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 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 2, 4, 7, 11, 32 and 34 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.
Claims 2, 4, 7 and 34 recite “e.g.” followed by examples. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. (MPEP 2173.05(d)) Appropriate correction is required.
Claim 11 recites that the additive has a “shelf-life” “at room temperature”. It is unclear from this recitation or applicant’s specification how “shelf-life” is to be determined. It is unclear what standard must be applied to evaluate “shelf-life”. Does “shelf-life” expire when the product has degraded? How much must the product degrade? The claim states “room temperature”, however, depending on the location of the room, the temperature will vary. As such, it is not clear how to determine whether an additive satisfies the limitations of claim 11. For the purpose of examination, art which reads on claim 1 will be interpreted to read on claim 11. Appropriate correction is required.
Claim 32 recites an edible product that meets “FDA standards for “no sugar added” designation according to 21 CFR 101.60(c)”. Given that FDA standards can change, it is not clear if the edible consumer product must meet the current standard or one that may be implemented in the future. For the purpose of examination, art which reads on claim 31 will be interpreted to read on claim 32. Appropriate correction is required.
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.
Claims 1-15, 31-34 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Rathke USPGPub 20120189739.
Regarding claims 1, 11, 31 and 32, 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 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]
Given these teachings, it is clear Rathke teaches a composition comprising fructose, glucose, sorbitol and sucrose and that the proportions of each of these components can be varied by those of ordinary skill in the art depending on the combination of sweeteners used in a given blend and the desired overall sweetness for a given application. As such, the proportions of individual sweeteners recited in claims 1 and 31 are merely an obvious variant of the prior art. Each of the sweeteners in the embodiment of Rathke comprising fructose, glucose, sorbitol and sucrose has a caloric density of less than 5 Cal/g and therefore in addition to the presence of non-nutritive sweetener, the composition of Rathke necessarily has a caloric density as recited in claim 1. As such, Rathke renders obvious claims 1, 11, 31 and 32.
Regarding claims 2, 9, 10, 12, Rathke teaches a composition comprising water that is a liquid wherein the components are dissolved.[0039]
Regarding claims 3-7, 33 and 34, Rathke teaches the composition may further comprise apple juice which is obtained from the flesh of an apple. [0065]
Regarding claim 8, Rathke teaches powdered soft drinks. [0041] As such, it would have been obvious to one of ordinary skill in the art at the time the application was filed to provide the sweeteners or sweetened beverage compositions in powdered form. Therefore, claim 8 is merely an obvious variant of the prior art.
Regarding claim 13, Rathke teaches the same components as claimed and therefore must satisfy the limitations of claim 13. Additionally, Rathke teaches the compositions of the invention are clear. (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.
Regarding claim 46, as discussed above with regard to claim 1, Rathke teaches a sweetener comprising fructose, glucose, sorbitol and sucrose. The recitation in claim 46 that these components are “apple-derived” is merely a product-by-process limitation that does not impart any materially distinguishing characteristics to the sweeteners recited. Rathke teaches using these sweeteners in combination with non-nutritive sweeteners to achieve specific caloric reductions. [0049] Such low calorie sweeteners contain very little sugar and therefore have a glycemic index as recited in claim 46. Rathke discloses Brix values of greater than 70 and less than 80. (Table 1) As such, Rathke renders obvious claim 46.
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, 31-34 and 46 of copending Application No. 18617463 (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.
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. 19/088753 (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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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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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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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