glycoside is present in a concentration sufficient to provide a sucrose equivalence of greater than about 8% (page 19, lines 5-6, 16-20), which falls within the claimed range.
Regarding claim 16, Prakash a method of preparing a sweetened consumable comprising: (i) providing a consumable; and (ii) adding at least one steviol glycoside to the consumable to provide a sweetened consumable (page 5, lines 25-27), wherein the steviol glycoside is a diterpene glycoside of formula (1)) (page 5, lines 13-14). Prakash teaches that the R1, R2, R4, and R5 of the steviol glycoside may be hydrogen; and that R3 of the steviol glycoside may be a saccharide (page 3, lines 4-9). In Formula (1) of Prakash, the location depicted as being “R3” is where the “Glc VII” moiety would be located to provide claimed compound CC-00345. Therefore, from this disclosure in Prakash, a skilled practitioner “is able to "at once envisage" the specific compound within the generic chemical formula”. MPEP §2131.02.III. Therefore, Prakash at least suggests that the steviol glycoside is CC-00345 as presently claimed.
Regarding claim 17, Prakash teaches the invention as described above in claim 12, including the consumable is a pharmaceutical composition, edible gel matrix, edible gel composition, dental composition, confection, condiment, chewing gum, cereal composition, baked good, dairy product, or tabletop sweetener composition (page 62, lines 13-20).
Regarding claim 22, Prakash teaches the invention as described above in claim 12, including the steviol glycoside is present in the consumable in a concentration of about 50 ppm to about 1,000 ppm (page 28, lines 10-15), which falls within the claimed concentration.
Regarding claims 23, 24, and 25, Prakash teaches the invention as described above in claim 13, including the beverage product is selected from a beverage concentrate, beverage syrup, and a powdered beverage; and that the beverage is a carbonated beverage or a non-carbonated beverage (page 87, lines 10-16).
Regarding claims 26 and 27, Prakash teaches the invention as described above in claim 13, including the beverage further comprises at least one organic acid salt (page 6, lines 18-22) and/or at least one mineral (page 6, lines 25-28).
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 7, 12-17, 20, and 22-27 over Prakash: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant stated that, with respect to the “Glc VII” moiety of the claimed CC-00345 compound, Prakash uses a hydrogen instead of a saccharide in Formula (1) of Prakash. Applicant also stated that Prakash further discloses five other compound species of Formula (1) of Prakash wherein the substitutions comprise adding three saccharides. For these reasons, Applicant argued that Prakash does not provide clear guidance to modify the Formula (1) of Prakash by substituting a single saccharide to provide the “GLC VII” moiety and arrive at the claimed compound CC-00345 (Applicant’s Remarks, page 7, 1st paragraph under “Claim Rejection under 35 USC 103” – page 9, 1st paragraph).
However, the Examiner points out that the structure asserted by the Applicant as being Formula (1) of Prakash is actually “Figure 1” of Prakash and that “Figure 1” of Prakash depicts “the diterpene glycoside of diterpene glycoside 1” (page 7, line 25). Therefore, Formula (1) of Prakash does not use a hydrogen instead of a saccharide where the “Glc VII” moiety of claimed compound CC-00345 is located.
In Formula (1) of Prakash, the location depicted as being “R3” is where the “Glc VII” moiety would be located to provide claimed compound CC-00345. Prakash broadly discloses that R3 may be hydrogen, a saccharide, or an oligosaccharide comprising at least two saccharides (page 3, lines 9-10). Prakash also broadly discloses that Formula (1) may comprise seven saccharides (i.e., at least six saccharides, at least seven saccharides) (page 3, line 11-page 4, line 2), meaning that the structure of Formula (1) may only require the addition of one more saccharide. Since Prakash discloses that its Formula (1) may have a saccharide at the R3 position and may have only one additional saccharide, Prakash discloses Formula (1) being modified in containing only one additional saccharide at the R3 position; this modification to Formula (1) results in the presently claimed compound.
Even though Prakash only broadly discloses the claimed compound while specifically disclosing other compounds (i.e., diterpene glycosides 1-6), “[d]isclosed 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) […] Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” MPEP 2123.II.
Applicant then argued that Prakash only claims a method for purifying the compound of its Formula (1) from mixtures such as plant extracts but does not teach a method for adding saccharides to diterpene glycosides. Applicant stated that the presently claimed compound is synthesized using multiple diterpene glycoside species and biocatalysts which makes the method of the present invention distinct from the method of Prakash (Applicant’s Remarks, page 9, 2nd-4th paragraphs).
However, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., a method of producing the compound using bioconversion) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claims are product claims, and do not recite a process of making the steviol glycoside.
Since the prior art is shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Conclusion
THIS ACTION IS MADE FINAL. 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 Kelly Kershaw whose telephone number is (571)272-2847. The examiner can normally be reached Monday - Thursday 9:00 am - 4:00 pm.
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.
/K.P.K./Examiner, Art Unit 1791 /Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791