DETAILED ACTION
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Prakash et al. (U.S. 2015/0017284 A1) in view of Choi (U.S. 2019/0218488 A1).
Regarding claim 1, Prakash et al. discloses an alcoholic beverage ([0300], [0302], [0315], [0338], [0577]) comprising rebaudioside M in an amount of 0.04-0.5 g/1000 ml (specifically, about 200-500 ppm rebaudioside M, or 0.2-0.5 g/1000 ml) ([0610]) and rebaudioside A ([0305], [0309]), where the ratio between the total amount of rebaudioside M and rebaudioside D to rebaudioside A may be in the range of 99:1 to 89:11 ([0610], 200 ppm rebaudioside M and 10 ppm rebaudioside D; [0309], 0.1-3,000 ppm rebaudioside A), and wherein the beverage exhibits an alcohol content of about 10,000 ppm, or 1.0% v/v ([0338]).
Prakash et al. does not specifically disclose the alcohol content as being in the range of 3.0-40.0 v/v%.
However, Choi discloses an alcoholic beverage comprising allulose to improve the taste of the beverage ([0006]-[0008]) that may comprise a high-strength sweetener, such as rebaudioside A ([0018]), wherein the beverage may comprise an alcohol content of, e.g., 15 vol % to 40 vol% ([0011]).
It would have been obvious to one having ordinary skill in the art to produce an alcoholic beverage according to Prakash et al. having an alcohol content in the range of 15.0 to 40.0% as taught by Choi. First, even though Prakash et al. discloses embodiments of a beverage having an alcohol content only as high as 10,000 ppm, or 1.0% v/v ([0338]), a skilled practitioner would readily recognize that such an amount is substantially lower than conventional alcoholic beverages and would be prompted to consult Choi for additional instruction related to sweetening of alcoholic beverages. Since Choi discloses that an alcoholic beverage comprising about 15-40 vol % alcohol ([0011]) may be sweetened with a high-strength sweetener, such as rebaudioside A ([0018]), a skilled practitioner would find the production of an alcoholic beverage produced according to Prakash et al. comprising 15-40 vol % alcohol that is sweetened with rebaudioside M to be obvious. The claimed limitation requiring the alcohol content to be in the range of 3.0 to 40.0 v/v% would thus be obvious to a skilled practitioner.
As for claim 2, Prakash et al. discloses the beverage of claim 1.
Prakash et al. does not specifically disclose the beverage as having a sweetness intensity of 0.1 to 20 relative to a 1° Brix solution of sucrose having a sweetness intensity of 1.
However, Prakash et al. does disclose the rebaudioside M component may be configured to impart the desired degree of sweetness when added to a beverage ([0310]-[0313]), including via the addition of other types of sweeteners ([0305]-[0306]). Attaining any particular sweetness is thus considered to be within the ordinary skill in the art via the manipulation of sweetener component concentrations, which renders the claimed sweetness intensity of 0.1 to 20 relative to a 1° Brix solution of sucrose having a sweetness intensity of 1 obvious to a skilled practitioner.
As for claim 3, Prakash et al. discloses the beverage as comprising an acidic flavor substance ([0315], [0323]), wherein an acidity is 0.1 to 5.0 w/v% (specifically, about 0.01-1.0% by weight) ([0602]).
As for claim 4, Prakash et al. discloses the beverage of claim 1. Prakash et al. also discloses the beverage as comprising an acidic flavor substance ([0315], [0323]), wherein an acidity is 0.1 to 5.0 w/v% (specifically, about 0.01-1.0% by weight) ([0602]).
Prakash et al. does not specifically disclose the beverage as having a particular sweetness intensity such that the beverage would have a sweetness intensity/acidity in the range of 1:700 relative to a 1° Brix solution of sucrose having a sweetness intensity of 1.
However, Prakash et al. does disclose the rebaudioside M component may be configured to impart the desired degree of sweetness when added to a beverage ([0310]-[0313]), including via the addition of other types of sweeteners ([0305]-[0306]). Attaining any particular sweetness is thus considered to be within the ordinary skill in the art via the manipulation of sweetener component concentrations, which renders the claimed ratio of sweetness intensity to acidity of 1 to 700 relative to a 1° Brix solution of sucrose having a sweetness intensity of 1obvious to a skilled practitioner.
