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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 24, 2026 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-7, 9-11, 14
Withdrawn claims:
None
Previously canceled claims:
8, 12
Newly canceled claims:
13
Amended claims:
1, 10, 11, 14
New claims:
None
Claims currently under consideration:
1-7, 9-11, 14
Currently rejected claims:
1-7, 9-11, 14
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7, 9, 10, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tomotoshi (JP 2005/334862 A)(IDS Reference filed 10/14/2022) in view of Hidayu (Hidayu, A R, et al. “Preparation of activated carbon from palm kernel shell by chemical activation and its application for β-carotene adsorption in crude palm oil”, Journal of Physics: Conference Series, Ser. 1349 012103, published 2019 [accessed online May 6, 2026]), Water Resources (“Chloride, Salinity, and Dissolved Solids”, Water Resources Mission Area, USGS, published March 1, 2019 [accessed online September 15, 2025]) and Alkazone (“ALKAZONE Liquid Potassium+ | Liquid Supplements Have Faster Absorption Rate | Concentrated | Easiest Way to take Potassium | Tasteless Flavorless | 1.25 Oz, Clear, Pack of 1”, sold by VerSure on Amazon, first available December 1, 2017 as indicated at p. 5, l. 2 [accessed online December 7, 2024], https://www.amazon.com/ALKAZONE-Liquid-Potassium-Electrolyte-Supplement/dp/B0766451BN).
Regarding claim 1, the recitation “liquid extract from palm shell activated carbon” recites a product-by-process. MPEP §2113 states “[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). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Claim 1 is directed to a liquid mineral concentrate composition comprising a liquid extract from activated carbon of a plant raw-material. Although claim 1 includes the process of obtaining a liquid extract from activated carbon of a plant-derived raw material, the determination of patentability will depend upon the product itself. The structure imparted by the process is a liquid mineral concentrate composition that comprises the same ion composition as a liquid mineral concentrate obtained from palm shell activated carbon.
Regarding claim 1, Tomotoshi teaches a bamboo charcoal drinking water produced by soaking bamboo charcoal in drinking water ([0003]) wherein the mineral water comprises potassium, sodium, magnesium, and calcium ions ([0011]); where the composition comprises 50 mg/L potassium ([0018]). 50 mg/L equates to 50 ppm, which falls within the claimed range of “20 ppm or more”.
Tomotoshi does not teach that the liquid extract is from palm shell activated carbon, the composition comprising chloride ions or sulfate ions, or where the mineral water has a pH of 7.5 to 10.5.
Regarding the liquid extract is from palm shell activated carbon, Hidayu teaches that activated carbon can be made from material such as bamboo or palm kernels shells (p. 2, ¶ 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the bamboo charcoal of Tomotoshi with the use of palm shell activated carbon as taught by Hidayu. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
Regarding the composition comprising chloride and sulfate ions, Water Resources teaches that calcium, magnesium, sodium, potassium, sulfate, and chloride ions typically make up the dissolved solids in water (p. 2, ¶ 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Tomotoshi with the inclusion of chloride and sulfate as taught by Water Resources. One would have been motivated to make this modification because Water Resources teaches that these ions are typically in water (p. 2, ¶ 2).
Regarding the pH of the composition, Alkazone teaches a liquid potassium concentrate with a pH of 9.5 (p. 3, first Image), which falls within the claimed range of “7.5 to 10.5”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Tomotoshi to have a pH as taught by Alkazone. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Although the cited prior art does not teach that the composition is derived from activated carbon, the liquid composition of Tomotoshi in view of Water Resources and Alkazone would be indistinguishable from compositions that would be obtained via the claimed process. Therefore, the cited prior art teaches all elements of claim 1.
Regarding claim 2, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Tomotoshi also teaches a mineral water comprising 50 mg/L potassium ([0018]). 50 mg/L equates to 50 ppm, which falls within the claimed range of “600 ppm or less”.
Regarding claim 3, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Tomotoshi also teaches a mineral water comprising 50 mg/L potassium ([0018]). 50 mg/L equates to 50 ppm, which falls within the claimed range of “50 ppm to 200 ppm”.
Regarding claim 4, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above.
Tomotoshi does not teach wherein the amount of chloride ions contained in the mineral water is 50% or less of the potassium ion composition.
However, in the same field of endeavor, Water Resources teaches that the guideline for the maximum amount of chloride in drinking water is 250 mg/L (equivalent to 250 ppm; p. 5, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Tomotoshi to comprise 250 ppm or less of chloride ions, which would result in the composition having a chloride ion concentration at 500% or less of the concentration of potassium ions, which encompasses the claimed range of “50% or less”. One of ordinary skill would have been motivated to make this modification because the guideline of 250 mg/L is to maintain taste and odor of water (p. 5, ¶ 5).
Regarding claim 5, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Tomotoshi also teaches a mineral water comprising 30 mg/L of potassium and 4.6 mg/L of calcium ([0019]), which equates to calcium ions at a concentration of 15.3% of the potassium ion concentration. 15.3% falls within the claimed range of “30% or less”.
Regarding claim 6, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Tomotoshi also teaches a mineral water comprising 30 mg/L of potassium and 2 mg/L magnesium ([0019]), which equates to magnesium ions at a concentration of 6.7% of the potassium ion concentration. 6.7% falls within the claimed range of “15% or less”.
