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 .
Election/Restrictions
Applicant's election with traverse of Group I ( claims 16-21 and 25-31) in the reply filed on 5/18/2026 is acknowledged. The traversal is on the ground(s) that "Krammer contains an internal discrepancy between Formula (I) and Formula (II)" (see page 2 of applicant's response) and that "even if Formula (I) of Krammer were considered, the presently claimed compounds are not individually discloser in Krammer" and that "To arrive at the
presently claimed compounds, one must select a specific value of m and a specific value of n from these broad possibilities". This argument is not found persuasive. Refer to table on page 3 of Krammer, which shows various possibilities, where Compound 3 of table is substantially the same as "Compound 5" recited in claim 16 and Compound 4 of table is substantially the same as "Compound 6" recited in claim 18.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112, Second Paragraph
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.
Claim 21 is 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 21 recites "Compound 5 and Compound 6 are in a weight ratio of 10: 1 to
1 :5". However, claim 21 depends from claim 19 which requires "40 to 90 wt. % of
Compound 5" and also "10 to 60 wt. % of Compound 6" based on a total weight
of the mixture. Within the constraints of claim 19, the highest possible weight
ratio is 90/10; i.e. 9, while claim 21 requires one end of the range to be at 10:1,
which is 10 (i.e. higher than 9 calculated above), and hence outside the range
determined by claim 21. For the purposes of this office action, the ranges recited in claim 21 will not be considered.
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)(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.
Claims 16-18 and 25-27 and 30-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krammer (US 20170190727), hereinafter Krammer.
Regarding claim 16, Krammer (US 20170190727) teaches compound according
to the formula shown for Compound 5 in claim 16 (refer to formula II shown on
page 3 and para 28; also see table on page 3 of Krammer, which shows
various compounds for formula II with various R1 and R2 combinations,
where Compound 3 of table is substantially the same as "Compound 5"
recited in claim 16).
Regarding claim 17, Krammer teaches a mixture (para 30 describes
"substance mixture") comprising the compound of claim 16.
Regarding claim 18, Krammer teaches the compound according to the formula
shown for Compound 6 in claim 18 (refer to formula II shown on page 3 and
para 28; also see table on page 3 of Krammer, which shows various
compounds for formula II with various R1 and R2 combinations, where Compound 4 of table is substantially the same as "Compound 6" recited in
claim 18).
Regarding claim 25, Krammer teaches the compound of claim 16 comprising glucosylated Rubusosides (see para 19; also see para 60 describes "alpha-glycosyl rubusosides" and "1,4-alpha-transglucosylationof rubusosides”; also see para 61-64). Note that claim 25 is a product claims but it recites process steps by which the compound is obtained; i.e. "obtainable by (i) mixing Rubusoside and a glucosyl donor to obtain a mixture; (ii) dissolving the mixture of (i) in a solvent; (iii) adding a glucanotransferase and reacting the dissolved mixture with the glucanotransferase to obtain glucosylated Rubusosides; (iv) inactivating the glucanotransferase with heat; (v) concentrating the glucosylated Rubusosides; and (vi) optionally, separating the concentrated glucosylated Rubusosides and obtaining the compound". Therefore, the claim amounts to a product by process claim. "Even 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985). See MPEP 2113.
Regarding claim 26, Krammer teaches a mixture comprising the compound of
claim 25 (para 30 discloses various "mixture" compositions of the compound of claim 25 - see rejection of claim 25 - are contemplated).
Regarding claim 27, Krammer teaches mixtures (para 30 discloses various
"mixture" compositions). Note that claim 27 is a product claims but it recites
process steps by which the mixture is obtained; i.e. "obtainable by the method of
claim 22". Therefore, the claim amounts to a product by process claim. "Even
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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.
Cir. 1985). See MPEP 2113.
Regarding claim 30, Krammer teaches a method for imparting, modifying, or
enhancing a sweet taste impression of a substance or product comprising adding
the compound of claim 16 to the substance or product and imparting, modifying,
or enhancing a sweet taste impression of the substance or product (para 172 and 173, which describe “advantageous” for “improving, enhancing or conveying a sweet taste and/or for masking an unpleasant taste impression”).
Regarding claim 31, Krammer teaches a method for imparting, modifying, or
enhancing a sweet taste impression of a substance or product comprising adding
the mixture of claim 18 to the substance or product and imparting, modifying, or
enhancing a sweet taste impression of the substance or product (para 172 and 173, which describe “advantageous” for “improving, enhancing or conveying a sweet taste and/or for masking an unpleasant taste impression”).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries 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 19-21 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Krammer.
Regarding claim 19, Krammer teaches the mixture of claim 18 comprising ratio of any two compounds in the ratio 1:99 to 99:1 (para 51 and 53), which overlaps with the claimed range of “(a) 40 to 90 wt. % of Compound 5; and (b) 10 to 60 wt. % of Compound 6; based on a total weight of the mixture”. Regarding the overlapping of ranges between the invention and prior art composition it is noted that in the case where the claimed ranges "overlap or lie inside the ranges disclosed by the prior art" a prima facie case of obviousness exists (In re Wetheim, 541 F2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)).
Regarding claim 20, Krammer teaches the mixture of claim 18, wherein comprising ratio of any two compounds in the ratio 1:99 to 99:1 (para 51 and 53; also see para 65), which overlaps with the claimed range of “Compound 5 and Compound 6 are in a weight ratio of 10: 1 to 1:5”. As such, the note above regarding overlapping of ranges between the invention and prior art composition also applies here.
Regarding claim 21, Krammer teaches the mixture of claim 19, wherein comprising ratio of any two compounds in the ratio 1:99 to 99:1 (para 51 and 53), which overlaps with the claimed range of “Compound 5 and Compound 6 are in a weight ratio of 10: 1 to 1:5”. As such, the note above regarding overlapping of ranges between the invention and prior art composition also applies here.
Regarding claim 28, Krammer teaches the composition comprising any one of the mixture ingredients from 0.00001% to 2% by weight (para 65), which overlaps with the recited range of “at least 0.05 wt. % of the compound of claim 16”. As such, the note above regarding overlapping of ranges between the invention and prior art composition also applies here.
Regarding claim 29, Krammer teaches the composition comprising any one of the mixture ingredients from 0.00001% to 2% by weight (para 65), which overlaps with the recited range of “the mixture of claim 18, wherein Compound 5 and Compound 6 are in a combined amount of at least 0.05 wt. %, based on a total weight of the composition”. As such, the note above regarding overlapping of ranges between the invention and prior art composition also applies here.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
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