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: 1-33
Currently rejected claims: 1-33
Allowed claims: None
Claim Objections
Applicant is advised that should claim 28 be found allowable, claim 29 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). The claimed ranges are equivalent.
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 3, 6, 7, 9, 10, 19, 31, and 33 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.
Claims 3, 6, 7, 9, 10, 19, and 31 recite the limitation “the one or more of compound SG101, compound SG102, compound SG103, or compound SG104”. There is insufficient antecedent basis for this limitation in the claims, since the claims depend from claim 1 instead of claim 2, where such components are initially claimed.
Claim 33 recites the limitation “the amount of two or more”. There is insufficient antecedent basis for this limitation in the claim.
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, claim 33 recites the broad recitation “an amount of one or more of Reb M, Reb D, Reb B, or Reb A”, and the claim also recites a control composition that should recite the same limitation but instead recites “the amount of two or more of RebM, RebD, RebB, or RebA”, which is the narrower statement of the range/limitation. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-24, 32, and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Olsson et al. (U.S. 10,364,450 B2).
Regarding claim 1, Olsson et al. discloses a sweetener composition comprising a sensory modifying amount (C39, L37-L49; C40, L5-L12) of each individual claimed class of compounds (C5, L18-L21): a hexa-glycosylated steviol compound (SG101, C8, L1-L30; Fig. 7B, isomer 1; or SG103, C12, L1-L25; Fig. 7C, isomer 4) and a hepta-glycosylated steviol compound (SG102, C8, L38-L66; Fig. 7B, isomer 2; or SG104, C9, L1-L33; Fig. 7C, isomer 5).
Regarding claims 2 and 20-23, Olsson et al. discloses the sweetener composition of claim 1, including each individual claimed compound (C5, L18-L21): SG101 (C8, L1-L30; Fig. 7B, isomer 1), SG102 (C8, L38-L66; Fig. 7B, isomer 2), SG103 (C12, L1-L25; Fig. 7C, isomer 4), and SG104 (C9, L1-L33; Fig. 7C, isomer 5). Olsson et al. further discloses that a mixture of steviol glycosides may be produced (C39, L52-L58) and that a sweetener composition may comprise Reb A (C40, L52-L53). Olsson et al. also discloses that the steviol glycosides enhance the sweetness of a composition (C39, L37-L39), which would include SG101-SG104, such that the amount of each of SG101-104 would alter at least one sensory characteristic relative to the composition with only Reb A.
As for claim 3, Olsson et al. discloses the compositions comprising one or more of SG101-104 plus Reb M and Reb D (C39, L42-L43, L53-L58).
As for claim 4, Olsson et al. discloses the composition as comprising Reb M (C41, L15-L16) and/or Reb D (C40, L66-L67).
As for claim 5, Olsson et al. discloses the composition as comprising Reb A (C40, L52-L53).
As for claim 6, Olsson et al. discloses the steviol glycosides enhance the sweetness of a composition (C39, L37-L39), which would include SG101-SG104.
As for claim 7, Olsson et al. discloses that the composition may include any of the isolated components (C5, L18-L21), such that isolating SG101 would result in the omission of SG102-104. Such a composition would result in at least one of the compounds SG102-SG104 being in an amount that has a sucrose equivalent of less than 1.5 (i.e., zero).
As for claim 8, Olsson et al. discloses that a mixture of steviol glycosides may be produced (C39, L52-L58) and that a sweetener composition may comprise Reb A in an amount of 90-99 % by weight (C40, L52-L53). A combined steviol glycoside would thus be at a concentration of 1-10% by weight, which anticipates the claimed range of 0.05-5% by weight of a total amount of steviol glycosides in the composition.
As for claim 9, Olsson et al. discloses that a mixture of steviol glycosides may be produced (C39, L52-L58) and that a sweetener composition may comprise Reb A in an amount of 90-99 % by weight (C40, L52-L53). A combined steviol glycoside would thus be at a concentration of 1-10% by weight, which anticipates the claimed range of 0.5-10% by weight of a total amount of steviol glycosides in the composition.
As for claim 10, Olsson et al. discloses that a mixture of steviol glycosides may be produced (C39, L52-L58) and that a sweetener composition may comprise Reb A in an amount of 90-99 % by weight (C40, L52-L53). A combined steviol glycoside would thus be at a concentration of 1-10% by weight, which anticipates the claimed range of 1-10% by weight of a total amount of steviol glycosides in the composition.
