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 Response and Amendment after Non-Final Office Action filed 06/07/2023 is acknowledged.
The status of the claims stands as follows:
Pending claims: 5-16
Canceled claims: 1-4
Currently rejected claims: 5-16
Allowed claims: None
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 5-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 4 of U.S. Patent No. 11,202,461. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Regarding claim 5, the ‘461 patent claims an untreated aqueous Stevia extract comprising rebaudioside M (claim 3), wherein the rebaudioside M is extracted from leaves of a cultivar that has been selectively bred to yield a concentration of rebaudioside M that is above its common relative concentration of 1.4% (claim 1).
As for claim 6, the ‘461 patent claims a food comprising the Stevia extract (claim 4), which renders any concentration of the Stevia extract obvious, including the claimed concentration range of about 1-10,000 ppm and any achievable sucrose equivalence.
As for claims 7 and 8, since the extract of the ‘461 patent is obtained from Stevia rebaudiana leaves (claim 1), they are presumed to comprise additional steviol glycosides that occur in the leaves, including rebaudioside A.
As for claim 9, the ‘461 patent claims a foodstuff (claim 4).
As for claim 10, the ‘461 patent claims a foodstuff comprising the extract (claim 4), which is presumed to include an ingredient that may be considered to be an “additive” (i.e., additional food ingredients).
As for claim 11, the ’461 patent claims a foodstuff comprising the extract (claim 4), which renders any concentration of the Stevia extract obvious, including the claimed concentration range of at least about 1% below a threshold flavor recognition concentration.
As for claim 12, the ‘461 patent claims a food comprising the Stevia extract (claim 4), which renders any concentration of the Stevia extract obvious, including the claimed concentration range of about 0.5-1,000 ppm.
As for claims 13 and 14, the addition of conventional flavor ingredients to a foodstuff is extremely well-known in the art, such that claiming the addition of one of the claimed flavor ingredients with no minimum amount required does not render the claimed product non-obvious in view of that disclosed in the ‘461 patent.
As for claim 15, the ‘461 patent claims a foodstuff (claim 4).
As for claim 16, the ‘461 patent claims a foodstuff comprising the extract (claim 4), which is presumed to include an ingredient that may be considered to be an “additive” (i.e., additional food ingredients).
Conclusion
This is a continuation of applicant's earlier Application No. 16/659551. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 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.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793