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
Claims 1, 6, 12-13, 15-19, 21, 23, 25 and 28-30 filed 04/19/2024 are pending in the application and are hereby examined on the merits.
Claim Objections
Claim 1 is objected to because of the following informalities: “a product” in line 3 should read “the product”; and “the product without the taste modulator component” in line 4-5 from the end should read “the product without the taste modulator composition”. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: “the product without the taste modulator component” in line 4-5 from the end should read “the product without the taste modulator composition”. Appropriate correction is required.
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 1, 6, 12-13, 15-19, 21, 23, 25 and 28-30 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.
Claim 1 or claim 29 recites the concentrations of the first, the second and third taste modulator component. It is unclear the concentrations as recited are by weight of the taste modulator composition, or by weight of the product. Claims 18-19, 25 and 30 are rejected for the same reason. For the purpose of examination, the concentrations are considered to be by weight of the product. Appropriate correction is required.
Claims 6, 12-13, 15-19, 21, 23, 25, 28 and 30 ultimately depend from claim 1 or claim 29 and therefore necessarily incorporate the indefinite subject matter therein. Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 6, 12-13, 15-19, 21, 23, 25 and 28-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dubois WO 2019/202402 A1 (hereinafter referred to as Dubois).
Regarding claims 1, 6, 12, 15, 18-19 21, 23, 25 and 28-30, Dubois teaches a sweetener composition comprising a sweetening agent (for example, a non-caloric sweetener the example of which is a steviol glycoside such as Reb A, 0131), and a taste modulator composition; wherein the latter could mitigate bitter off-taste associated with the former and improve sweetness (0007; 0136); and wherein the taste modulator composition comprises a first salt having a first cation selected from Na+, K+, Ca2+ and Mg2+ and a first anion (e.g., citrate, phosphate, chloride, carbonate, sulfate, etc.); (optionally), a second salt having a second cation selected from Na+, K+, Ca2+ and Mg2+ and a second anion (e.g., citrate, phosphate, chloride, carbonate, sulfate, etc.); and (optionally), a third salt having a third cation selected from Na+, K+, Ca2+ and Mg2+ and a third anion (e.g., citrate, phosphate, chloride, carbonate, sulfate, etc.) (0049-0051); and specifically, Dubois includes an embodiment teaching the combination of K+, Ca2+ and Mg2+ as the first, second and third cations (0054).
Further, Dubois teaches a food product, a beverage product including fruit juice and lemonade (see para. 0256; 1172; 1222) or a medicament (e.g., pharmaceutical and nutraceutical) comprising the sweetening composition that comprises the sweetener and the taste modulator composition (0011-0012; 0424; 0255), wherein the concentration of Mg2+ is 1-5 mM (0440), the concentration of Ca2+ is 1-5 mM (0445), and the concentration of K+ (or Na+) is 1-10 mM (0431;0435); for example, beverage comprises the sweetener agent and the taste modulator composition, wherein the concentration of Mg2+ is 0.1-5 mM or narrowly 1-5 mM, the concentration of Ca2+ is 0.1 -5 mM or narrowly 1-5 mM, and the concentration of K+ is 0.1- 10 mM or narrowly 1-10 mM (0200; 0213; 0216; 1034; 1062; 1082). Dubious further teaches the step of adding the taste modulator composition to the product (1201; 1222). Further, Dubois teaches a method of increasing the taste and flavor intensity of a food product (e.g., comestible) comprising the step of combining the comestible product with the taste modulator composition (0236).
Alternatively, where Dubois teaches that the aforementioned taste modulator composition is able to mitigate a bitter off-taste associated with a noncaloric sweetener such as Reb A, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have added the taste modulator composition to a food or a medicament comprising the noncaloric sweetener so as to mitigate bitter off-taste associated with the noncaloric sweetener present in the food or the medicament and improve the sweetness. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that the aforementioned taste modulator composition is able to mitigate a bitter off-taste associated with a noncaloric sweetener.
