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
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response and Amendment filed 08/17/2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-14
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: 13
Amended claims: 1
New claims: None
Claims currently under consideration: 1-12 and 14
Currently rejected claims: 1-12 and 14
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites a broader recitation of the rebaudioside B concentration than in parent claim 1 and thus fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (U.S. 2019/0343155 A1) in view of Yoshinaka et al. (U.S. 2010/0267847 A1), Wonschik et al. (U.S. 2016/0183579 A1), and Mimoun et al. (U.S. 6,177,400 B1).
Regarding claim 1, Shi et al. discloses a sweetener composition comprising a steviol glycoside and a flavor component ([0009], [0005], [0698]), wherein the steviol glycosides may comprise rebaudiosides A, B, D, and M in any relative ratios ([0506], [0733]-[0735]), which renders obvious the claimed limitations requiring the combined amounts of rebaudiosides A, B, and D to be from 20-50 wt.%, rebaudioside A alone to be at 10-40 wt.%, and rebaudioside B to be at 40-80%, all with respect to the total steviol glycoside content, and the flavor component comprises furaneol ([0411], [0710]) in an amount of 8.0-25 ppm with respect to the solid content of the sweetener composition ([0717]), hydroxymethylfurfural (specifically, 5-Hydroxymethylfurfural) (p. 337, Table 151.2) in an amount of 60-160 ppm with respect to the solid content of the sweetener composition ([0717]), furfural (p. 337, Table 151.2), and vanillin ([0710], [0715]).
Shi et al. does not disclose the sweetener composition as comprising cyclotene, and damascenone.
However, Yoshinaka et al. discloses cyclotene as being a component useful for modifying the sweet taste of high-intensity sweeteners, where the cyclotene has brown sugar/maple syrup taste attributes ([0011]). Wonschik et al. discloses damascenone as being used in a taste modifier composition ([0137]) for a stevia-based sweetener product ([0007]). Mimoun et al. discloses the odor of damascenone as being “floral-rose” (C4, L64-L66).
It would have been obvious to one having ordinary skill in the art to incorporate vanillin and damascenone into a composition produced according to Shi et al. First, Shi et al. indicates that other additives may be included to enhance flavor characteristics that are floral and maple ([0944]). Since Shi et al. does not explicitly disclose such suitable flavors, a skilled practitioner would be motivated to consult Yoshinaka et al., Wonschik et al., and Mimoun et al. The disclosure in Yoshinaka et al. that cyclotene has a maple taste and is useful in high-intensity sweeteners ([0011]) and the indication in Shi et al. regarding the addition of a maple flavor renders the inclusion of cyclotene in the composition of Shi et al. obvious. The disclosure in Mimoun et al. that damascenone has a floral-rose odor (C4, L64-L66) and the teaching in Wonschik et al. that damascenone is suited for use as a taste modifier in an edible composition ([0137]), combined with the indication in Shi et al. regarding the addition of a floral flavor, renders the inclusion of damascenone in the composition of Shi et al. obvious.
As for claim 2, Shi et al. discloses the flavoring component as comprising furaneol ([0411], [0710]) and as being present in the composition at a concentration within the range of 0.00005-0.035 wt% (i.e., 0.5- 350 ppm) with respect to the solid content of the sweetener composition ([0717]).
As for claim 3, Shi et al. discloses the total steviol glycoside content as being from 5-50 wt% with respect to the solid content of the sweetener composition ([0558]).
As for claim 4, Shi et al. discloses the steviol glycoside concentration may range from 1-100% wt/wt ([0558]) and the furaneol concentration may range from 0.1-15,000 ppm ([0717]). Such ranges encompass a relative ratio of 0.001 to 0.8, or 1 to 800 (e.g., 100 ppm furaneol and 80,000 ppm, or 8% wt/wt, steviol glycoside).
As for claim 5, Shi et al. discloses the sweetener composition as comprising rebaudioside B at a ratio of 1-85 wt% to the total steviol glycoside content ([0733]-[0735]).
As for claim 6, the present specification (as filed) indicates that furaneol is a flavor component that may be derived from a stevia extract ([0072], [0079]). Claim 6 is a product-by- process claim. MPEP 2113 I states: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” A sweetener composition according to claim 1 comprising furaneol (which may be derived from a stevia extract) would render the claimed composition obvious, regardless of whether the furaneol was actually derived from a stevia extract. Such a composition is claimed in claim 2 and was shown to be obvious previously herein. Thus, a sweetener composition that comprised a flavor component that may be derived from a stevia extract (i.e., furaneol) would be obvious to a skilled practitioner.