As for claim 5, Prakash et al. discloses the beverage as comprising sodium ([0391], [0394], [0600]) as well as an organic acid salt that may be present at 10-5,000 ppm, or 1-500 mg/100 ml, where the salt may be sodium lactate ([0324], [0590]), which would result in the sodium concentration falling within the range of about 5 to 200 mg/100 ml. Prakash et al. also discloses the beverage as comprising potassium ([0391], [0394], [0600]) as well as an organic acid salt that may be present at 10-5,000 ppm, or 1-500 mg/100 ml, where the salt may be potassium benzoate ([0324], [0590]), which would result in the potassium concentration falling within the range of about 5 to 300 mg/100 ml.
As for claim 6, Prakash et al. discloses the beverage as comprising a low-intensity sweetener ([0586], [0306]).
As for claim 7, Prakash et al. discloses the low-intensity sweetener as comprising sucrose ([0306]).
As for claim 8, Prakash et al. discloses the beverage as comprising not more than 100 Kcal/100 ml ([0310]-[0313]).
As for claim 9, Prakash et al. discloses the beverage as comprising sodium lactate ([0324]).
As for claim 10, Prakash et al. discloses the beverage as comprising potassium citrate ([0613]).
As for claim 11, Prakash et al. discloses the beverage as being flavored with a citrus flavor ([0579]).
As for claim 12, Prakash et al. discloses the beverage as being a sparkling beverage ([0579]).
As for claim 13, Prakash et al. discloses the beverage as comprising a high-intensity sweetener other than rebaudioside D and rebaudioside M ([0585], [0309]).
As for claim 14, Prakash et al. discloses the beverage as being concentrated ([0579]-[0580]). Though Prakash et al. does not specifically disclose the claimed concentration factor, the disclosure of beverage concentrates and beverage syrups ([0580]) would include concentration factors that are greater than 1, which includes the claimed range. A concentration factor of 1.2 to 10 times is thus considered obvious to a skilled practitioner.
Regarding claim 15, Prakash et al. discloses a method comprising adding to an alcoholic beverage ([0300], [0302], [0315], [0338], [0577]) rebaudioside M in an amount of 0.04-0.5 g/1000 ml (specifically, about 200-500 ppm rebaudioside M, or 0.2-0.5 g/1000 ml) ([0610]) and rebaudioside A ([0305], [0309]), where the ratio between the total amount of rebaudioside M and rebaudioside D to rebaudioside A may be in the range of 99:1 to 89:11 ([0610], 200 ppm rebaudioside M and 10 ppm rebaudioside D; [0309], 0.1-3,000 ppm rebaudioside A). Rebaudioside M is described in the reference as providing a sweet taste to a beverage with no sweetener component ([0300], [0302]), which is considered to be the equivalent of the claimed effect of reducing pungency of the alcoholic beverage.
Prakash et al. does not specifically disclose the alcohol content as being in the range of 3.0-40.0 v/v%.
However, Choi discloses an alcoholic beverage comprising allulose to improve the taste of the beverage ([0006]-[0008]) that may comprise a high-strength sweetener, such as rebaudioside A ([0018]), wherein the beverage may comprise an alcohol content of, e.g., 15 vol % to 40 vol% ([0011]).
It would have been obvious to one having ordinary skill in the art to produce an alcoholic beverage according to Prakash et al. having an alcohol content in the range of 15.0 to 40.0% as taught by Choi. First, even though Prakash et al. discloses embodiments of a beverage having an alcohol content only as high as 10,000 ppm, or 1.0% v/v ([0338]), a skilled practitioner would readily recognize that such an amount is substantially lower than conventional alcoholic beverages and would be prompted to consult Choi for additional instruction related to sweetening of alcoholic beverages. Since Choi discloses that an alcoholic beverage comprising about 15-40 vol % alcohol ([0011]) may be sweetened with a high-strength sweetener, such as rebaudioside A ([0018]), a skilled practitioner would find the production of an alcoholic beverage produced according to Prakash et al. comprising 15-40 vol % alcohol that is sweetened with rebaudioside M to be obvious. The claimed limitation requiring the alcohol content to be in the range of 3.0 to 40.0 v/v% would thus be obvious to a skilled practitioner.
