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 . Claims 1-2, 5-7, 9-11, 13, and 16-23 are examined herein.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites:
“(ii) a taste modifying composition comprising: (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate”, however,
in light of the pending Specification, it is noted that although these salts are disclosed as being part of a taste modifying composition (0155), several embodiments are provided wherein said salts are merely required to be present in the beverage without being present in a separate composition thereof (paras.: 0250, 0252, 0254, 0256, 0293, 0295, 0298, 0508; Tables 23, 26, 28, 30, 33, 35 and 39-42; and original claims 1-3); and
there is no discussion that indicates that these disclosed/claimed salts comprised in a taste modifying composition, remain in a chemical or physical structure that is in a distinct composition form which remains isolated from the other ingredients when in the disclosed/claimed beverages; therefore to make the claim consistent with the pending Specification, it is suggested that the claim recites: (ii) (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recited “the at least one salt” however, this nor its base claim provide at least one salt, therefore said limitation lacks antecedent basis.
Claim Interpretation
Claim 1 previously required the salts recited as components of item (ii), which are amended to now be requires to be comprised in a taste modifying composition.
When looking for light in the pending Specification, it is noted, that although these salts are disclosed as being part of a taste modifying composition (0155), several embodiments are provided wherein said salts are merely required to be present in the beverage without being present in a separate composition thereof (paras.: 0250, 0252, 0254, 0256, 0293, 0295, 0298, 0508; Tables 23, 26, 28, 30, 33, 35 and 39-42; and original claims 1-3).
Further, there is no discussion that indicates that these disclosed/claimed salts comprised in a taste modifying composition, remain in a chemical or physical structure that is in a distinct composition form which remains isolated from the other ingredients when in the disclosed/claimed beverages.
Therefore, with regard to the prior art, the phrase “a taste modifying composition comprising: (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate”, encompasses: (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate.
Claims 5 and 22 have a similar issue.
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.
Claims 1-2, 5-7, 9-11, 13 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash (US 2014/0322389).
Independent claim 1
A beverage
Prakash teaches methods of making low calorie beverages (ab.), comprising: lemon-lime flavoring (0013), carbonation (ab.), sweeteners (ab.), and organic acid salts.
Therefore the teaching provides a diet (i.e. low-calorie), lemon lime flavored carbonated beverages, as claimed.
Low calories
Prakash teaches the beverage has less than about 60 calories per 8 ounce serving (0028), which encompasses from 0 to 60 calories per 8 ounces, as claimed.
This further meets the criteria presented in the Definition section of the pending specification, for the term diet.
Flavoring
Prakash teaches the low-calorie beverages, comprise lemon and lime flavoring (0013), which imparts that the beverage is a lemon-lime flavored type, as claimed.
Carbonation
Prakash teaches the low-calorie beverages, comprise carbonation (ab.), as claimed.
Sweetener
Prakash teaches the low-calorie beverages, comprise at least one high potency sweetener (0002), including: rebaudioside A; rebaudioside M, aspartame, and potassium acesulfame (0012), sucralose and/or and neotame (0058), as claimed.
Although Prakask makes obvious all of the claimed sweeteners for selection, herein, sucralose is selected for the sake of examination.
Amount of sweetener
Prakash teaches the use of sucralose in an amount from about 100 to 300 ppm (0127), which encompasses: when the at least one high potency sweetener is sucralose it is present in a concentration of about 1 ppm to about 400 ppm, as claimed.
Organic acids/salts thereof
Prakash provides the low-calorie beverages, comprise organic acids (0012-0013), including: calcium and/or magnesium salts of organic acids, including: citric acid and lactic acid (0085-0086), which imparts the use of: (a) magnesium citrate and/calcium citrate; and (b) magnesium lactate and/or calcium lactate, as claimed.
Amount of organic acids/salts thereof
Prakash provides said organic acids and salts thereof are used to improve the flavor profile of the carbonated beverage (0079), wherein flavorants are used in a concentration of about 0.1 ppm to 410,000 ppm, which encompasses a combined concentration of about 100 to about 600 ppm, as claimed.
