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 8/27/2025 has been entered. Claims 1, 3, and 6 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 Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Lehmberg (US 5925389) in view of acs.org (Molecule of the Week Archive Gallic Acid, https://www.acs.org/molecule-of-the-week/archive/g/gallic-acid.html, July 2007), Anwar (“Rhus coriaria L. (sumac) Evokes Endothelium-Dependent Vasorelaxation of Rat Aorta: Involvement of the cAMP and cGMP Pathways”, doi: 10.3389/fphar.2018.00688, June 2018), Sensient Flavors & Extracts (https://sensientflavorsandextracts.com/extracts, reference is made to the provided archival version) and Erickson (The Book & Paper Group Annual, Volume 11, 1992, https://cool.culturalheritage.org/coolaic/sg/bpg/annual/v11/bp11-04.html)
Regarding Claim 1, Lehmberg teaches a method for extracting gallic acid from plant material (Column 2, Lines 58-61). The method comprises providing tea and tannase enzyme (Column 1, Lines 10-11). The tea is extracted at 70-145 °F (21-63 °C) with an aqueous solution comprising tannase enzyme (Column 2, Line 54 and Column 3, Line 10). The tea is separated from the product mixture (Column 3, Lines 23-24) and concentrated (Column 3, Lines 28-29).
Regarding a), Lehmberg teaches extraction of gallic acid but does not teach the fruits of sumac plants as the source of gallic acid.
Acs.org teaches that both sumac and tea leaves are known as sources of gallic acid, but does not specifically teach the fruits of sumac.
Anwar teaches that the fruits of the sumac plant are known for their gallic acid content (Page 2, Column 1, Paragraph 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize modify the method of Lehmberg to substitute sumac, as taught by acs.org, and further the fruits of sumac, as taught by Anwar, for tea leaves to create an extract of gallic acid. One would have been motivated to make such a modification since acs.org specifically teaches that sumac and tea are both known for their gallic acid content, and Anwar additionally teaches that the fruits of sumac contain gallic acid.
Regarding b), Lehmberg teaches the use of tannase enzyme for extraction (Column 1, Line 11).
Regarding c), h), and j), Lehmberg teaches that the enzymes are deactivated (Column 3, Line 18) but does not teach the use of ethanol to deactivate enzymes or the removal of the ethanol after filtration.
Erickson teaches that the both heat and solvents such as ethanol may be used to deactivate enzymes (Page 4, “Deactivation of Enzymes”). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize ethanol to deactivate enzymes. One would have been motivated to make such a modification since Erickson teaches that both heat and ethanol are methods for enzyme deactivation. Additionally, it would have been obvious to remove the ethanol after utilizing it for enzyme deactivation. One would have been motivated to make such a modification to provide a final product without ethanol.
Lehmberg in view of Erickson does not provide a concentration for the ethanol. However, solvent concentration is known to affect the degree of enzyme deactivation. It would have been obvious for one of ordinary skill to discover the optimum workable ranges of the method disclosed by the prior art by normal optimization procedures known in the art.
Note that d) is provided as optional.
Regarding e), Lehmberg teaches that the tea is extracted at 70-145 °F (21-63 °C) with an aqueous solution comprising tannase enzyme (Column 2, Line 54 and Column 3, Line 10 and 34).
Lehmberg teaches that the tea is in contact with the enzyme solution for 20 minutes – 5 hours in an extractor (Column 5, Lines 39-40) but does not specifically teach that the extractor be configured as a percolator.
Sensient Flavors and Extracts teaches that percolation is an extraction process applied to plant materials (Pages 1 and 6). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize percolation as the extraction method of Lehmberg. One would have been motivated to make such a modification since Sensient Flavors and Extracts teaches that percolation is a known method for plant extracts.
Regarding f) and g) Lehmberg teaches that the plant material is separated from the product mixture (Column 3, Lines 23-24) and concentrated (Column 3, Lines 28-29).
Regarding h), Lehmberg teaches that the enzymes are deactivated via heat (Column 3, Line 18) but does not teach the temperature range as claimed, additional use of ethanol to deactivate enzymes, or the removal of the ethanol.
Lehmberg teaches heat deactivation at 190 °F, which is 82 °C (Column 5, Line 60). Note that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05 II A.
Erickson teaches that the both heat and solvents such as ethanol may be used to deactivate enzymes (Page 4, “Deactivation of Enzymes”). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize ethanol to deactivate enzymes. One would have been motivated to make such a modification since Erickson teaches that both heat and ethanol are methods for enzyme deactivation. Additionally, it would have been obvious to remove the ethanol after utilizing it for enzyme deactivation. One would have been motivated to make such a modification to provide a final product without ethanol.
Lehmberg in view of Erickson additionally does not provide a concentration for the ethanol. However, solvent concentration is known to affect the degree of enzyme deactivation. It would have been obvious for one of ordinary skill to discover the optimum workable ranges of the method disclosed by the prior art by normal optimization procedures known in the art.
Regarding i) and j), modified Lehmberg additionally does not teach filtration after deactivation, or removal of ethanol after filtration. However, note that the selection of any order of performing process steps is prima facie obviousness, absent new or unexpected results. See MPEP 2144.04 IV C.
Regarding k), Lehmberg teaches concentration to a concentrated liquid (Column 3, Lines 28-29).
Regarding Claim 3, modified Lehmberg does not address the use of a sieve support. However, it would have been obvious to use a sieve support in a percolation process. One of ordinary skill would understand ‘percolation’ to be a process requiring an apparatus which allows a solvent or extraction medium to pass through the substance to be extracted (e.g. plant material), i.e. a physical filtration device such as a sieve.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lehmberg in view of acs.org, Anwar, Sensient Flavors & Extracts and Erickson as applied to Claim 1, above, taken with evidentiary reference of Sigma Aldrich (“Tannase from Aspergillus ficuum”, https://www.sigmaaldrich.com/US/en/product/sigma/42395)
Regarding Claim 6, modified Lehmberg teaches the use of 3.8 grams tannase / 340 grams enzyme cocktail x 3.4 grams of enzyme cocktail/.016 lb of plant material = .005 grams tannase / gram of plant material. Note that tannase has a typical enzyme activity of ≥150 U/g ( see evidentiary reference of Sigma Aldrich, Page 3). Lehmberg therefore teaches an enzyme ratio of ≥0.75 U/g of plant material, which overlaps the claimed range.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3, 6, 10-11, 14, 16, and 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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/D.L./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791