As for claim 16, Choi discloses the beverage may comprise an alcohol content of, e.g., 6 vol % to 18 vol% ([0011]), which renders the claimed range of 3.0 to 20.0 v/v% obvious.
As for claim 17, Choi discloses the beverage may comprise an alcohol content of, e.g., 15 vol % to 40 vol% ([0011]), which renders the claimed range of 18.0 to 40.0 v/v% obvious.
Regarding claim 18, Prakash et al. discloses an alcoholic beverage ([0300], [0302], [0315], [0338], [0577]) comprising rebaudioside M in an amount of 0.04-0.5 g/1000 ml (specifically, about 200-500 ppm rebaudioside M, or 0.2-0.5 g/1000 ml) ([0610]) and rebaudioside A ([0305], [0309]), where the ratio between the total amount of rebaudioside M and rebaudioside D to rebaudioside A may be in the range of 99:1 to 89:11 ([0610], 200 ppm rebaudioside M and 10 ppm rebaudioside D; [0309], 0.1-3,000 ppm rebaudioside A), and wherein the beverage exhibits an alcohol content of about 10,000 ppm, or 1.0% v/v ([0338]). Prakash et al. also discloses that no other sweetening components are required in the beverage ([0305], where additional sweeteners are optional), which would include any other sweetening component that would reduce alcohol’s pungency in the alcoholic beverage.
Prakash et al. does not specifically disclose the alcohol content as being in the range of 3.0-20.0 v/v%.
However, Choi discloses an alcoholic beverage comprising allulose to improve the taste of the beverage ([0006]-[0008]) that may comprise a high-strength sweetener, such as rebaudioside A ([0018]), wherein the beverage may comprise an alcohol content of, e.g., 15 vol % to 40 vol% ([0011]).
It would have been obvious to one having ordinary skill in the art to produce an alcoholic beverage according to Prakash et al. having an alcohol content in the range of 15.0 to 40.0% as taught by Choi. First, even though Prakash et al. discloses embodiments of a beverage having an alcohol content only as high as 10,000 ppm, or 1.0% v/v ([0338]), a skilled practitioner would readily recognize that such an amount is substantially lower than conventional alcoholic beverages and would be prompted to consult Choi for additional instruction related to sweetening of alcoholic beverages. Since Choi discloses that an alcoholic beverage comprising about 15-40 vol % alcohol ([0011]) may be sweetened with a high-strength sweetener, such as rebaudioside A ([0018]), a skilled practitioner would find the production of an alcoholic beverage produced according to Prakash et al. comprising 15-40 vol % alcohol that is sweetened with rebaudioside M to be obvious. The claimed limitation requiring the alcohol content to be in the range of 3.0 to 20.0 v/v% would thus be obvious to a skilled practitioner.
As for claim 19, Prakash et al. discloses the ratio between the total amount of rebaudioside M and rebaudioside D to the total amount of low-intensity sweeteners may be in the range of 1:300 to 1:100 ([0610], 200 ppm rebaudioside M and 10 ppm rebaudioside D; [0316], [0585], about 100 to about 140,000 ppm carbohydrate sweeteners).
As for claim 20, Prakash et al. discloses the beverage as not containing allulose ([0306], where allulose, i.e., D-psicose, is an optional ingredient).
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,884,903. Although the claims at issue are not identical, they are not patentably distinct from each other because present independent claims 1, 15, and 18 include embodiments that would fall within the scope of the claims of the ‘903 patent and the inclusion of any amount of an additional steviol glycoside as required by the present claims would be obvious where no effect is required to occur and such steviol glycosides are routinely present in rebaudioside D/M compositions that are not 100% purified (see, e.g., Prakash et al., [0033]-[0035], [0134]). The dependent claims are essentially identical to those in the ‘903 patent.
Conclusion
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793