Further, absent a showing of criticality it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making low calorie carbonated beverages using organic acids as flavorings, as Prakash, to include the claimed amount od salts, because Prakash imparts amounts that encompass the claimed amount, which shows that it was known for such a thing to have been successfully achieved and published at the time of filing, and means it was within the general skill of a worker in the art to select the claimed processing step of crushing when making coconut products, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that discussed that when the prior art recognizes something is suitable for a similar intended use/purpose, such a thing is obvious. Further see MPEP 2144. 05, which discusses Obviousness of similar (close) or overlapping: ranges, amounts and proportions.
The organic acid salts can be in anhydrous and/or hydrate
With regard to the prior art, the term “can”, encompasses: an option, or the ability to make a choice. Therefore for the sake of examination, the claim: wherein (a) and (b) [(a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate] can be in anhydrous and/or hydrate forms thereof, is optional, not obligatory, therefore requires makes no distinction over the modified teaching above.
In the alternative, Prakash’s broad teaching of the claimed components, with no limits on the structure imparts a generic structure, therefore encompasses: wherein (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate, can be in anhydrous and/or hydrate forms thereof, because in this specific case the various permutations of types of hydration or lack thereof in the generic are so small (two options) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of using (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate , as the modified teaching above, to include the specifically claimed type/s, anhydrous and ot hydrate forms, as claimed, because in this specific case the various permutations of hydration or lack thereof in the generic are so small (two types) that the teaching is as comprehensive and fully as if it had written the name of each permutation.
Properties
Since the modified teaching provides a similar composition comprising similar amounts of similar ingredients, which reflects the breadth of the claimed composition, it would be reasonable to expect that the beverage composition has a sucrose equivalence of at least about 5%, as claimed, absent a showing of criticality, because the teaching of a similar composition imparts a suggestion in or expectation that the composition taught will have the same or a similar utility.
Therefore, it would have been obvious to one of skill in the art, at the time of filing/the invention to modify the method of making beverage compositions, comprising similar amounts of similar ingredients, which reflects the breadth of the claimed composition, as Prakash, to include that the beverage composition has a sucrose equivalence of at least about 5%, as claimed, absent a showing of criticality, because the composition established through the teachings by Prakash provides a sufficiently close relationship between the ingredients to create an expectation that such a similar compositions would have similar capabilities, properties or functionality because the claims are not physically or structurally distinguishable over the prior art compositions. See MPEP 2144. III, which states that when case law imparts legal precedence, wherein the facts in this prior legal decision are sufficiently similar to those in an application, wherein the court applied the law of obviousness to similar facts. This includes a wide spectrum of illustrations and accompanying reasoning (i.e. obviousness) that exist in case law. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Herein, although not cited in the MPEP, more recent caselaw on the topic, “In re Dillon, 919 F.2d 688 (1990)” ( (https://cite.case.law/f2d/919/688/)) provides that when a claimed compositions has been made obvious from combined teachings, it is clear that the discovery that the claimed composition possesses a property not disclosed for the prior art subject matter, and this itself does not defeat a prima facie case. Further, See MPEP 2112, which states: [T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Dependent claims
As for claim 2, Prakash teaches the low-calorie beverages, further comprises rare sugars (0015), which encompasses at least one caloric sweeteners, as claimed.
As for the caloric content, Prakash teaches the beverage has less than about 60 calories per 8 ounce serving (0028), which encompasses about 6 to 60 calories per 8 ounces, as claimed.
As for claim 5, Prakash teaches the low-calorie beverages, comprise: (i) calcium citrate (0304), and (ii) magnesium lactate (0305), as claimed.
As for claim 6, Prakash teaches the low-calorie beverages, comprise rare sugars (0015), wherein the at least one caloric sweetener is sugar, as claimed.
Prakash teaches the low-calorie beverages, comprise and the at least one high potency sweetener (ab.), including: sucralose (0058), as claimed.
As for claim 7, Prakash teaches the low-calorie beverages, comprise rare sugars (0015), wherein the at least one caloric sweetener is sugar, as claimed.
