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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 13, 2025 has been entered.
Priority
This application is a 371 of PCT/CN2020/082035 03/20/2020 which claims foreign priority to CHINA 201910711349.9 08/02/2019.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 365(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 201910711349.9, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior filed application fails to provide support for:
(I) The 0.01%-5% formic acid water in a volume ratio of 1-5:9-5; a flow rate controlled at 50-300 mL/min, a UV detection wavelength is 220-280 nm and 350-380 nm; the reverse-phase chromatographic column is balanced for 3-30 min, required in claim 1, step a);
(II) Weighing any amount of a pomegranate peel extract; dissolving in any amount of water; centrifuging under any conditions; concentrating the two components at 30°C-50°C, required in claim 1, step b);
(III) Obtaining any amount of lyophilized powder of β-punicalagin and concentrating by a rotary evaporator at a temperature of 30°C-50°C; and concentrating the two components to any volume by a rotary evaporator at a temperature of 30°C-50°C; required in claim 1, step c);
(IV) Weighing 0.1-10 g of pomegranate peel extract and dissolving in 10-50 mL of water, required in claim 2;
(V) Centrifuging at a rotation speed of 5000-10000 revolutions per minute for 3-10 minutes, required in claim 3; and
(VI) Reducing the volume to 10-50 mL, required in claim 4.
The Examiner notes claim 6 depends from claim 1.
Thus, the Examiner is interpreting claims 1-4 and 6 have an effective filing date of March 20, 2020.
Claim Status
The claim set, Applicant’s remarks and the AISA declaration all filed on November 13, 2025 have been entered. Claims 5 and 7-11 are canceled.
Thus, claims 1-4 and 6 as amended are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the final office action on August 27, 2025:
The rejection of claims 1-4 and 6 under 35 U.S.C. 103 is withdrawn in view of Applicant’s amendment to the claims and the AISA declaration filed November 13, 2025.
Response to Arguments
The Examiner has reviewed and considered the AISA declaration above and finds the declaration persuasive to overcome the 103 rejection of record.
However, upon further consideration of the AISA declaration, particularly AISA declaring the UV detection wavelength of 378 nanometers (nm) might not be the optimal response wavelength for detecting co-eluting impurities when purifying punicalagin, see pg. 10 of 11, paragraph #8, in response the Examiner has written a 112(a) enablement rejection due to Applicant claiming the 378 nm UV detection wavelength within their purification method as discussed in greater detail below.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
(I) Claim 1, line 20;
Claim 1, pg. 3 of 17, line 19;
Claim 6, line 21; and
Claim 6, pg. 5 of 17, line 17, each recite the phrase “than 98% after detected”, which recites “after” immediately before “detected” which is grammatically incorrect when referring to the detection method.
Thus, to promote clarity the Examiner suggests replacing “after” with the word “as”.
(II) Claim 1, lines 23-24, recite the phrase “the resulting product” and;
Claim 1, pg. 3 of 17, line 10, recites the phrase “in this round of collection” which are both clearly missing the linking word “wherein” immediately before “the” and “in” respectively to connect the resulting product to the concept of the α-punicalagin recited in the preceding line, i.e. line 22; and the preceding collection step, on pg. 3 of 17, line 9, respectively.
Thus, to promote clarity the Examiner suggests inserting the word “wherein” as discussed above.
(III) Claim 1, pg. 3 of 17, line 5, recites the word “not” which is reasonably interpreted as a typographically error.
Thus, to promote clarity the Examiner suggests replacing “not” with the word “no” as discussed above.
(IV) Claim 1, pg. 3 of 17, line 16, recites “combined, concentrated the combined components” where the Examiner notes the phrase “the combined components” is redundant in view of the preceding lines. In addition, the phrase recites a superfluous comma impeding the flow of the claim where the insertion of the word “and” would suffice.
Thus, to promote clarity the Examiner suggests to (a) delete the comma recited immediately after “combined”; (b) insert “and” immediately before “concentrated”; and (c) delete the phrase “the combined components”.
(V) Claim 1, pg. 3 of 17, line 18, recites “the concentrated combined components” which is redundant in view of the preceding line.
Thus, to promote clarity the Examiner suggests deleting the phrase “the concentrated combined components” discussed above.
(VI) Claim 6, line 1, recites “The method for purifying punicalagin according to claim 1”, the Examiner notes to promote consistency with claim 1, from which claim 6 depends, the phrase “isomerization feature-based” should be inserted immediately before “method”.
