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 .
Claim status
The examiner acknowledged the amendment made to the claims on 08/04/2026.
Claims 6, 10-12, 16-17 and 23-34 are pending in the application. Claim 6 is currently amended. Claims 1-5, 7-8, 13-15 and 18-22 remain cancelled. Claim 9 is newly cancelled. Claims 23-34 are newly presented. Claims 6, 10-12, 16-17 and 23-34 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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 6, 10-12, 16-17 and 23-34 are rejected under 35 U.S.C. 103 as being unpatentable over Constantine US Patent Application Publication No. 2009/0162483 A1 (hereinafter referred to as Constantine) in view of Yamamoto WO 2018/181382 A1 (English translation relied upon for reference, hereinafter referred to as Yamamoto).
Regarding claims 6, 12, 26, 27, 28, 32, 33 and 34, Constantine teaches an oral product (e.g., a sport beverage, 0002), the sport beverage comprising, inter alia, 1-10% a protein such as soy protein and pea protein (0027-0028), and 0.01-25% sweetener such as sucralose (0052; 0057; 0061). Constantine teaches that the oral product may include optional additives such as an amino acid (e.g., L-tryptophan, L-lysine, L-leucine, L-methionine, , etc. 0063; 0093). Soy protein or pea protein as disclosed by Constantine reads on the off-flavor substance (page 6, line 26-28 of the instant specification acknowledges that soy protein and pea protein are among those vegetable proteins that cause off-flavor). The optional amino acid reads on the off-flavor substance too.
Constantine is silent regarding adding a composition comprising γ-Glu-Val-Gly and serine to the sport beverage.
Yamamoto teaches a taste improving composition, the taste improving composition comprising a gamma-glutamyl peptide such as γ-Glu-Val-Gly, and an amino acid such as serine, where the weight ratio of serine/ γ-Glu-Val-Gly is 0.005-500, for example, 0.005 or more, 0.01 or more, 0.03 or more, 0.05 or more, 0.1 or more, 0.15 or more, 0.2 or more, 0.3 or more, 0.5 or more, 0.7 or more, 1 or more, 1.5 or more, 2 or more, 3 or more, or 5 or more, or may be 500 or less, 300 or less, 100 or less, 70 or less, 50 or less, 30 or less, 20 or less, 15 or less, 10 or less, 5 or less, 3 or less, 2 or less, 1.5 or less, 1 or less, 0.5 or less, 0.3 or less, or 0.1 or less, or any compatible combination thereof (0011; 0053). Yamamoto teaches that the composition can be added to an oral food such as a sport beverage (e.g., sport drink) that comprises sucralose so as impart sucrose-like taste to the oral food (0001; 0064-0065; 0017). Yamamoto teaches that the concentration of γ-Glu-Val-Gly in the oral food is 0.005-100 ppm (0071), and the concentration of serine in the oral food is 0.1-2000 ppm (0072).
Both Constantine and Yamamoto are directed to sport beverages that comprise sucralose. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Constantine by adding the taste improving composition that comprises γ-Glu-Val-Gly and serine as disclosed by Yamamoto to the sport beverage that comprises sucralose so as to impart sucrose-like taste to the sport beverage. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because Yamamoto has established that incorporating a composition comprising γ-Glu-Val-Gly and serine in a sport beverage comprising sucralose could deliver the benefit of imparting a sucrose-like taste to the sport beverage.
The ratio of serine/ γ-Glu-Val-Gly as disclosed by Yamamoto encompasses or overlaps with the ranges as recited in claims 9 and 12. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
The limitation about suppressing an off-flavor that is an odor derived from a vegetable protein or an amino acid as recited in claim 6, and the limitation about producing an oral product with a suppressed off-flavor that is an odor derived from a vegetable protein or an amino acid as recited in claim 12 recite the purposes of the method claims, and the recited purposes do not result in a manipulative difference between the claims and prior art because the actual step and the composition recited in Constantine in view of Yamamoto and the instant claims are the same (e.g. Constantine in view of Yamamoto teaches adding a composition to an oral product that comprises an off-flavor substance (e.g., soy protein and optionally an amino acid), in which the composition comprises γ-Glu-Val-Gly and serine the ratio of which overlaps with the range as recited in claim 6 or 12) and will necessarily provide the purposes in instant claims.
Regarding claims 10-11, 16-17, 23-24 and 29-30, Yamamoto as recited above teaches that the concentration of γ-Glu-Val-Gly in the oral food is 0.005-100 ppm (0071), and the concentration of serine in the oral food is 0.1-2000 ppm (0072); further, Constantine teaches that the sport drink contains 1-10% soy protein or pea protein. As such, prior art teaches an amount of γ-Glu-Val-Gly or serine by weight of the off-flavor substance (e.g., soy protein) that reasonably overlaps with the ranges as recited in claims 10-11, 16-17, 23 and 29 (calc.: when the sport beverage contains 1% soy protein, 100 ppm γ-Glu-Val-Gly, and 400 ppm serine, the amount of γ-Glu-Val-Gly by weight of the soy protein is 100 ppm / 1% which is about 100 ppm, and the amount of serine by weight of the soy protein is 400 ppm B/ 1% which is about 400 ppm). Note that claims 10 and 16 recite a very broad range in which the upper bound 1% is 50,000 times of the lower bound 0.2 ppm, and claims 11 and 17 recite a very broad range in which the upper bound 15% 5,000 time of the lower bound 30 ppm.
