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 .
This office action is in response to the application filed on July 23, 2024. The earliest effective filing date of the application is February 4, 2022.
Priority
The present application is a 371 National Stage Application of PCT/EP2023/052424 which has a filing date of February 1, 2023.
Election/Restrictions
Applicant’s election of Group II, claims 11 – 13, 15, 18, and 19, in the reply filed on July 23, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1, 3, 5 – 10, 16, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 23, 2026.
Status of Application
The amendment filed July 23, 2026 with the Response to the Restriction Requirement has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 3, 5 – 13, and 15 – 19
Withdrawn claims: 1, 3, 5 – 10, 16, and 17
Cancelled claims: 2, 4, and 14
Amended claims: 1, 5 – 11, and 15
New claims: 16 – 19
Claims currently under examination: 11 – 13, 15, 18, and 19
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 12 and 19 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 12 recites the term “reduced” which is a relative term which renders the claim indefinite. The term “reduced” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no basis provided in the claims or the specification upon which to determine what makes a carbonated beverage “reduced” sugar. For the purpose of examination, any carbonated beverage is considered to be a “reduced sugar beverage”.
Claim 19 recites “C14-C18 and C16-C18 unsaturated monoglycerides” which renders the claim indefinite. The term “C14-C18 and C16-C18” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether “C14-C18 and C16-C18” is referring to the length of the aliphatic chain of the unsaturated monoglyceride, the total number of carbons in the unsaturated monoglyceride, the position of the desaturation and the length of the chain, or something else. For the purpose of examination, any unsaturated monoglyceride is considered to be a C14-C18 and C16-C18 unsaturated monoglyceride.
Claim 19 recites “C14-C18 and C16-C18 unsaturated diglycerides” which renders the claim indefinite. The term “C14-C18 and C16-C18” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether “C14-C18 and C16-C18” is referring to the length of the aliphatic chain of the unsaturated diglyceride, the total number of carbons in the unsaturated diglyceride, the position of the desaturation and the length of the chain, or something else. For the purpose of examination, any unsaturated monoglyceride is considered to be a C14-C18 and C16-C18 unsaturated diglyceride.
Claim 19 recites “at least one of C14-C18 and C16-C18 unsaturated monoglycerides” which renders the claim indefinite. It is unclear whether the “at least one of” language is meant to be interpreted as “at least one of either a C14-C18 or a C16-C18 unsaturated monoglyceride”, or to include at least one of both a C14-C18 unsaturated monoglyceride and a C16-C18 unsaturated monoglyceride. For the purpose of examination, “at least one of C14-C18 and C16-C18 unsaturated monoglycerides” is interpreted broadly to encompass at least one C14-C18 or C16-C18 unsaturated monoglycerides.
Claim 19 recites “at least one C14-C18 and C16-C18 unsaturated diglycerides” which renders the claim indefinite. It is unclear whether the “at least one” language is meant to be interpreted as “at least one of either a C14-C18 or a C16-C18 unsaturated diglyceride”, or to include at least one of both a C14-C18 unsaturated diglyceride and a C16-C18 unsaturated diglyceride. For the purpose of examination, “at least one C14-C18 and C16-C18 unsaturated diglycerides” is interpreted broadly to encompass at least one C14-C18 or C16-C18 unsaturated diglycerides.
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.
Claims 11 – 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. (EP 1504678 A1 – IDS Filed on July 23, 2024) in view of OMRI (Glycerol Monooleate Processing. National Organic Standards Board Technical Advisory Panel Review Compiled by Organic Materials Review Institute for the USDA National Organic Program. (Sept 25, 2001)), as evidenced by Ataman Chemicals (Glycerol Monooleate (GMO). Ataman Chemicals. (n.d.) Retrieved from: https://www.atamanchemicals.com/glycerol-monooleate-gmo_u31415/).
