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 .
Status of the Application
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 6-20, 24, and 28-30
Canceled claims: 2-5, 21-23, and 25-27
Currently rejected claims: 1, 6-20, 24, and 28-30
Allowed claims: None
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.
Claims 6-15 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 6-15 recite broad recitations requiring a maximum or minimum concentration, and the claims also recite progressively narrower concentration ranges. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1, 6-16, 24, and 28-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shi et al. (U.S. 2020/0022391 A1).
Regarding claim 1, Shi et al. discloses a GMG-MRP composition prepared from a Maillard reaction mixture comprising a glycosylated mogroside (“GMG”) ([0007], [0453]).
As for claims 6-15, Shi et al. discloses the glycosylated mogroside may comprise one, two, three, four, five, or more added glucose units ([0466]), as well as that the compositions may comprise purified/isolated components or mixtures of glycosylated mogrosides ([0471], [1226]). Such disclosure is considered to anticipate the claimed limitations requiring as follows:
Claim 6: a mono-glycosylated mogroside in an amount less than 40% by weight of the total glycosylated mogrosides;
Claim 7: a mono-glycosylated mogroside in an amount greater than 1% by weight of the total glycosylated mogrosides;
Claim 8: a bi-glycosylated mogroside in an amount less than 30% by weight of the total glycosylated mogrosides;
Claim 9: a bi-glycosylated mogroside in an amount greater than 1% by weight of the total glycosylated mogrosides;
Claim 10: a tri-glycosylated mogroside in an amount less than 20% by weight of the total glycosylated mogrosides;
Claim 11: a tri-glycosylated mogroside in an amount greater than 1% by weight of the total glycosylated mogrosides;
Claim 12: a tetra-glycosylated mogroside in an amount less than 15% by weight of the total glycosylated mogrosides;
Claim 13: a tetra-glycosylated mogroside in an amount greater than 1% by weight of the total glycosylated mogrosides;
Claim 14: a mixture of mono-, bi-, tri-, and tetra-glycosylated mogrosides in a total amount of less than 60% by weight of the total glycosylated mogrosides;
Claim 15: a mixture of mono-, bi-, tri-, and tetra-glycosylated mogrosides in a total amount of greater than 10% by weight of the total glycosylated mogrosides.
MPEP 2131.03 states: “In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with ‘sufficient specificity to constitute an anticipation under the statute.’ What constitutes a ‘sufficient specificity’ is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with ‘sufficient specificity’ to constitute an anticipation of the claims.” The disclosure of Shi et al. is considered to be sufficiently specific to anticipate the present claims, because: (i) the claims do not require the exclusion of any other mogrosides, whether glycosylated or Maillard reaction products, (ii) the claims require both amounts below and above concentration values, such that each pair of claims encompasses an entire range of concentrations of from 0-100% for each specifically claimed component(s), (iii) at least the claims with a minimum threshold (“greater than 1%”) are so broad as to effectively not require any specific, narrow range, particularly none that could be deemed critical.
As for claim 16, Shi et al. discloses the GMG-MRP as being prepared from a Maillard reaction mixture comprising a reducing sugar, an amine donor, and a glycosylated mogroside ([1225).
As for claim 24, Shi et al. discloses a consumable product comprising the GMG-MRP composition in a concentration in the range of 1-15,000 ppm ([0782], [0788]).
As for claim 28, Shi et al. discloses a method for modifying the taste profile of a consumable product comprising adding a GMG-MRP at a concentration ranging from 0.0001-90 wt% ([0782], [0788]).
As for claim 29, Shi et al. discloses the consumable product is a beverage ([0782]).
As for claim 30, Shi et al. discloses the GMG-MRPs are added at a concentration of 1-15,000 ppm ([0788]).
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 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (U.S. 2020/0022391 A1).
Regarding claim 17, Shi et al. discloses a Maillard reaction comprising a stevia extract, glutamic acid, and fructose produces a citrus (or tangerine) flavor ([4513], [0354], [1549]).
Although Shi et al. does not disclose the composition having such a flavor as comprising a glycosylated mogroside, the tables of [4513] suggest the amino acid and reducing sugar are responsible for the varied resultant flavors. As such, a skilled practitioner would reasonably expect that substituting the stevia extract with a glycosylated mogroside component would likewise result in a tangerine flavor, which renders the claimed composition obvious.
As for claim 18, Shi et al. discloses a Maillard reaction comprising a stevia extract, alanine, and xylose produces a caramel flavor ([4513]).
Although Shi et al. does not disclose the composition having such a flavor as comprising a glycosylated mogroside, the tables of [4513] suggest the amino acid and reducing sugar are responsible for the varied resultant flavors. As such, a skilled practitioner would reasonably expect that substituting the stevia extract with a glycosylated mogroside component would likewise result in a caramel flavor, which renders the claimed composition obvious.
As for claim 19, Shi et al. discloses a Maillard reaction comprising a stevia extract, proline, and rhamnose produces a popcorn flavor ([4513]).
Although Shi et al. does not disclose the composition having such a flavor as comprising a glycosylated mogroside, the tables of [4513] suggest the amino acid and reducing sugar are responsible for the varied resultant flavors. As such, a skilled practitioner would reasonably expect that substituting the stevia extract with a glycosylated mogroside component would likewise result in a popcorn flavor, which renders the claimed composition obvious.
As for claim 20, Shi et al. discloses a Maillard reaction comprising a stevia extract, phenylalanine, and xylose produces a flora flavor ([4513]).
Although Shi et al. does not disclose the composition as comprising a glycosylated mogroside and having honey flavor, the reference discloses other embodiments where phenylalanine and xylose result in honey aromas/flavors ([4803]-[4807], [6929]), as well as that heating may cause a honey flavor to change to a flora flavor ([6928]), thus suggesting that the amino acid and reducing sugar are at least in part responsible for the honey flavor. As such, a skilled practitioner would reasonably expect that substituting the stevia extract with a glycosylated mogroside component would likewise result in a honey flavor, which renders the claimed composition obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY P MORNHINWEG whose telephone number is (571)270-5272. The examiner can normally be reached 8:30AM-5:00PM.
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, Emily Le can be reached at 571-272-0903. 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.
/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793