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 .
Application Status
Claim 1 and 3-15 are under examination.
Claim 2 is cancelled.
Claim 1 and 3-15 are rejected.
Response to Arguments
Applicant’s arguments, filed 11/06/2025 with respect to the rejection(s) of claim(s) 1 and 3-15 under 35 U.S.C. 103 as being unpatentable over RHA CHAN SU et al. (KR 20080011545 A, Machine Translation, Ref. U) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kaper et al. (GB 2095968).
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.
Claim(s) 1 and 3-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kaper et al. (GB 2095968) as evidenced by Merriam-Webster (Ref. U).
Regarding claim 1, 4, 5, 8, 13, 14 and 15, Kaper et al. (Kaper) discloses an agglomerated product (‘958, 2, col. 1, ln. 37-45) (composition) comprising flavour composition (mixture) with sugar (binding agent/sweetener) (‘958, 2, col. 1, ln. 11-14) with tea dust, siftings (finely ground tea) (‘958, 2, col. 1, ln. 24-30), wherein the tea dust, siftings (finely ground tea) have a particle size of 0.1 to 0.5 mm, which overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Kaper discloses the flavour composition comprising solid tea components (‘958, 1, col. 2, ln. 113-114), which meets the limitation of tea solid in the agglomerated product (‘958, 2, col. 1, ln. 37-45) (composition).
With respect to the recitation of “…where the finely ground tea does not dissolve when the tea solid composition is placed in a cup of water…” in claim 1; “...the finely ground tea is unconstrained after the tea solid composition is mixed with water in a cup...” in claim 13; and “...the water in the cup is heated...” in claim 14; considered a functional limitations of the claimed product when it’s is placed in a cup of water; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). With respect to claim 5, Kaper disclose the flavour composition (mixture) with ingredient includes lemon, orange and rum flavour (flavor extract) (‘968, 1, col. 2, ln. 129-130).
Regarding claim 3, Kaper discloses the tea dust, siftings (finely ground tea) is dried, fermented tea (post-fermented) (2, col. 1, ln. 26-28).
Regarding claim 6, 9 and 10, Kaper discloses the agglomerated product (‘958, 2, col. 1, ln. 37-45) (composition) comprising flavour composition (mixture) packed in teabag (‘958, 2, col. 2, ln. 68-69), wherein the teabag is considered to provide shape within the cavity of the teabag, hence the agglomerated product in a mold as evidenced by Merriam-Webster (Ref. U, bullet point 1, a). With respect to claim 9 and 10, Kaper does not discloses a dimension of the teabag (mold) however, it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the teabag (mold) with dimensions as cited, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent a persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357, F.2d 669, 149 USPQ 47 (CCPA 1996).
Regarding claim 7, Kaper’s tea dust, siftings (finely ground tea) (‘958, 2, col. 1, ln. 24-30) is not extracted tea.
Regarding claim 11 and 12, the claims recite method steps of heating and cooling, whereas the claims are a product claim. The limitation is not farther limiting the ingredients in the product claim. MPEP 2113 I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/ Primary Examiner, Art Unit 1792
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