As for claim 11, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58), wherein the amount of Reb D or Reb M as a percentage of the total steviol glycosides would be less than 100%. The reference thus effectively discloses a range of Reb D and/or Reb M from 100% to some amount less than 100% as a percentage of total steviol glycosides. The amount of the combined steviol glycoside is thus effectively disclosed as being some amount ranging from 0% to some amount greater than 0%. Olsson et al. thus effectively discloses the Reb D and/or Reb M as being present in an amount greater than any other compound, including SG101-104.
As for claim 12, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58), wherein the amount of Reb D or Reb M as a percentage of the total steviol glycosides would be less than 100%. The reference thus effectively discloses a range of Reb D and/or Reb M from 100% to some amount less than 100% as a percentage of total steviol glycosides. The amount of the combined steviol glycoside is thus effectively disclosed as being some amount ranging from 0% to some amount greater than 0%. Olsson et al. thus effectively discloses the Reb D and/or Reb M as being present in an amount of 10-500 times greater than any other compound, including SG101-104 (e.g., 99% Reb D and 1% any other compound).
As for claim 13, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58), wherein the amount of Reb D or Reb M as a percentage of the total steviol glycosides would be less than 100%. The reference thus effectively discloses a range of Reb D and/or Reb M from 100% to some amount less than 100% as a percentage of total steviol glycosides. The amount of the combined steviol glycoside is thus effectively disclosed as being some amount ranging from 0% to some amount greater than 0%. Olsson et al. thus effectively discloses the Reb D and/or Reb M as being present in an amount of 20-200 times greater than any other compound, including SG101-104 (e.g., 99% Reb D and 1% any other compound).
As for claim 14, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58), wherein the amount of Reb D or Reb M as a percentage of the total steviol glycosides would be less than 100%. The reference thus effectively discloses a range of Reb D and/or Reb M from 100% to some amount less than 100% as a percentage of total steviol glycosides, which anticipates the claimed range of 90% by weight or greater of a total amount of steviol glycosides in the composition.
As for claim 15, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58), wherein the amount of Reb D or Reb M as a percentage of the total steviol glycosides would be less than 100%. The reference thus effectively discloses a range of Reb D and/or Reb M from 100% to some amount less than 100% as a percentage of total steviol glycosides, which anticipates the claimed range of 92.5% by weight or greater of a total amount of steviol glycosides in the composition.
As for claim 16, Olsson et al. discloses that substantially pure steviol glycosides such as Reb D or Reb M may be used as the sweetener composition (C39, L42-L43), which indicates such components would be at 100% by weight of the steviol glycosides in the sweetener composition. Olsson et al. also discloses that a mixture of steviol glycosides may be produced (C39, L52-L58). Olsson et al. thus effectively discloses the composition as having a steviol glycoside concentration of at least 95%.
As for claim 17, Olsson et al. discloses a composition having a total steviol glycoside concentration in the range of 0.05-5 g/L (specifically, about 1-7,000 mg/L, or 0.001-7 g/L) (C38, L50-L54).
As for claim 18, Olsson et al. discloses a composition as having a total steviol glycoside amount in the range of 50-1000 ppm (C41, L1-L4).
As for claim 19, Olsson et al. discloses that the composition may include any of the isolated components (C5, L18-L21), such that isolating SG101 would result in the omission of SG102-104. Such a composition would result in at least one of the compounds SG102-SG104 being in an amount that is equal to zero. Olsson et al. thus effectively discloses a range of such components from zero to some amount above zero, since the components may also be included in combination (C5, L18-L21), which would necessarily include concentrations that are below a sweetening threshold.
As for claim 24, Olsson et al. discloses the composition as being in a beverage (C39, L42-L44).
As for claim 32, Olsson et al. discloses that the composition may include any of the isolated components (C5, L18-L21), such that isolating SG201 would result in the omission of SG202-204. Such a composition would result in at least one of the compounds SG202-SG204 being in an amount that has a sucrose equivalent of less than 1.5 (i.e., zero).