Regarding claim 11, Tomiyama teaches a carbonated beverage comprising an emulsifier (Claims 1 and 4). Tomiyama teaches the emulsifier is a glycerine fatty acid (i.e., a glyceride – [0014] – [0016]; Claim 2). Tomiyama teaches the glycerine fatty acid (i.e., glyceride) is an anti-foaming agent ([0010]). Tomiyama teaches the glycerine fatty acid (i.e., glyceride) is a monoglyceride, a diglyceride, or a combination thereof ([0016] – [0018]). Tomiyama teaches when the emulsifier is used in too small an amount, the foam-eliminating effect is not exhibited, while when in too large of an amount, the foam-eliminating effect is strong but undesirable flavors emerge ([0020]).
While Tomiyama is silent regarding the specific mechanism by which the glycerine fatty acid (i.e., glyceride) in the carbonated beverage achieves an anti-foaming effect, MPEP § 2112.01.I states 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 this case, the carbonated beverage of Tomiyama and the carbonated beverage of the instant invention are produced by substantially identical processes, therefore they inherently have the same properties, including the encapsulation of gas bubbles by glyceride in the carbonated beverage. Furthermore, MPEP § 2112.I states “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”. In this case, the fact that Tomiyama is silent with respect to specific mechanism by which the glycerine fatty acid (i.e., glyceride) in the carbonated beverage achieves an anti-foaming effect does not render novel the previously unappreciated encapsulation of gas bubbles by the glycerine fatty acid (i.e., glyceride) in the carbonated beverage of Tomiyama.
While Tomiyama does not teach the precise amount of glycerine fatty acid (i.e., glyceride) required to achieve sufficient encapsulation of gas bubbles in the carbonated beverage, one of ordinary skill in the art would have adjusted the amount of glycerine fatty acid (i.e., glyceride) during routine optimization to find the carbonated beverage with the desired balance of foam-reduction and flavor. MPEP §2144.05(II) states where 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed amount of glycerine fatty acid (i.e., glyceride) required to achieve sufficient encapsulation of gas bubbles in the carbonated beverage would thus be obvious.
With respect to the limitation “the monoglyceride or diglyceride is an ester of a fatty acid having a straight chain or branch chain, saturated or unsaturated, aliphatic chain having 13 to 28 carbon atoms and glycerol”, Tomiyama does not explicitly state the glycerine fatty acid has a straight chain or branch chain, saturated or unsaturated, aliphatic chain having 13 to 28 carbon atoms and glycerol. Tomiyama does teach an emulsifier (i.e., glycerine fatty acid ester) which has an excellent effect of eliminating the foam caused by aspartame in the carbonated beverage has an HLB value between 1 and 14 (Claim 2; [0013] – [0014]).
OMRI teaches glycerol monooleate is a compound that is considered a monoglyceride (p. 1, paragraph 1). As evidenced by Ataman Chemicals, glycerol monooleate has a straight, unsaturated, aliphatic chain having 18 carbon atoms (p. 2, lines 8 and 43). OMRI teaches glycerol monooleate is used as an antifoam in juice processing and as a lipophilic emulsifier for water-in-oil applications (p. 3, paragraph 1). OMRI teaches the hydrophilic-lipophilic balance (HLB) of glycerol monooleate is 3.8 (p. 2, paragraph 1).
Tomiyama and OMRI are combinable because they are concerned with the same field of endeavor, namely, glyceride surfactants for use in beverages. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected glycerol monooleate (i.e., a glycerine fatty acid with a straight, unsaturated, aliphatic chain having 18 carbon atoms and glycerol) as the glycerine fatty acid (i.e., glyceride) in the carbonated beverage of Tomiyama, as taught by OMRI, because glycerol monooleate is a known antifoaming agent in beverages such as juice, and has an HLB values of 3.8, which Tomiyama recognizes as a suitable HLB value for surfactant glycerides in the carbonated beverage.