Regarding claim 7, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Tomotoshi also teaches a mineral water comprising 30 mg/L of potassium and 13 mg/L sodium ([0019]), which equates to sodium ions at a concentration of 43.3% of the potassium ion concentration. 43.3% falls within the claimed range of “10 to 50%”.
Regarding claim 9, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Although Tomotoshi does not teach the composition having a buffer capacity, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Because Tomotoshi teaches the composition of claim 1, the composition of Tomotoshi will also have a buffer capacity. Evidence to support that the composition would inherently have a buffer capacity is provided by the instant specification. The instant specification states that the mineral concentrate has an excellent buffer capacity (p. 22, lines 12-13).
Regarding claim 10, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Although Tomotoshi does not teach the buffer capacity of the composition, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Because Tomotoshi teaches the composition of claim 1, the composition of Tomotoshi will also have a buffer capacity of 1.5 or more. Evidence to support that the composition would inherently have a buffer capacity of 1.5 or more is provided by the instant specification. The instant specification teaches that the mineral-containing aqueous composition according the to invention has a buffer capacity of 1.5 or more (p. 8, lines 12-13).
The recitation “wherein the buffer capacity is defined as…” in lines 2 – 6 of the claim merely states the method of determining the buffer capacity of the claimed invention. Because the buffer capacity is an inherent property of the composition as claimed, performing the claimed method with the composition of Tomotoshi is presumed to result in the claimed buffer capacity. The instant specification teaches that the buffer capacity of 1.5 or more is defined by the method of claim 10 (p. 8, lines 12-23).
Regarding claim 14, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above. Regarding the recitation “for use in the prevention or improvement of acidification in an organism”, this is the intended use of the composition. See MPEP §2111.02(II). The recitation does not result in a manipulative difference to the composition as claimed. Given that Tomotoshi anticipates the composition of claim 1, the composition of Tomotoshi is capable of being used in the prevention or improvement of acidification in an organism.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tomotoshi (JP 2005/334862 A)(IDS Reference filed 10/14/2022) in view of Hidayu (Hidayu, A R, et al. “Preparation of activated carbon from palm kernel shell by chemical activation and its application for β-carotene adsorption in crude palm oil”, Journal of Physics: Conference Series, Ser. 1349 012103, published 2019 [accessed online May 6, 2026]), Water Resources (“Chloride, Salinity, and Dissolved Solids”, Water Resources Mission Area, USGS, published March 1, 2019 [accessed online September 15, 2025]) and Alkazone (“ALKAZONE Liquid Potassium+ | Liquid Supplements Have Faster Absorption Rate | Concentrated | Easiest Way to take Potassium | Tasteless Flavorless | 1.25 Oz, Clear, Pack of 1”, sold by VerSure on Amazon, first available December 1, 2017 as indicated at p. 5, l. 2 [accessed online December 7, 2024], https://www.amazon.com/ALKAZONE-Liquid-Potassium-Electrolyte-Supplement/dp/B0766451BN) as applied to claim 1 above, and further in view of Masouleh (Masouleh, Sepideh Daghigi, et al. “Investigating the Changes of Total Organic Carbon Content in Bottled Water Under Environmental Stress Conditions”, American Journal of Environmental Protection, Vol. 7(1), p. 14-18, published March 29, 2018 [accessed online January 17, 2025]).
Regarding claim 11, Tomotoshi in view of Water Resources and Alkazone teaches all elements of claim 1 as described above.
The cited prior art does not teach the total organic carbon of the mineral composition.
However, in the same field of endeavor, Masouleh teaches the TOC level in mineral water over the course of 3 months being 1.6 to 2.33 mg/L (Abstract; p. 15, Table 1), which falls within the claimed range of “3.0 mg/L or less”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Tomotoshi with the total organic carbon as taught by Masouleh. One would be motivated to make this modification because, as taught by Masouleh, high levels of organic compounds from storage containers can result in the potential risk of poisonous content for genes, negative effects on the endocrine system, and cancers (p. 14, left-hand column).
Response to Arguments
Claim Objections: Applicant has overcome the objections to the claims based on amendments in the Claims. Accordingly, the objections have been withdrawn.
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 13 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1-7, 9, 10, 13, and 14 over Tomotoshi, Water Resources, and Alkazone; claim 11 over Tomotoshi, Water Resources, Alkazone, and Masouleh: Applicant’s arguments filed March 24, 2026 have been fully considered but they are not persuasive.
Applicant argued that the Examiner’s reasoning is based on improper hindsight (Remarks, p. 6, ¶ 3- p. 7, ¶ 2).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The Examiner maintains that the claimed invention would have been obvious prior to the effective filing date of the claimed invention.
Regarding Applicant’s argument that the cited references fail to teach activated carbon from palm shell (Remarks, p. 7, ¶ 3-5), this argument is persuasive to the extent that the claims as presently amended would not be anticipated/obvious in view of Tomotoshi, Water Resources, and Alkazone. However, upon further consideration, a new ground(s) of rejection is made in view of Tomotoshi, Hidayu, Water Resources, and Alkazone.
The rejections of claims 1-7, 9-11, 14 have been maintained herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached Generally available M-Th 8:00a-5:00p, F 8:00-2:00.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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