A food product, a beverage product or a medicament that comprises a non-caloric sweetener such as Reb A is known to be associated with a bitter taste (see Dubois para. 0003-0006). Further, a lemonade is known to be associated with a bitter taste, due to the presence of natural bitter compounds in lemon juice.
Dubois as recited above teaches a taste modulator composition comprises a first taste modulator component which is a Mg2+ salt, (optionally) a second taste modulator component which is a Ca2+ salt and (optionally) a third taste modulator component is a K+ salt, thus reads on the claim limitation that the taste modulator composition “consists essentially of” 3 taste modulator components each of which consisting essentially of one salt.
Given that Dubious teaches a product (e.g., food product, beverage and medicament) that contains the same amounts of K+, Ca2+ and Mg2+ as that recited in the claim, it logically follows that the product that comprises the taste modulator composition has a bitterness that is at least 10%, and 50% diminished compared to a baseline product that is devoid of the taste modulator composition, when measured by a sensory panel. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01 II).See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 13, Dubious includes an embodiment teaching the assessment of the effect a taste modulator composition that is formed of 3.4 mM MgCl2, 6.4 mM CaCl2 and 12 mM KCl on a lemonade that comprises lemon juice and Reb A (Example 9.2, e.g., para. [1222-1223]).
Regarding claim 16-17, Dubious teaches a medicament (a pharmaceutical formulation) formulated as a pill (e.g., tablet), or a suspension for enteral application (0258). Enteral application encompasses an oral administration. Further, incorporation of a sweetener such as a steviol glycoside in a pharmaceutical formulation suggests that the formulation is for oral administration. See also para. [0225], which teaches that the taste modulator composition is r orally administered medicinal or nutraceutical products.
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 29-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-21 of U.S. Patent No. 10,602,758. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 17-21 of ‘758 teaches a beverage comprising a sweetener that is associated with bitter taste (e.g., steviol glycoside such as rebaudioside A or monk fruit sweetener), and a taste modulator composition that is essentially the same as the one as in the instant claim, and inherently teaches the process of mixing the taste modulator composition with the beverage.
Claims 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 47-51 of copending Application No. 17/406,939 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 47-51 of ‘939 teaches a beverage comprising a sweetener that is associated with bitter taste (e.g., steviol glycoside such as rebaudioside A or monk fruit sweetener) and a taste modulator composition that is essentially the same as the one as in the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 6, 12, 13, 15-19, 21, 23, 25 and 28-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 11-17, 29, 62 and 65 of copending Application No. 18/285,356 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of ‘356 teaches a method of inhibiting bitterness in a product comprising adding the same taste modulator composition as recited in the instant claim at the same amounts to the product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 42-43 and 46-50 of copending Application No. 18/377,803 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 42-43 and 46-50 of ‘803 teaches a food or nutraceutical comprising a taste modulator composition that is essentially the same as the one as in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 6, 12, 13, 15-19, 21, 23, 25 and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 93-112 of copending Application No. 18/676,083 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of ‘083 teaches a method of inhibiting bitterness in a beverage comprising adding the same taste modulator composition as recited in the instant claim at the same amounts to the beverage.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Pertinent art
-The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
Vasquez (US 2005/0123670), which teaches savory compositions comprising a taste modulator composition that consists essentially of a combination of potassium chloride, calcium chloride and a magnesium salt that is preferably magnesium chloride (0039, 0042, 0050). Regarding the amounts of the taste modulators, Vasquez does teach 1-3% magnesium salt, 2-15% calcium chloride and 5- 15% potassium chloride in the taste modulator composition that is added to the savory composition [0039, 0042].
-Prakash (US2008/0292765), which teaches that inorganic salts including potassium chloride, potassium sulfate, magnesium sulfate, magnesium chloride, calcium sulfate, calcium phosphate, etc. are able to enhance the sweetness of a sweetener such as Reb A, stevia, mogroside IV, et., and also teaches a sweetener composition comprising a sweetener above and 25-5000 ppm sweet taste improving inorganic salt (0833-0834).
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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