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 .
DETAILED ACTION
Claims 16-30, 35-45 and 47-61 are cancelled.
Claims 1-15, 31-34, 46 are pending in the current application.
Claims 31-34 are withdrawn from consideration (see discussion, below).
Claims 1-15 and 46 are examined in the current application.
Election/Restrictions
Applicant’s election without traverse of claims 1-15 and 46 in the reply filed on April 17th 2026 is acknowledged.
Claims 31-34 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 17th 2026.
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 1-15, 31-34 and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 17, 18, 20, 21 and 23 of copending Application No. 19/088,753. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application encompass the instantly pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15, 31-34 and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 17, 18, 20, 21 and 23 of copending Application No. 19/088,753 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application encompass the instantly pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 11 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 11: The phrases “shelf life” and “room temperature” render the claim indefinite, as it is unclear what the shelf life of the product at room temperature means. Given the fact room temperature varies, and since the shelf-life of the product is not clearly defined in the specification, a skilled artisan would read the phrases with more than one reasonable interpretation, and thus such skilled artisan would not be reasonably apprised of its meaning. Applicant is urged to correct and/or clarify the metes and bounds of the phrase and the claim as recited without introducing new matter.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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 the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Rathke USPGPub 20120189739.
Regarding claims 1, 2. 7-9, 11, 12 and 46: Rathke teaches a composition comprising invert sugar [0039], sucrose [0060], 0.1-7.5 wt% sorbitol [0061] and non-nutritive sweetener [0059]. Rathke teaches that invert sugar is sucrose which has been fully inverted to 50% glucose and 50% fructose. [0021]. Rathke further discloses the product is liquid concentrate (i.e., granulated powder that is dissolved in water) [0039].
Rathke states at [0060] “Any nutritive sweetener is suitable for use; as used herein, a "nutritive" sweetener is one which provides significant caloric content in typical usage amounts, i.e., more than about 1 calorie per serving (8 oz. for beverages). Suitable nutritive sweeteners include, but are not limited to, fructose, sucrose, dextrose, maltose, trehalose, rhamnose, corn syrups and fructo-oligosaccharides. One of ordinary skill in this art will readily appreciate that nutritive sweeteners may be combined in various ratios to form a nutritive sweetener blend suitable for use in the present invention. Precise ratios of nutritive sweeteners depend on the combination of sweeteners used in a given blend and the desired overall sweetness for a given application. Appropriate ratios can be readily determined by one of ordinary skill in this art.
Rathke teaches “The amounts of natural sweetener and invert (full or medium) used in the production of the reduced calorie base syrup product produced by the methods described herein will vary depending upon the target product, and the calorie reduction target of that product. In example, the product can have a 33% caloric reduction, a 35% caloric reduction, a 42.5% caloric reduction, a 50% caloric reduction, and a 75% caloric reduction, and caloric reductions within the range of from about 30% caloric reduction to about 80% caloric reduction, inclusive and without limitation, e.g., a caloric reduction of about 45% or 62%.” [0050]
Therefore, it would have been obvious to a skilled artisan at the time the application was filed to have modified Rathke and to have adjusted the contents of sweeteners in order attain a product with desired caloric density and flavor, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Regarding claims 3-6: Rathke teaches the composition may further comprise apple juice which is obtained from the flesh of an apple. [0065]
Regarding claim 10: Rathke discloses the comositoin is colorless and/or odorless (claim 2, Table 2).
Regarding claims 14 and 15: Rathke teaches additional low glycemic sweeteners such as stevia[0051], aspartame [0074], erythritol [0061], monk fruit [0054] and other natural or artificial sweeteners.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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