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
Claims 1 and 3-15 are pending in the application and are hereby examined on the merits.
Specification
The Abstract of the disclosure is objected to because there are more than 150 words or more than 15 lines of text in the instant Abstract. The abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length. The Abstract should not exceed 15 lines of text. Abstracts exceeding 15 lines of text or 150 words should be checked to see that they are as concise as the disclosure permits. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should sufficiently describe the disclosure to assist readers in deciding whether there is a need for consulting the full patent text for details. Correction is required. See MPEP § 608.01(b).
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 4-5 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.
Claim 4 recites that the composition comprises N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide. It is unclear whether claim 4 limits the sweetness enhancer of claim 1 (note that page 10, line 9-10 of the instant specification recites that the compound of claim 4 is a sweetness enhancer), or recites an additional sweetness enhancer. For the purpose of examination, the former interpretation is assumed. Appropriate correction is required.
Claim 5 recites “wherein the composition further comprises hesperitin dihydrochalcone, hesperitin dihydrochalcone-4'- O'glucoside, neohesperitin dihydrochalcone, brazzein, hesperidin, phyllodulcin, naringenin, naringin, phloretin, glucosylated steviol glycosides, (2R,3R)-3-acetoxy-5,7,4'-trihydroxy- flavanone, (2R,3R)-3-acetoxy-5,7,3'-trihydroxy-4'-methoxyflavanone, rubusosides, thaumatin, monellin, miraculin, glycyrrhizin, naringin dihydrochalcone, myricetin, nobiletin, polymethoxyflavones, mixed methoxy- and hydroxyflavones, quercetin, amino acids, and any combination thereof”. It is unclear whether claim 5 limits the sweetness enhancer of claim 1 (note that page 10, line 14-21 of the instant specification recites that the compounds as listed in claim 5 are examples of sweetness enhancer), or recites additional compounds. For the purpose of examination, the former interpretation is assumed. Appropriate correction is required.
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 1, 3 and 5-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolkstein WO 85/01421 A1 (hereinafter referred to Wolkstein).
Regarding claims 1, 3 and 5-15, Wolkstein teaches an aspartame-containing composition that comprises a combination of sweetener composition and a bulking agent composition (the para. that bridges page 6 and page 7), wherein the sweetener composition comprises aspartame and another non-caloric or low caloric sweetener known to have synergistic sweetening property with aspartame such as saccharin, acesulfame, thaumatin, chalcone, cyclamate, stevioside and the like (page 7, 2nd para.), and wherein the bulking agent composition comprises, inter alia, sugar alcohol such as mannitol, xylitol, sorbitol, polydextrose, and an enzyme such as lactase (the para. that bridges page 7 and page 8; page 8, 2nd para.). Further, Wolkstein teaches that minor amount of sugars such as corn syrup, fructose, dextrose, or glucose that could contribute to some sweetness and can also be present (the para. that bridges page 7 and page 8). Furthermore, Wolkstein teaches that the aspartame-containing composition as the sweetener can be added to a frozen dietetic dessert formulation, for example, ice cream, frozen yogurt, tofuti, ice milk, sherbet, mellorine, etc. (page 9. Para. 3-4). Ice cream, frozen yogurt, ice milk and sherbet read on the dairy product as recited in claim 15.
The aspartame-containing composition as disclosed by Wolkstein reads on the limitation about flavor-modifying composition as recited in claim 1, since such a composition is able to modify or enhance the sweetness of the frozen dietetic dessert.
Saccharin, acesulfame, thaumatin, chalcone, cyclamate, stevioside as disclosed by Wolkstein reads on the limitation about a sweetness enhancer as recited in claims 1 and 5. Note that page 10, line 14 and 18 of the instant specification recites that thaumatin is a sweetness enhancer.
Aspartame, corn syrup, fructose, dextrose, or glucose as disclosed by Wolkstein reads on the sweetener limitation as recited in claims 6-7.
The frozen dietetic dessert including, ice cream, frozen yogurt, tofuti, ice milk, sherbet and mellorine reads on the comestible composition or flavored product as recited in claims 8-15.
Further regarding claim 3, since Wolkstein makes no mention of 3-(4-amino-1H- benzo[c][1, 2, 6]thiadiazin-5-yloxy -2, 2-dimethyl-N-propylpropanamide-2, 2-dioxide, claim 3 is considered met by Wolkstein.
Further regarding claims 9 and 12, Wolkstein discloses that the frozen dietetic desserts contains lactose (page 8, para. 3; page 28, 2nd para.).
Further regarding claims 10 and 13, Wolkstein discloses that dietetic desserts contains milk solids (page 9, para. 4), which is known to contain a dairy protein.
Further regarding claim 11, Wolkstein teaches tofuti (page 9 first para.), which contains non-animal protein.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wolkstein as applied to claim 1 above, and further in view of Adamski-Werner US Patent Application Publication No. 2014/0235624 A1 (cited in the IDS submitted 02/28/2024, hereinafter referred to as Adamski-Werner).
Regarding claim 4, Wolkstein as recited above teaches that a sweetener composition comprises aspartame and another sweetener known to have synergistic sweetening property with aspartame such as saccharin, acesulfame, thaumatin, chalcone, cyclamate, stevioside and the like. Further, Wolkstein teaches that since the synergistic mixtures are sweeter than aspartame alone, lesser amounts are needed than of aspartame alone in the frozen dietetic desserts (page 7, 2nd para.). Wolkstein is silent regarding that the sweetener composition comprises N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide.
Adamski-Werner teaches that a compound having the structural Formula (I) is useful as a sweet flavor modifier, or more specifically as a sweetness enhancer, for example, Adamski-Werner teaches a sweet enhancing composition comprising a compound Formula (I) to provide sweetening in combination with a sweetener, wherein the sweetening is more than the sweetening provided by the sweetener alone (0009-0012; 0074). Adamski-Werner teaches that a suitable sweetener that can be used with the compound of Formula (I) is corn syrup, fructose, glucose, sorbitol, mannitol, xylitol, saccharin, aspartame, etc. (0074-0076). Specifically, Adamski-Werner lists N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide as the compound of Formula (I) (0070). Adamski-Werner teaches that the compound can be used in an ingestible composition such as a dairy product (claim 19).
Both Wolkstein and Adamski-Werner are directed to sweetness enhancing compositions (or a compound that has synergistic sweetness property to a sweetener such as aspartame). 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 Wolkstein by substituting N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide for the sweetener that has synergistic sweetening property to aspartame as disclosed by Wolkstein with reasonable expectation of success, for the reason that prior art has established that N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide and saccharin, acesulfame, thaumatin, chalcone, cyclamate or stevioside are functional equivalents in enhancing the sweetness of aspartame thus one of ordinary skill in the art would have been motivated to substitute one for another (See MPEP 2144.06 II).
Alternatively, 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 Wolkstein by including N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide in the sweetener composition that comprises aspartame and another sweetener that has synergistic sweetening property with aspartame with reasonable expectation of success, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06 I). In the instant case, prior art has established that N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide and saccharin, acesulfame, thaumatin, chalcone, cyclamate or stevioside are functional equivalents in enhancing the sweetness of aspartame thus one of ordinary skill in the art would have been motivated to combine them to form a new sweetness enhancing composition.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791