Additionally, line 1 is clearly missing a comma immediately after the phrase “claim 1”.
Thus, to promote consistency and clarity the Examiner suggests inserting the phrase “isomerization feature-based” and inserting a comma as discussed above.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an isomerization feature-based method for purifying punicalagin where the UV detection wavelength is 254 nm and 366 nm under chromatographic conditions exemplified in Example 1 and Example 2 of the specification (see pp. 6-8), does not reasonably provide enablement for said method where the UV detection wavelength is 220-280 nm and 350-380 nm under the chromatographic conditions recited in claim 1, lines 3-7. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
As a result, substantiation of utility and its scope is required when utility is
speculative, sufficiently unusual or not provided, and enablement must be
commensurate with the scope of the claim language. As MPEP § 2164.08 states, “The
Federal Circuit has repeatedly held that "the specification must teach those skilled in the
art how to make and use the full scope of the claimed invention without ‘undue
experimentation’." In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).”
As stated in MPEP § 2164.01(a), “There are many factors to be considered when
determining whether there is sufficient evidence to support a determination that a
disclosure does not satisfy the enablement requirement and whether any necessary
experimentation is “undue”.”
The applicant’s attention is drawn to In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988), where the court set forth eight factors to be considered in
determining whether a disclosure meets the enablement requirement of 35 U.S.C.
112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. They are: (1) The nature of the
invention; (2) The state of the prior art; (3) The level of skill in the art; (4) The
predictability or lack thereof in the art; (5) The breadth of the claims; (6) The amount of
direction or guidance present; (7) The presence or absence of working examples; and
(8) The quantity of experimentation needed.
It is noted that all of the Wands factors have been considered with regard to the
instant claims, with the most relevant factors discussed below.
The nature of the invention: The claimed invention is drawn to an isomerization feature-based method for purifying punicalagin, comprising using a reversed-phase chromatographic column with UV detection wavelengths between 220-280 nm and 350-380 nm, see claim 1, lines 1-5.
Therefore, the Examiner reasonably interprets the recitation of “a UV detection wavelength of 220-280 nm and 350-380 nm” means the method can utilize any UV detection wavelength between 220-280 nm and 350-380 nm for purifying punicalagin within the isomerization feature-based method.
Moreover, Applicant recites the pomegranate peel extract containing the α-punicalagin and β-punicalagin is loaded into the balanced reversed-phase chromatographic column and collected around two chromatographic peaks around an α-punicalagin and β-punicalagin respectively and then concentrated, see claim 1, lines 8-12; where the concentrated components are reloaded at a position of the α-punicalagin obtained in step b, see claim 1, lines 13-14; and/or reloaded at the chromatographic peak of the β-punicalagin obtained in step b), see claim 1, lines 27 – pg. 3 of 17, line 1.
Applicant further recites the chromatographic peak of the β-punicalagin is free from impurities that co-eluted with β-punicalagin and were removed in step b), see claim 1, lines 16-18; and/or the chromatographic peak of the α-punicalagin is a qualified product as it has no impurities co-eluted with α-punicalagin that have been removed in step b), see claim 1, pg. 3 of 17, lines 4-5. The Examiner notes “step b)” corresponds to claim 1, lines 8-12.
Accordingly, in view of these combined recitations, the Examiner reasonably interprets claim 1 recites a method to remove co-eluting impurities using the balanced reversed-phase chromatographic column as prepared within claim 1, lines 3-7, and then utilizing the detection wavelength ranges discussed above to collect and concentrate the α-punicalagin and β-punicalagin as components.
The state of the prior art: The state of the art does not recognize the wavelength ranges recited for use within an isomerization feature-based method.
Attention is drawn to Sun et al. (Published 25 May 2021, Journal of Chromatography A, Vol. 1651, Article Number 462281 pp. 1-14, PTO-892), Sun discloses a dual-tautomerism separation (DTS) method for preparing punicalagin in gram-scale from pomegranate peel waste, see pg. 1, abstract.
The Examiner notes Sun supports Applicant’s working Example 1 and Example 2 which are discussed in further detail below.
However, Lu et al. (Published 20 December 2010, Separation Science and Technology, Vol. 46, Issue 1, pp. 147-154, PTO-892) discloses Figure 1 depicted as:
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, see pg. 151, Figure 1, which shows the chromatographic peaks of α-punicalagin and β-punicalagin are not fully separated from nearby impurity peaks where the conditions used are a reversed-phase C18 column; mobile phase MeOH : 0.1% trifluoroacetic acid (TFA) = 10:90 (a), 14:86 (b), 16:84 (c); the flow rate is 12 ml/min and monitored at 378 nm.