Regarding claims 12 and 13, Tomiyama teaches the carbonated beverage comprises aspartame, which is a known sugar replacement (Claim 1). The examples of Tomiyama list recipes for the carbonated beverage, which do not list sugars as ingredients (Examples 1 and 2). Therefore, the carbonated beverage of Tomiyama has zero sugar (i.e., reduced sugar).
Regarding claim 15, Tomiyama teaches the glycerine fatty acid (i.e., glyceride) may be a combination of monoglycerides and diglycerides (i.e., a mixture of at least one monoglyceride and at least one diglyceride – [0016] – [0018]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. (EP 1504678 A1 – IDS Filed on July 23, 2024) in view of OMRI (Glycerol Monooleate Processing. National Organic Standards Board Technical Advisory Panel Review Compiled by Organic Materials Review Institute for the USDA National Organic Program. (Sept 25, 2001)), as evidenced by Ataman Chemicals (Glycerol Monooleate (GMO). Ataman Chemicals. (n.d.) Retrieved from: https://www.atamanchemicals.com/glycerol-monooleate-gmo_u31415/), as applied to claim 11 above, and further in view of Furia (U.S. Patent No. 4,185,122).
Regarding claim 18, Tomiyama is silent with respect to the proportions of mono- and digylcerides in the glycerine fatty acid (i.e., glyceride) of the carbonated beverage.
Furia teaches a mixture of glycerol monooleate (a monoglyceride) and glycerol dioleate (a diglyceride), hereinafter referred to as GMDO, is particularly effective as an antifoam agent in carbonated beverages (Example 4). Furia teaches the combination of glycerol monooleate and glycerol dioleate comprises about 54 – 59% monoglycerides (col. 3, lines 46 – 50). Therefore, the combination also comprises about 41 – 46% diglycerides. Furia teaches GMDO has an HLB value of 2.8 ± 1 (col. 3, lines 50 – 52).
Tomiyama and Furia are combinable because they are concerned with the same field of endeavor, namely, mono- and diglycerides useful as antifoam agents in carbonated beverages. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected GMDO (which comprises glycerol monooleate, a glycerine fatty acid with a straight, unsaturated, aliphatic chain having 18 carbon atoms and glycerol) as the glycerine fatty acid (i.e., glyceride) in the carbonated beverage of Tomiyama, as taught by Furia, because GMDO is a known antifoaming agent in carbonated beverages, and has an HLB values of 2.8 ± 1, which Tomiyama recognizes as a suitable HLB value for surfactant glycerides in the carbonated beverage.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Tomiyama et al. (EP 1504678 A1 – IDS Filed on July 23, 2024) in view of OMRI (Glycerol Monooleate Processing. National Organic Standards Board Technical Advisory Panel Review Compiled by Organic Materials Review Institute for the USDA National Organic Program. (Sept 25, 2001)) and Furia (U.S. Patent No. 4,185,122), as evidenced by Ataman Chemicals (Glycerol Monooleate (GMO). Ataman Chemicals. (n.d.) Retrieved from: https://www.atamanchemicals.com/glycerol-monooleate-gmo_u31415/), as applied to claim 18 above, and further evidenced by Precision FDA (Glyceryl 1,3-Dioleate. Precision FDA. (n.d.). Retrieved from: https://precision.fda.gov/ginas/app/ui/substances/188eb933-17fe-42d1-a4bf-e6bccfa52a1b).
Regarding claim 19, as evidenced by Ataman Chemicals, glycerol monooleate has a straight, unsaturated, aliphatic chain having 18 carbon atoms (p. 2, lines 8 and 43). As evidenced by Precision FDA, glycerol dioleate has straight, unsaturated, aliphatic chains having 18 carbon atoms (p. 1, Image). Therefore, the GMDO of the modified carbonated beverage of Tomiyama is encompassed by claim 19.
Conclusion
No claims are allowed.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
/L.J.M./Examiner, Art Unit 1793
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