Prakash teaches the low-calorie beverages, comprise and the at least one high potency sweetener (ab.), including: rebaudioside M (0012), as claimed.
As for claim 9, Prakash teaches the low-calorie beverages, comprise rare sugars (0015), and conventional sugars (0039), which encompasses wherein the at least one caloric sweetener is sugar, as claimed.
As for claim 10, Prakash teaches the beverage has less than about 60 calories per 8 ounce serving (0028), which encompasses less than about 5 calories per 8 ounces, as claimed.
As for claim 11, as discussed above, since claim 1 provided the option of on in a group, and the selection of sucralose was selected therefrom for the sake of examination, the claim does make a distinction over the teaching above.
Applicant may claim that the at least one high potency sweetener of claim 1, further comprises potassium acesulfame-K, aspartame or a combination thereof.
In the alternative, Prakash teaches the low-calorie beverages, comprise and the at least one high potency sweetener (ab.), including: acesulfame salts, aspartame, and a combination thereof (see ref. clm. 27), wherein the acesulfame salts including acesulfame K (at least 0012 and throughout), as claimed.
Prakash also teaches the low-calorie beverages, comprise at least one high potency sweetener is selected from acesulfame K, aspartame and a combination thereof (0012).
As for claim 13, Prakash teaches the low-calorie beverages, comprise calcium lactate (0304), as claimed.
As for claim 16, when looking for light in the pending Specification, it is noted that rare sugars include: allulose (D-psicose), L-ribose, D-tagatose, L-glucose, L-fucose, L-arabinose, D-turanose, D-leubiose (D-leucose), and combinations thereof (pending para. 0124).
Prakash provides embodiments, wherein the sweeteners, include: 1) pure crystalline fruit fructose or a non-nutritive sweetener, or combinations thereof, such as sucralose, or sucralose and acesulfame K (0017), wherein none are rare sugars; and
2) crystalline fructose, acesulfame K, saccharine, aspartame, sucralose, fructose polymers, glucose, glucose polymers, invert sugar, fructose syrup, glucose syrup, corn syrup, sucrose, sugar alcohols, maple syrup, honey, fruit syrups (apple, grape, pear), sucralose and/or mixtures thereof (ref. clm. 2), wherein only honey comprises rare sugars; therefore the teaching encompasses wherein the beverage does not comprise rare sugars, as disclosed/claimed.
As for claim 17, Prakash provides said organic acids are used to improve the flavor profile of the carbonated beverage (0079), wherein flavorants are used in a concentration of about 0.1 ppm (about 0.00001 %) to 410,000 ppm (41 %).
Using the molecular weight of lactic acid, 90.08, to approximate the amount of moles therein, this converts to about 0.00015 to about 615 mol, or about 0.15 to 5,000
mM, which encompasses the claimed use of about 0.5 to 2 mM.
Further, absent a showing of criticality it would have been obvious to one of skill
in the art, at the time of filing/the invention to modify the method of making low calorie
carbonated beverages using organic acids as flavorings, as Prakash, to include about
0.5 to 2 mMole thereof, because Prakash imparts amounts that encompass the claimed amount, which shows that it was known for such a thing to have been successfully
achieved and published at the time of filing, and means it was within the general skill of
a worker in the art to select the claimed processing step of crushing when making
coconut products, because it would be obvious to one of skill in the art to do such a
thing on the basis of its suitability for a similar intended use. See MPEP 2144.07 that
discussed that when the prior art recognizes something is suitable for a similar intended
use/purpose, such a thing is obvious. Further see MPEP 2144. 05, which discusses
Obviousness of similar (close) or overlapping: ranges, amounts and proportions.
As for claim 18, Prakash provides the optional us of use of potassium and/or chloride (KCl) as hydration electrolytes (0268), therefore the teaching encompasses the option of the beverage not comprising it, as claimed.
As for claim 19, Prakash provides the optional us of use of magnesium and calcium and chloride, as hydration electrolytes (0268); and further provides the optional use of magnesium chloride (MgCl2) and calcium chloride (CaCl2) for osteoporosis management, therefore encompasses wherein the beverage does not comprise MgCl2 and/or CaCl2, as claimed.
