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 .
The amendment filed 12/09/2025 has been entered. Claims 14, 16, 18, 19, and 26 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Rejections - 35 USC § 103
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 14, 16, 18, 19, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Bennet (US 20070275109 A1) in view of Deguchi (US 5858433).
Regarding Claims 14, 16, 18, and 26, Bennett teaches an extract from eggplant, or Solanum melongena [0004]. The extract is made by cooking eggplant in a microwave oven (which is heating) [0006] and spray-drying (which is a form of “hot air-dried”) or freeze drying (which is the same as lyophilizing) of the juice [0016]. The lyophilized powder is reconstituted in water and administered orally [0030].
Bennet but does not discuss further addition of an acid.
Deguchi teaches a food which comprises juice extracted from eggplant (Column 12, Claim 1). Deguchi teaches addition of an acid to the juice (Column 3, Lines 36-37). The juice has a final pH of about 4.1-4.5 (Column 5, Lines 1-8), which touches the claimed range. Deguchi teaches that such a pH inhibits microorganism growth (Column 5, Line 7).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the composition of Bennet to add acid to obtain a pH with the amounts as claimed. One would have been motivated to make such a modification to produce a juice with inhibited microorganism growth.
Note that since the instant Claim teaches that adding acid to a suspension stabilizes the choline ester, the acid of modified Bennett is interpreted to stabilize choline ester as claimed.
Bennet teaches that the composition has health benefits [0003] but does not specifically discuss the composition having a “blood pressure-lowering effect” or “anti-stress” effect.
However, given that the prior art teaches a method of producing a formulation for oral ingestion comprising the same steps of making, selecting, and dispensing from Solanum melongena, as claimed, there is an expectation that the product of the prior art have the property of lowering blood pressure or stress, as claimed. Note that 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Bennett teaches that the powder is “pulverized” [0029] but does not discuss whether the lyophilized powder can pass through a 20 mesh sieve.
However, where Bennett speaks to the properties of the particle related to size, e.g. dissolution in water [0016] or incorporation into emulsions [0021], one of ordinary skill would have been able to have adjusted the particle size to have arrived at the particle size as claimed through no more than routine experimentation. One would have been motivated to make such modifications since particle size is known to affect the speed of dissolution of the particle.
Bennett additionally does not discuss whether the choline ester content in the formulation is 5 micrograms to 50 milligrams.
However, given that the prior art teaches a method of producing a formulation for oral ingestion comprising the same steps of making, selecting, and dispensing from Solanum melongena, as claimed, there is an expectation that the product of the prior art have the property of the choline ester content, as claimed. Note that 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Additionally, note that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145 II. Since Bennett teaches an extract of a Solanum melongena, as claimed, the composition of Bennett is interpreted to have the choline ester content as claimed.
Additionally, note that since Bennett teaches that the extract is administered in amounts that are medicinally effective [0003], it would have been obvious to one of ordinary skill to have provided any amount of extract, including in the amounts claimed, to have a medicinal effect.
Regarding Claim 19, Bennet teaches a method for formulating a composition for oral ingestion as discussed above in regards to Claim 14.
Regarding the limitation that the composition has a “blood pressure-lowering effect and/or an anti-stress effect”, Bennet teaches that the composition has health benefits [0003] but does not specifically discuss the composition having a “blood pressure-lowering effect” or “anti-stress” effect, given that Bennet teaches a method of producing a formulation for oral ingestion comprising the same steps of making, selecting, and dispensing from Solanum melongena, as claimed, there is an expectation that the product of the prior art have the property of lowering blood pressure or stress, as claimed. Note that 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Regarding the limitation that the formulation comprises “choline ester as an active ingredient…sufficient to have the blood pressure-lowering effect and/or the anti-stress effect”, given that Bennet teaches a method of producing a formulation for oral ingestion comprising the same steps of making, selecting, and dispensing from Solanum melongena, as claimed, there is an expectation that the that the product of the prior art have the property of comprising choline esters as an “active ingredient”, as claimed. Note that 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Additionally, note that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145 II. Since Bennett teaches an extract of an eggplant species, as claimed, the composition of Bennett is interpreted to have choline ester content as claimed.
Response to Arguments
Applicant’s arguments filed 12/09/2025 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues that the acid of Deugchi is added to inhibit microorganism growth, and the purpose of acid in the instant Claims is to increase stability of the choline ester. Applicant additionally argues that the organic acid of Deguchi is directly added to a vegetable juice (i.e. crushed vegetables) and not a reconstituted powdered juice, and Deguchi therefore teaches a different product.
This argument is not convincing. First, where Deguchi provides sufficient motivation to add acid to a choline-ester containing composition, one having ordinary skill would have added acid to the composition as claimed. The motivation of the prior art is not required to be the same motivation of the present disclosure. Note that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145 II. Since Deguchi provides motivation to add acid, one having ordinary skill would be motivated to add acid and thus achieve the effect of stabilizing choline ester as claimed.
Second, the effect of inhibiting microorganism growth taught by Deguchi would be effective in both a fresh juice and a juice reconstituted from powder. It would therefore have been obvious to one having ordinary skill to utilize the acid of Deguchi in any vegetable juice, including in either a fresh or reconstituted juice.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/D.L./
Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791