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 04/15/2026 and 01/20/2026. Claims filed 04/15/2026 are examined on the merits.
Claims 1 and 3-21 are pending in the application. Claims 1, 4 and 5 are currently amended. Claims 16-21 are newly presented. Rest of claims are previously presented. Claims 1 and 3-21 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 1 and 3-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wolkstein WO 85/01421 A1 (hereinafter referred to Wolkstein) in 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 claims 1 and 3-15, 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, para. 2-3). 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.
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 or is 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 sweetness is more than the sweetness 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, sucralose, stevioside, rebaudioside A, 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, the first compound in the list). 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.
The aspartame-containing composition as disclosed by Wolkstein as modified by Adamski-Werner 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.
N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide, Saccharin, acesulfame, thaumatin, chalcone, cyclamate, stevioside as disclosed by Wolkstein as modified by Adamski-Werner 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 claim 7, Wolkstein as recited above teaches fructose. Wolkstein is silent regarding rebaudioside A or sucralose. However, Adamski-Werner establishes that N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide is able to enhance the sweetness of rebaudioside A or sucralose (0012; 0074; 0076). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have also included rebaudioside or sucralose in the composition of Wolkstein with reasonable expectation of success because N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide is able to enhance the sweetness of rebaudioside A or sucralose.
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.
Regarding claims 16-21, Wolkstein as modified by Adamski-Werner teaches what has been recited above but does not expressly teach the weight ratio of lactase to the sweetness enhancer and the weight of lactase to the sweetener (e.g., low intensity caloric sweetener such as fructose, or the high intensity sweetener such as rebaudioside A or sucralose). The ratios above are a parameter of the amounts of lactase, the sweetener, and the sweetness enhancer. To this end, Wolkstein teaches that lactase is a part of the bulking agents, the function of which is to provide structure and mouthfeel qualities (page 8, second para.), and lactase is able to convert most of the milk lactose into much sweeter monosaccharide (e.g., glucose and galactose) (page 8, 3rd, para. and page 28, 2nd para.); and Adamski-Werner teaches that the sweetness enhancer is able to reduce the concentration of the sweetener required to prepare an ingestible composition having the desired degree of sweetness (0074). Furthermore, the function of a sweetener is also evident. Therefore, one of the ordinary skill in the art would have been motivated to manipulate the amount of lactase, the sweetener and/or the sweetness enhancer so as to ensure that the flavor-modifying composition is able to deliver a desired degree of sweetness to a food (e.g., a frozen dessert) but in the meantime being able to reduce the concentration of the sweetener. As such the ratios as recited in claims 16-21 are merely obvious variants the prior art.
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered and the examiner’s response is shown below:
The 35 USC 112 rejection of claims 4-5 are withdrawn in view of the amendment made to the claims.
The 35 USC 102 rejection is withdrawn in view of the amendment made to claim 1.
Regarding the 35 USC 103 rejection of Wolkstein in view of Adamski-Werner, applicant argues that there is no motivation to combine Wolkstein with Adamski-Werner, since neither of Wolkstein and Adamski-Werner provides no suggestion that N-(1-((4-amino-2,2-dioxo-1H-benzo[c][1,2,6]thiadiazin-5-yl)oxy)- 2-methyl-propan-2-yl)isonicotinamide will enhance the sweetness of aspartame.
The argument is considered but found unpersuasive because applicant appears to have overlooked Adamski-Werner para. 0009-0012; 0070, 0074 and 0076 which, when read collectively, clearly discloses that a compound of formula (I) including the compound of instant claim 1 or 4 is able to enhance the sweetness of a sweetener including aspartame, and the combination of the compound with the sweetener will reduce the concentration of the sweetener required to prepare an ingestible composition having the desired degree of sweetness.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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