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 .
Response to Amendment
The amendment received on 12/19/2023 is acknowledged. Claims 1-28 and 32-35 have been cancelled. Claims 29-31 have been amended. Claims 29-31 are currently pending and have been treated on the merits.
Priority
The instant application has been filed as a DIV of application 16424230 which was filed as a CON of application 15470388, which was filed as a CON of application 14623725, and as a CIP of application 14040986 (which is a CIP of applications 13567707 (divisional of 13029263) and 13656868 (divisional of 13074179 which is a CIP of 13029263))
Application 14623725 was also filed as a CIP of application 14519403 (a continuation of 13984884 which is a 371 of PCT/US2011/035173 which claims priority to 13074179 and 1302029263).
Written support for the full scope of the instantly claimed invention is found in application 14040986. The ranges of temperature and time claimed for steps of the instant application are not present in earlier filed priority documents. Therefore the priority date of claims is the filing date of application 14040986, i.e. 09/30/2013.
Claim Objections
Claims 29-31 are objected to because of the following informalities:
Applicant uses the abbreviation CGTase without having first identified what it is an abbreviation for (cyclodextrin glucanotransferase).
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 30 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 30 recites the limitation “selected form the group consisting but not limited to”, this renders the claim indefinite as the list provided is not a closed list, See MPEP 2111.03. This phrase demonstrates that the list is open ended as it is not limited to the list. It is therefore unclear what else may be present or if any of the components listed are required to anticipate or render obvious the claim. Amendment to “consisting of” would provide clarity.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 29-31 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being disclosed by Markosyan (USPGPub 20120214752/ids submitted).
Regarding claims 29-31 and the limitations “a glucosyl stevia composition made by the process of claim 1 a process comprising the steps of:adding starch into water to form a starch suspension;adding a mixture of a-amylase and CGTase into the starch suspension and incubating for about 0.5 to 2 hours at about 75-80°C, resulting in a liquefied starch suspension;inactivating the a-amylase by low pH heat treatment; adding steviol glycosides into the liquefied starch suspension, resulting in a reaction mixture; and adding a second batch of CGTase into the reaction mixture and incubating for about 1 to 168 hours at about 5-125°C,”
Markosyan teaches a method of producing a glucosyl stevia composition in which starch is hydrolyzed by alpha-amylase and CGTase for 0.5 to 2 hours and 75-80 ºC to form a liquefied starch suspension, followed by inactivation of the alpha-amylase by low pH heat treatments (Claim 1, [0036]-[0043]), these steps anticipate the claimed steps. Makosyan teaches adding steviol gycosides and a second batch of CGTase to form a reaction mixture followed by incubation at 55-75 ºC for 12-48 hours (Claim 1, [0044]-[0046]), these ranges fall within the instantly claimed ranges and thus anticipate the claimed ranges.
Regarding claims 29-31 and the limitations “and an additional sweetening agent selected from the group consisting of: stevia extract, steviol glycosides, stevioside, rebaudioside A, rebaudioside B, rebaudioside C, rebaudioside D, rebaudioside E, rebaudioside F, rebaudioside X, dulcoside A, steviolbioside, rubusoside, other steviol glycosides found in Stevia rebaudiana plant and mixtures thereof, Luo Han Guo extract, mogrosides, high-fructose corn syrup, corn syrup, invert sugar, fructooligosaccharides, inulin, inulooligosaccharides, coupling sugar, maltooligosaccharides, maltodextins, corn syrup solids, glucose, fructose, maltose, sucrose, lactose, aspartame, saccharin, sucralose, sugar alcohols, and a combination thereof”, “and an additional flavoring agent selected from the group consisting but not limited to: lemon, orange, fruity, banana, grape, pear, pineapple, mango, bitter almond, cola, cinnamon, sugar, cotton candy, vanilla, and a combination thereof”, and “an additional food ingredient selected from the group consisting of: acidulants, organic and amino acids, coloring agents, bulking agents, modified starches, gums, texturizers, preservatives, antioxidants, emulsifiers, stabilisers, thickeners, gelling agents, and a combination thereof”, Markosyan teaches that the compositions produced may be mixed with other sweeteners and lists all of the claimed sweeteners (Claim 21), can further comprise the flavors claimed (claim 22) and may be formultated with the food ingredients listed (Claim 23).
The above reference anticipates the claim subject matter.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 e-Terminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8647844. Although the claims at issue are not identical, they are not patentably distinct from each other because USP 8647844 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 1), with the flavors claimed (claim 3), and with the food ingredients claimed (claim 5).
Claims 29-31 are thus rendered obvious by claims 1-8 of USP 8647844.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8669077. Although the claims at issue are not identical, they are not patentably distinct from each other because USP 8669077 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 1), with the flavors claimed (claim 2), and with the food ingredients claimed(claim 3).
Claims 29-31 are thus rendered obvious by claims 1-4 of USP 8669077.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8911971. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘971 claims a product by a method which falls within the scope of the steps claimed and would anticipate the product in embodiments of the claims in the instant application when a mixture of CGTase and alpha-amylase are used. ‘971 further claims the product may be used with the sweeteners claimed (claim 17), with the flavors claimed (claim 18) and with the food ingredients claimed (claim 19).
Claims 29-31 are thus rendered obvious by claims the method and products of 8911971
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9055761. Although the claims at issue are not identical, they are not patentably distinct from each other because the method and products of 9055761 claim a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 18), with the flavors claimed (claim 19), and with the food ingredients claimed(claim 20).
Claims 29-31 are thus rendered obvious by claims 1-23 of USP 9055761.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 8993269. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘269 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 22), with the flavors claimed (claim 23), and with the food ingredients claimed(claim 24).
Claims 29-31 are thus rendered obvious by claims 1-25 of USP 8993269.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9706792. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of USP9706792 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 1), with the flavors claimed (claim 3), and with the food ingredients claimed (claim 5).
Claims 29-31 are thus rendered obvious by claims 1-8 of USP 9706792.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 9603373. Although the claims at issue are not identical, they are not patentably distinct from each other because embodiments of the claimed method ’373 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 26), with the flavors claimed(claim 27), and with the food ingredients claimed(claim 28).
Claims 29-31 are thus rendered obvious by claims 1-30 of USP 9603373.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9615599. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘599 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed(claim 16), with the flavors claimed (claim 17), and with the food ingredients claimed(claim 18).
Claims 29-31 are thus rendered obvious by claims 1-19 of USP 9615599.
Claims 1-28 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9706792. Although the claims at issue are not identical, they are not patentably distinct from each other because USP 9706792 claims a product by a method which falls within the scope of the steps claimed and further claims the product may be used with the sweeteners claimed (claim 1), with the flavors claimed (claim 3), and with the food ingredients claimed(claim 5).
Claims 29-31 are thus rendered obvious by claims 1-8 of USP 9706792.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10117452. Although the claims at issue are not identical, they are not patentably distinct from each other because claims a method which falls within the scope of the steps claimed and will result in products as claimed. The method further claims the product may be used with additional sweeteners (claim 10), flavors (claim 11), and with the food ingredients claimed(claim 12).
Claims 29-31 are thus rendered obvious by claims 1-12 of USP 10117452.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11678685. Although the claims at issue are not identical, they are not patentably distinct from each other because claims a product by a method which falls within the scope of the steps claimed and further claims that the product may be used with additional sweeteners (claim 2), flavors (claim 3) and with the food ingredients claimed (claim 4).
Claims 29-31 are thus rendered obvious by claims 1-5 of USP 11678685.
Conclusion
No claim is allowed.
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/CHARLES Z CONSTANTINE/Examiner, Art Unit 1657