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 without traverse of Claims 1-5 in the reply filed on July 6, 2026 is acknowledged. Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-5 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.
With respect to Claim 1, the recitation of “the sugar alcohols and natural high-intensity sweeteners are contained in a mixing ratio of 10:1 to 100:1” is indefinite due to the combination of limitations of the natural high-intensity sweeteners “are contained in an amount of 0.35 to 0.55 parts by weight” and the sugar alcohols “are contained in an amount of 10 to 30 parts by weight” including ranges wherein the ratio of sugar alcohol to high-intensity sweetener falls outside the ratio recited in lines 7-8. For example, if there are 10 to 30 parts by weight sugar alcohol, and only 0.35 to 0.55 parts by weight natural-high intensity sweetener, there can’t also be a ratio of 10:1 sugar alcohols to natural high-intensity sweeteners as this would require at least 1 part by weight natural high-intensity sweetener.
Further, the basis for the mixing ratio is unclear. Is it w/w, w/v, or something else?
Due to their dependency on claim 1, claims 2-5 are also rejected.
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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Fiorenza et al. (US 2011/0052755 A1).
With respect to Claim 1, Fiorenza et al. teaches a natural sweetener composition comprising natural high intensity sweeteners, [0009] specifically, Steviosides [0016] and luo han guo (LHG), [0017] also known as monk fruit extract, that can be used in food products. [0013] Fiorenza et al. teaches that the composition may in the form of concentrates, specifically in the form of a syrup, [0280] and comprise sugar alcohols, including erythritol, lactitol, maltitol, sorbitol, xylitol and more. [0063] Fiorenza et al. teaches the invention can be used in beverages, [0220] such as gel compositions that can comprise a natural stabilizer such as pectin and xanthan gum [0265] and phytochemical extracts such as green tea extracts. [0278]
Fiorenza et al. teaches that the sugar alcohols can comprise up to 10% of the composition, [0067] the stabilizer can be between 0.001-10%, [0266] and the sweetener composition comprising LHG and steviosides between 0.001%-10%. [0099] These ranges overlap with the ranges of high intensity sweetener, sugar alcohol, and stabilizer amounts recited in claim 1. Additionally, a ratio of sugar alcohols:high-intensity sweeteners wherein the sugar alcohols are between 0.001-10% and the sweetener is between 0.001-10% would overlap with a range of ratios from 10:1 to 100:1. MPEP 2144.05 I states, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists”.
Additionally, Fiorenza et al. does not teach a single composition comprising the gel composition and the syrup, but teaches that a beverage composition can be created from either. [0220] MPEP 2144.06 I states, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose”. It would have been obvious to have used the syrup and gel compositions in tandem to create a compositions comprising ingredients from both for use in a beverage composition.
Fiorenza et al. is silent to an exact ratio of pectin:xanthan gum, but the ratio of 4:1 to 2:1 of pectin:xanthan gum is the result of routine optimization. MPEP 2144.05 II A. states, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In a composition comprising a combination of hydrocolloids, specifically pectin and xanthan, it would have been obvious to one of ordinary skill in the art to have optimized the amount of each to determine the optimal texture of the beverage composition.
Fiorenza et al. is also silent to the antibacterial effect of green tea extract, but does include it as an additional component to the composition. MPEP 2112 II, states, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference”. Therefore, Fiorenza et al. need not have recognized the antibacterial behavior of the green tea extract for that component to possess the properties inherent to it.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Fiorenza et al. in order to devise a natural, sugar-free syrup, comprising sugar alcohols between 10-30% and high intensity sweeteners between 0.35-55%, wherein the ratio of sugar alcohol:natural sweeteners is between 10:1-100:1, natural stabilizer pectin and xanthan gum between 0.3-0.5% total, wherein the ratio of pectin:xanthan is between 4:1-2:1, and a natural antibacterial agent in the form of green tea extract, thereby rendering claim 1 obvious.
With respect to Claims 2-3 and 5, Fiorenza et al. renders obvious the invention recited in claim 1, as described above, and that the composition can comprise erythritol, lactitol, maltitol, sorbitol, and xylitol, [0063] Steviosides [0016] and luo han guo (LHG), [0017] also known as monk fruit extract, and the use of the composition in beverages. [0281] Therefore, Fiorenza et al. renders obvious the claims 2-3 and 5.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fiorenza et al. (US 2011/0052755 A1) in view of Chetana et al. (Rheological behavior of syrups containing sugar substitutes, European Food Research Journal).
With respect to Claim 4, Fiorenza et al. renders obvious the invention recited in claim 1, as described above, but is silent to the viscosity of the composition.
Chetana et al. teaches a study of the rheological properties of syrups comprising sugar substitutes. [Abstract] Chetana et al. determined that sugar syrups with a solids concentration ranging from 35-65% resulted in viscosities ranging from 8.8-129 mPa-s, [Abstract] or 8.8-129 cP.
Fiorenza et al. and Chetana et al. exist within the same field of endeavor, in that they teach sugar compositions. Where Fiorenza et al. teaches a specific composition comprising sugar substitutes, Chetana et al. teaches the physical properties of a variety of syrups. One would have been motivated to use the teaching of Chetana et al. in the endeavor of making a syrup with desirable properties.
The range of viscosities taught in Chetana et al. overlaps with the range recited in claim 4, and MPEP 2144.05 I, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists”. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Fiorenza et al. in view of Chetana et al. in order to devise the invention according to claim 1, wherein the viscosity is between 85-90 cP, thereby rendering claim 4 obvious.
Conclusion
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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