As for claim 7, the present specification (as filed) indicates that furaneol is a flavor component that may be obtained through the claimed hydrothermal treatment process ([0072]- [0075], [0079]). Claim 7 is a product-by-process claim. MPEP 2113 I states: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” A sweetener composition according to claim 1 comprising furaneol (which may be obtained via the claimed process) would render the claimed composition obvious, regardless of whether the furaneol and rebaudioside components were actually obtained in the claimed manner. Such a composition is claimed in claim 2 and was shown to be obvious previously herein. Thus, a sweetener composition that comprised furaneol as the flavor component would be obvious to a skilled practitioner, regardless of the manner of production.
As for claim 8, Shi et al. discloses total steviol glycosides as consisting of rebaudiosides A, B, C, D, E, F, I, M, N, and stevioside ([0509]).
As for claims 9 and 10, Shi et al. discloses a beverage comprising the sweetener composition ([0965]).
As for claim 11, Shi et al. discloses the flavor component as being a Maillard reaction product ([0452]).
As for claim 12, Shi et al. discloses the flavoring component as comprising furaneol ([0411], [0710]) and as being present in the composition at a concentration within the range of 0.00005-0.035 wt% (i.e., 0.5- 350 ppm) with respect to the solid content of the sweetener composition ([0717]). Shi et al. also discloses the flavoring component as comprising hydroxymethylfurfural (p. 337, Table 151.2) and as being present in the composition at a concentration within the range of 0.01-0.25 wt% (i.e., 100- 2,500 ppm) with respect to the solid content of the sweetener composition ([0717]).
As for claim 14, Shi et al. discloses the steviol glycoside concentration may range from 1-100% wt/wt ([0558]) and the furaneol concentration may range from 0.1-15,000 ppm ([0717]). Such ranges encompass a relative ratio of 0.001 to 0.8, or 1 to 800 (e.g., 100 ppm furaneol and 80,000 ppm, or 8% wt/wt, steviol glycoside). Similarly, Shi et al. discloses the steviol glycoside concentration may range from 1-100% wt/wt ([0558]) and the hydroxymethylfurfural concentration may range from 0.1-15,000 ppm ([0717]). Such ranges encompass a relative ratio of 0.002 to 6.0, or 1 to 3,000 (e.g., 10 ppm hydroxymethylfurfural and 30,000 ppm, or 3% wt/wt, steviol glycoside).
Response to Arguments
Claim Rejections - 35 U.S.C. § 103 of claims 1-14 over Shi et al., Yoshinaka et al., Wonschik et al., and Mimoun et al.: Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first highlighted that claim 1 as presently amended requires more rebaudioside B than rebaudioside A and asserted that rebaudioside B exhibits inferior taste compared to rebaudioside A and that “conventional stevia extracts typically contain rebaudioside B in a lower proportion than rebaudioside A” (Applicant’s Remarks, p. 6, ¶1 - ¶2).
However, the broad disclosure of Shi et al. that the steviol glycosides may comprise rebaudiosides A, B, D, and M in any relative ratios ([0506], [0733]-[0735]) is adequate to deem the claimed limitations obvious. The cited evidentiary references are insufficient to overcome the disclosure of Shi et al. That rebaudioside A may be present at a higher concentration than rebaudioside B in two references does not constitute a comprehensive showing of the state of the prior art.
Applicant then asserted that the claimed embodiments exhibit unexpected results (Applicant’s Remarks, p. 6, ¶3 – p. 7, ¶3).
However, MPEP 716.02(d) states: “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’” The present claims are not commensurate in scope with the data, which is consequently insufficient to overcome the prima facie showing of obviousness. For example, claim 1 only requires 60% of the steviol glycosides to fall within the claimed limitations, while the composition could still comprise 40% of other steviol glycosides, such as rebaudioside C. The composition could also comprise any amount of non-steviol glycoside sweeteners, whether natural or artificial sweeteners, sucrose, or sugar alcohols, or even any other flavor components. The data provides no basis for determining that the asserted effect would materialize across the whole scope of the claimed invention. The data also does not adequately vary the claimed steviol glycosides within the claimed ranges. For example, in Table 1, rebaudioside M is at 8% of the steviol glycosides or less for all examples, but claim 1 is substantially broader in that rebaudioside M may amount to 40% of the steviol glycosides.
The rejections of claims 1-12 and 14 have been maintained herein.
Conclusion
Claims 1-12 and 14 are rejected.
No claims are allowed at this time.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
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