The Examiner also notes the conditions of Lu correspond to the method of instant claim 1 when the mobile phase uses methanol; at the recited volume ratio of 1-5:9-5; and at the recited UV detection wavelength.
Furthermore, Figure 1(c) of Lu above appears to show the impurity peak at least overlapping with the peak associated with α-punicalagin and is at least close to the peak associated with β-punicalagin.
Accordingly, it appears Lu does not disclose the use of a UV detection wavelength of 378 nm for use in purifying punicalagin with a reversed-phase chromatographic column where the chromatographic peak of either the α-punicalagin and/or β-punicalagin is free from impurities that co-eluted and were removed after reversed-phase chromatographic column purification under said chromatographic conditions as recited by Applicant in claim 1, lines 1-12 which is discussed above.
The relative skill in the art: The relative skill of those in the art is high.
The predictability or lack thereof in the art: Sun and Lu disclose as discussed above.
As a result, at the time of the invention the state of the art for using UV detection wavelengths for isomerization feature-based methods for purifying punicalagin was limited. Therefore, at the time of the invention the state of the art of methods using UV detection wavelengths for isomerization feature-base methods for purifying punicalagin was relatively underdeveloped and unpredictable.
The breadth of the claims: The claim is board in that it encompasses utilizing UV detection wavelengths between 250-280 nm and 350-380 nm under chromatographic conditions as recited in claim 1 in the isomerization feature-based method for purifying punicalagin as discussed in the Nature of Invention above.
The amount of direction or guidance present: Applicant provides two examples of isomerization feature-based pilot-scale reversed-phase chromatography in purifying punicalagin from pomegranate peel extract (see Examples 1 and 2, pp. 6-8).
The Examiner notes within each of these examples the UV detection wavelength was set at 254 nm and 366 nm (see pg. 6, Example 1, paragraph 1 and pg. 7, Example 2, paragraph 1); and is consistent with Sun above.
However, as discussed in the State of the Prior Art, Lu discloses the use of a UV detection wavelength at 378 nm showing co-eluting impurities with both the α-punicalagin and/or β-punicalagin under similar chromatographic conditions recited by Applicant within claim 1.
Moreover, Applicant’s Examples 1 and 2 disclose the pomegranate peel extract dissolved in 20 mL of water containing the punicalagin isomers were loaded into the equilibrated pilot-scale reversed-phase chromatographic column as shown in Fig. 1, see pg. 6, Example 1, paragraph 2 and pg. 7, Example 2, paragraph 2.
The Examiner notes Applicant’s Figure 1 appears to show co-eluting impurities corresponding to the first component in the time range of 5 to 10 min.
Furthermore, the Examiner notes the chromatogram of Figure 1 of Applicant and the chromatogram of Figure 1(b) of Lu appear to be similar to each other with regard to the time frame of when the impurity peak, the α-punicalagin peak and the β-punicalagin peak are detected and displayed on the chromatogram.
The presence or absence of working examples: Applicant does not provide any working examples other than Examples 1 and 2 as discussed above.
Note the lack of working examples is a critical factor to be considered, especially in a case involving the unpredictable and underdeveloped art as discussed above.
The quantity of experimentation needed: In order to translate the recitations in Applicant’s claims into an actual purification method, with the full range of UV detection wavelengths for purifying punicalagin under the recited chromatographic conditions within the isomerization feature-based method as required within instant claim 1 beyond those known in the art, one skilled in the art would have to undertake a novel and extensive research program to show that said method could be practiced with any UV detection wavelength within the ranges of both 250-280 nm and 350-380 nm under said chromatographic conditions as required within instant claim 1.
Moreover, MPEP 2164.08 states [a]lthough a specification does not need to describe how to make and use every possible variant of the claimed invention, when a range is claimed, there must be reasonable enablement of the scope of the range.
Therefore, because this research would have to be exhaustive, and because it would involve such a wide and unpredictable scope beyond what is already known in the art, it would constitute an undue and unpredictable search and experimental burden.
Genentech, 108 F.3d at 1366, states that, “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion.” And “patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
Therefore, in view of the Wands factors, particularly the state of the art, the lack of guidance or direction, and the lack of working examples as discussed above, Applicant fails to provide information sufficient to practice the claimed invention.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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