Claims 25 depends from claim 23, and further limits the case when the off-flavor is amino acid in claim 23. Given that Constantine teaches vegetable protein and the amino acid is optional, and that the case when the off-flavor is amino acid is in alternative form with the case when the off-flavor is a vegetable protein, Constanine in view of Yamamoto is considered to meet claim 25. For the same reason, claim 31 is met by Constanine in view of Yamamoto.
Response to Arguments
Applicant's arguments filed 08/04/2026 have been fully considered but they are not persuasive.
Applicant argues on page 9 of the Remarks that Constantine addresses the issue of an off-flavor by using a flavoring in which the off-flavor is a dairy product and sulfur compounds, which is different from the claimed invention.
The argument is considered but found unpersuasive. There is no requirement that prior art has to address the same problem as the invention as claimed to render obvious the claimed invention. Rather, if prior art in its entirety arrives at the steps as recited in the method as claimed, then prior art meets the instant claims. In other words, the recited purpose as recited in the claims does not result in a manipulative difference between the claims and prior art where the actual steps disclosed in prior art and the instant claims are the same.
Applicant asserts on page 9 of the Remarks that numerous examples of sugars are provided in Constantine, and while sucralose is listed, there is no statement specifically recommending it over the others.
Applicant’s assertions have been carefully considered. They are not found persuasive. Applicant is correct to note that Constantine provides a list of sweeteners that can be used in the sport beverage. While the list is not limited to a handful of sweeteners, it remains factual that there are finite choices as the list is not infinite. Moreover, Constatine clearly spells out sucralose as the sweetener to use. Additionally, it should be noted that the asserted laundry list of different sweeteners itself evidences how each of the sweeteners are recognized in the art as functional equivalents to one another.
For the reasons set forth above, applicant’s argument on page 8 of the Remarks that Constantine discloses numerous proteins is not persuasive, either.
Applicant argues on pages 8 and 9 of the Remarks that only trehalose is used in the examples as the sweetener for the sport drink, and only whey protein is used in the examples as the protein source of the sport drink.
The argument is considered but found unpersuasive. Applicant is relying on prior art reference’s exemplary embodiments to narrow prior art’s effective disclosure. In an obviousness inquiry, all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co.v. Biocraft Labs., Inc.,874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,280 (CCPA 1976)).
Applicant argues on page 10 of the Remarks that since Constantine does not present any motivation to seek a sucrose-like taste nor any motivation to improve the taste profile of sucralose, one of skill in the art would have no motivation to combine the teaching of Yamamoto with Constantine. Applicant also asserts that sucralose is not an active ingredient of the instant claims.
The argument is considered but found unpersuasive. By requiring that the motivation to modify a primary reference with a secondary reference be in the primary reference, applicant is not treating the prior art in its entirety. In the instant case, Yamamoto teaches that the combination of γ-Glu-Val-Gly and serine has the benefit of improving the taste of sucralose in a food such as a sport drink, which is sufficient to motivate a skilled artisan to modify the sport drink that contains sucralose as disclosed Constantine with Yamamoto. To this end, applicant’s attention is drawn to MPEP 2144 II, which states that the expectation of some advantage is the strongest rationale for combining references. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
On the other hand, although the instant claims do not list sucralose as an active ingredient, sucralose is not excluded by the instant claims, either.
Applicant argues on page 10 of the Remarks that since Constantine makes no mention of the off-flavor associated with soy protein thus there would have no motivation to consider Yamamoto when trying to reduce the off-flavor of soy protein.
The argument is considered but found unpersuasive. The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. See MPEP 2144 I. In the instant case, the motivation to modify Constantine with Yamamoto is to use the combination of γ-Glu-Val-Gly and serine to improve the taste of sucralose present in the sport drink of Constantine.
Applicant argues on page 10 of the Remarks that while Yamamoto may indeed address beverages containing sucralose, Constantine et al. deals with sports drinks containing saccharides.
The argument is considered but found unpersuasive because it overlooks the embodiment of Constantine which is about a sport drink that comprises sucralose.
Applicant argues on page 10 of the Remarks that combining Constantine with Yamamoto by focusing on sucralose-an ingredient that is not an active ingredient of the present claims constitutes improper hindsight.
The argument is considered but unpersuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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 instant case, applicant has failed to point out which limitation of the instant claim is solely from applicant’s own disclosure.
On the other hand, although the instant claims do not list sucralose as an active ingredient, sucralose is not excluded by the instant claims, either.
Conclusion
Pertinent art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
Fukuda US Patent Application Publication No. 2010/0015288 A1, which teaches a tea beverage that comprises 0.06-0.5% an amino acid, and a sweetener such as sucralose.
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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/CHANGQING LI/Primary Examiner, Art Unit 1791
