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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/13/20205 has been entered.
Applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). While applicant, as a matter of right, may not shift from claiming one invention to claiming another, the examiner is not precluded from permitting a shift.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 26 and 28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more. The claims recite a plant seed coated with protocatechuic acid. This judicial exception is not integrated into a practical application because there is no difference in substance from the coated plant seed to an almond or a grape. The claims are directed to a seed per se (a nature-based product) and must be analyzed for markedly different characteristics, to determine whether the claimed seed is a “product of nature” exception. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because although the claim recites “at least 98% pure protocatechuic acid crystals” as a component of the coating, there is no indication that the claimed seed has any characteristics (structural, functional, or otherwise) different from the naturally occurring almond or grape which contains a protocatechuic acid. This judicial exception is not integrated into a practical application because the claims are not in a formulation that differs from the naturally occurring counterpart. Thus, the claimed seed does not have markedly different characteristics from what occurs in nature, and is a “product of nature” exception. It is noted that the claim, as drafted, does not limit the coating to one in which protocatechuic acid is the only component. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps [See MPEP 2111.03]. Thus, a natural product (e.g. an almond)
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which is a seed with a natural coating (e.g. skin) [see Urpi-Sarda Journal of agricultural and food chemistry, 2009 showing protocatechuic acid compounds in almond skin, pg. 10136, table 1] may contain elements unrecited in the claims. The claimed recitation of protocatechuic acid as “crystals” is not markedly different than the identical chemical component already present in almond skin (e.g. coating). Almond skin is considered an agricultural byproduct.
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 28 and 29 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 28 recites “gooseberry” and the claim also recites “Ribesuva crispa L [sic]” which is commonly known as gooseberry. The claim recites “grape” and also recites “Vitis vinifera” which is the scientific name for the common grape. The recitation of both common name and the biological taxonomy in the same claim is indefinite because the specification does not clearly define these terms as distinct.
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 1, 6 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sang et al. Journal of agricultural and food chemistry, 2002) with evidence from (Pasqualone et al. Foods, 2020), regarding claims 6 and 26.
In regard to claim 1, Sang et al. teach a natural almond (e.g. plant seed) retaining its brown skin [pg. 2459, last para.], wherein the almond coating (e.g. skin) comprises protocatechuic acid on the surface of the almond seed (e.g. phenolic compound protocatechuic acid is identified as present in almond skin). The claimed limitation wherein the protocatechuic acid is “98% pure” and in the form of “crystals” does not form a patentable distinction over the Sang prior art when the claim language does not limit the coating to one without unrecited elements. Where the claimed and prior art products are identical or substantially identical in structure or composition […] 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). Furthermore, “Products of identical chemical composition can not have mutually exclusive properties.” [MPEP 2112.01]
In regard to claims 6 and 26, Sang et al. teach the coated plant seed of claim 1 wherein the seed coating composition (e.g. almond skin) inherently comprises protein, with nitrogen being an essential component of proteins [see Pasqualone, pg. 5, table 3 showing protein values of almond skin].
Claims 1 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gomes et al. (Journal of Functional Foods, 2019).
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In regard to claims 1 and 28, Gomes et al. teach a harvested grape [pg. 700, col. 1, section 2.2] retaining its seed, pulp and peel [pg. 700, col. 2, section 2.2], wherein the pulp and peel are a coating surrounding the plant seed (e.g. coated plant seed). The seed coating (e.g. pulp and peel) comprise protocatechuic acid [pg. 702, table 2].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Smith whose telephone number is (571)270-3599. The examiner can normally be reached Monday - Friday 9:30am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 March 5, 2026