As for claims 20-21, wherein the beverage comprises:
As for zero calories: as discussed above, Prakash teaches the beverage has less than about 60 calories per 8 ounce serving (0028), which encompasses zero-calories, as in claims 20-21.
As for the beverage being a lemon lime-flavored carbonated beverage: As discussed above, Prakash provides the beverages (ab.), comprising: lemon-lime flavoring (0013) and carbonation (ab.), therefore the teaching provides a lemon lime-flavored carbonated beverage, as in claims 20-21.
As for (i) the at least one high potency sweetener: Prakash teaches the beverages, comprise: potassium acesulfame and aspartame (0058) (as in claim 20); and sucralose (0058) and rebaudioside A (0056) (as in claim 21).
As for (ii) the taste modifying composition: Prakash teaches the beverages, comprise: calcium and magnesium salts of organic acid, including: citric acid (i.e. citrate) and lactic acid (i.e. lactate) (0086) which imparts the use of calcium citrate and magnesium lactate, as in claim 20; and calcium citrate and calcium lactate, as in claim 21.
As for claim 22, Prakash provides the use of calcium and magnesium salts of organic acid, including: citric acid (i.e. citrate) and lactic acid (i.e. lactate) (0086), which encompasses: the taste modifying composition comprises calcium citrate and magnesium lactate, as claimed.
As for claim 23, Prakash provides the low-calorie beverages, comprise organic acids (0012-0013), including: calcium and/or magnesium salts of organic acids, including: citric acid and lactic acid (0085-0086), which imparts the use of: wherein (a) and (b) [i.e. (a) magnesium citrate or calcium citrate and (b) magnesium lactate or calcium lactate], as claimed.
Response to Arguments
Status of the Claims
It is asserted, that Claims 1-2, 4, 6, 7, 9-11, 13, and 16-23 are pending. Claims 1 and 5 are amended, and claims 4 and 12 are cancelled herein, without prejudice. New claims 18-23 are presented. Claim 3, 8, 14 and 15 were previously cancelled without prejudice. Support for the amendments to the claims is found throughout the specification, for example, on page 22, line 24; page 60, line 26 to page 61, line 10. No new matter is added. Applicant reserves the right to pursue the subject matter of any cancelled claims in one or more continuation and/or divisional applications.
In response, Applicant’s timely response is appreciated, and said Rejection is not re-issued herein.
Rejections under 35 U.S.C.§103
It is asserted, Applicants respectfully traverse this rejection to the extent it or a similar rejection is applied to the amended claims.
In response, please see the modified rejection above, necessitated by said amendments.
It is asserted, that Applicants have discovered and shown through numerous studies, exemplified in numerous Examples of the pending Specification, that addition of a taste modifying composition results in modulation of the taste attributes of the beverage to substantially and unexpectedly improve the flavor profile of the beverage, even when compared to other salt compounds. Furthermore, these beverages possess improved long- term stability, particularly with respect to the high-potency sweetener. Applicants submit that these experiments demonstrate that the claimed beverages provide advantageous and unexpected sensory and stability properties, wherein the results were not predictable from the cited art.
In response, respectfully, Applicant’s disclosure and the efforts thereof are appreciated, however, the Examples therein are not a proper showing of unexpected results because they do not, at least, show: how said unexpected results are a direct comparison of the claimed composition and the closest prior art, statistical and practical significance of the unexpected result, how the results are due to the claimed features - not to unclaimed features, and how the claimed ranges were established.
Finally, arguments were presented toward the rejection of claims 1 and 16 is rejected under 35 U.S.C. § 103 as unpatentable over U.S. Patent No. 3,413,125 to Schupper et al. (hereinafter, "Schupper") and Prakash.
In response, said rejection has been withdrawn herein, therefore said arguments are moot based on the rejection above.
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.
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Patricia George
Primary Examiner
Art Unit 1793
/PATRICIA A GEORGE/Primary Examiner, Art Unit 1793