Regarding claim 33, Olsson et al. discloses a method of modifying a sensory characteristic of a composition comprising adding a sensory modifying amount (C39, L37-L49; C40, L5-L12) of one or more of SG101-104 (C5, L18-L21; SG101 (C8, L1-L30; Fig. 7B, isomer 1), SG102 (C8, L38-L66; Fig. 7B, isomer 2), SG103 (C12, L1-L25; Fig. 7C, isomer 4), and SG104 (C9, L1-L33; Fig. 7C, isomer 5)) to enhance the sweetness of a composition that may also comprise Reb M, Reb D, Reb B, and/or Reb A (C40, L52 – C41, L22). Olsson et al. further discloses that a mixture of steviol glycosides may be produced (C39, L52-L58) by addition of Reb A (C40, L52-L53). Olsson et al. also discloses that the steviol glycosides enhance the sweetness of a composition (C39, L37-L39), which would include SG201-SG204, such that the amount of each of SG101-104 would modify at least one sensory characteristic relative to the composition with only two of Reb M, Reb D, Reb B, or Reb A.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 25-31 are rejected under 35 U.S.C. 103 as being unpatentable over Olsson et al. (U.S. 10,364,450 B2).
Regarding claim 25, Olsson et al. discloses an aqueous solution comprising the steviol glycosides at a concentration in the range of about 1-7,000 mg/L, or 0.001-7 g/L (C38, L50-L54), and also discloses the production of beverages comprising the steviol glycosides (C39, L42-L44). Though the reference does not specifically disclose a concentration for a beverage, a skilled practitioner would find the disclosed concentration for the solution to be instructive for formulating a beverage. As such, the claimed concentration range of 0.05-5 g/L would be obvious to a skilled practitioner.
As for claim 26, Olsson et al. discloses an aqueous solution comprising the steviol glycosides at a concentration in the range of about 1-7,000 mg/L, or 0.001-7 g/L (C38, L50-L54), and also discloses the production of beverages comprising the steviol glycosides (C39, L42-L44). Though the reference does not specifically disclose a concentration for a beverage, a skilled practitioner would find the disclosed concentration for the solution to be instructive for formulating a beverage. As such, the claimed concentration range of 0.05-1.0 g/L would be obvious to a skilled practitioner.
As for claim 27, Olsson et al. discloses an aqueous solution comprising the steviol glycosides at a concentration in the range of about 1-7,000 mg/L, or 0.001-7 g/L (C38, L50-L54), and also discloses the production of beverages comprising the steviol glycosides (C39, L42-L44). Olsson et al. also discloses a composition as having a Reb D amount in the range of 400-600 ppm (C41, L1-L4). Though the reference does not specifically disclose a concentration of Reb D for a beverage, a skilled practitioner would find the disclosed concentration for the solution to be instructive for formulating a beverage. As such, the claimed concentration range of 400-600 ppm Reb D in a beverage composition would be obvious to a skilled practitioner.
As for claims 28-30, Olsson et al. discloses an aqueous solution comprising the steviol glycosides at a concentration in the range of about 1-7,000 mg/L, or 0.001-7 g/L (C38, L50-L54), and also discloses the production of beverages comprising the steviol glycosides (C39, L42-L44). Though the reference does not specifically disclose a concentration for a beverage, a skilled practitioner would find the disclosed concentration for the solution to be instructive for formulating a beverage. As such, the claimed concentration ranges of 0.05-1.0 g/L total steviol glycosides (claim 28), 50-1,000 ppm total steviol glycosides (claim 29), and 50-100 ppm total steviol glycosides or 400-1100 ppm total steviol glycosides (claim 30) would be obvious to a skilled practitioner.
As for claim 31, Olsson et al. discloses an aqueous solution comprising the steviol glycosides at a concentration in the range of about 1-7,000 mg/L, or 0.001-7 g/L (C38, L50-L54), and also discloses the production of beverages comprising the steviol glycosides (C39, L37-L44). Though the reference does not specifically disclose a concentration for a beverage, a skilled practitioner would find the disclosed concentration for the solution to be instructive for formulating a beverage. As such, the claimed concentration range of 0.001-0.1 g/L of SG101-SG104 would be obvious to a skilled practitioner.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 and 8-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-13, 19-23 of U.S. Patent No. 10,711,024 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to compositions comprising SG101-104 in various amounts together with the other noted steviol glycosides Reb D and Reb M.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 10,906,927 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to compositions comprising SG101-104, and claims 17-20 of the ‘024 patent require the presence of additional steviol glycosides, which are taught as including Reb D and Reb M (C13, L32-L35), that are required in present claims 1-4.
Claims 1-5, 7-18, and 20-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 and 15 of copending Application No. 17/707,432. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application merely require the presence of one of SG101-104 and Reb D/Reb M in various concentrations in various sweetener compositions and the claims of the ‘432 application also require various comparable sweetener compositions comprising SG101-104 in various concentrations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793