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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/11/2026 has been entered.
Claim Status
The amendment of 02/11/2026 has been entered. Claims 1-10 are pending (claim set as filed on 02/11/2026). Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant previously elected invention Group I, claims 1-4, drawn a culture medium for lactic acid bacteria, and the lactic acid bacteria species Bifidobacterium lactis, without traverse, in the reply filed on 01/17/2025
Claims 1-4 are currently under examination and were examined on their merits.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (“KR101093062B1, published on 12/13/2011), hereinafter ‘Lee’, as evidenced by Yoo et al. (“An alternative sequential extraction process for maximal utilization of bioactive components from Korean red ginseng”, published on 02/14/2010, Korean J. Chem. Eng., Vol. 26(4), pages 1094-1097), hereinafter ‘Yoo’.
Lee’s general disclosure relates to a method for producing a fermented red ginseng marc product (description, page 1, paragraph 1, lines 1-2).
Regarding claims 1-2, please see elected species Bifidobacterium lactis under Claim Status above.
Pertaining to the medium, Lee teaches a culture medium comprising red-ginseng derived dietary fiber (description, page 2, paragraph 1, lines 7-8 and 17-20). It is noted that red ginseng marc is “a byproduct generated after the red ginseng extract manufacturing process” (description, page 1, paragraph 1, lines 1-2), comprises dietary fiber (page 1, description, paragraph 2, lines 16-17), and is insoluble in water, as evidenced by Yoo et al. (page 1094, left column, paragraph 1).
The preamble of claims 1-2 recites "for lactic acid bacteria" which is considered intended use. The MPEP 2111.01 (II) states: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Therefore, since the intended use “for lactic acid bacteria” does not impart a structural limitation on the product itself, no patentable weight is given to the lactic acid bacteria in claim 1 and to the elected Bifidobacterium listed in claim 2.
Claims 1-2 are directed to the product ‘culture medium comprising red ginseng-derived dietary fiber, wherein the red ginseng-derived dietary fiber is insoluble in water’, and are considered product-by-process claims since claim 1 further recites the process step “wherein the red ginseng-derived dietary fiber […] is obtained by extracting dietary fiber from a residue during a red ginseng extraction process”. "[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) (see MPEP 2113 (I)).
The method of making the product does not impart a structural limitation absent evidence to the contrary (MPEP 2113 (I)). Therefore, patentable weight is given to the product ‘culture medium comprising red ginseng-derived fiber, wherein the red ginseng-derived dietary fiber is insoluble in water’ in claims 1-2, and no weight is given to the process step ‘wherein the red ginseng-derived dietary fiber is obtained by extracting dietary fiber from a residue during a red ginseng extraction process’. As such, claims 1-2 are anticipated by Lee’s product ‘culture medium comprising red ginseng-derived dietary fiber’.
It is noted that Lee teaches wherein the red ginseng-derived dietary fiber is obtained by extracting dietary fiber from a residue during a red ginseng extraction process (description, page 3, paragraph 2, lines 17-22).
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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.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (“KR101093062B1, published on 12/13/2011), hereinafter ‘Lee’, as evidenced by Yoo et al. (“An alternative sequential extraction process for maximal utilization of bioactive components from Korean red ginseng”, published on 02/14/2010, Korean J. Chem. Eng., descriVol. 26(4), pages 1094-1097), hereinafter ‘Yoo’, and in view of Majeed et al. (US 2017/0274023 A1, published on 09/28/2017), hereinafter ‘Majeed’.
Lee’s teachings have been set forth above.
Regarding claims 3 and 4, the preamble of claims 3 and 4 recites "for lactic acid bacteria" which is considered intended use. Since the intended use “for lactic acid bacteria” does not impart a structural limitation on the product itself, as discussed above under Claim Rejections - 35 USC § 102, no patentable weight is given to the lactic acid bacteria in claims 3 and 4.
Pertaining to the medium, Lee teaches wherein the medium comprises “1 to 30 weight percent of red ginseng marc powder” (description, page 2, paragraph 1, lines 17-20), corresponding to about 0.2 to 6% dietary fiber present in the medium. It is noted that Lee’s red ginseng marc powder comprises about 20% dietary fiber (description, page 3, paragraph 2, lines 17-22).
Regarding claim 4, regarding the process step ‘wherein the red ginseng-derived dietary fiber is extracted from the residue during the red ginseng extraction process using at least one selected from the group consisting of a centrifuge, a filter press, a belt press and a dryer’, it is noted that the method of making the product does not impart a structural limitation absent evidence to the contrary (MPEP 2113 (I)). "[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) (see MPEP 2113 (I)). Therefore, patentable weight is given to the product in claim 4.
It is noted that Lee teaches wherein red ginseng-derived dietary fiber is extracted from the residue during the red ginseng extraction process using a dryer (description, page 3, paragraph 2, lines 17-22).
Lee does not teach wherein the red ginseng-derived dietary fiber is present in an amount of 0.001% to 5% (w/v) based on the total volume of the culture medium (instant claim 3), wherein the red ginseng-derived dietary fiber is extracted from the residue during the red ginseng extraction process using at least one selected from the group consisting of a centrifuge, a filter press, a belt press and a dryer (instant claim 4).
Majeed’s general disclosure relates to a method related to the growth promotional activity of plant-based fibers on Bacillus coagulans MTCC 5856 (see entire document, including abstract).
Regarding claims 3 and 4, pertaining to the medium, Majeed teaches wherein a plant derived dietary fiber is present in an amount of 0.5, 1.0, or 2.0% w/v in a medium (paragraph [0034]; see Table 1), and further discloses wherein the plant fibers in the medium are used to promote growth of a lactic acid bacterium (paragraph [0002]; see title and claims 1-2).
While Lee does not teach wherein the red ginseng-derived dietary fiber is present in an amount of 0.001% to 5% (w/v) based on the total volume of the culture medium (instant claim 3), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Lee’s method with Majeed’s teachings on a plant fiber comprising growth medium for lactic acid bacteria, to formulate a medium wherein the red ginseng-derived dietary fiber is present in an amount of 0.5, 1.0, or 2.0% (w/v) based on the total volume of the culture medium. One would have been motivated to do so to create a culture medium for lactic acid bacteria that allows for improved bacterial growth. A skilled artisan would have reasonably expected success in combining Lee’s and Majeed’s teachings since both are directed to media comprising plant fibers.
Regarding the process step ‘wherein the red ginseng-derived dietary fiber is extracted from the residue during the red ginseng extraction process using at least one selected from the group consisting of a centrifuge, a filter press, a belt press and a dryer’ in instant claim 4, the method of making the product does not impart a structural limitation absent evidence to the contrary, as discussed above. Therefore, patentable weight is given to the product in claim 4. As such, claim 4 is rendered obvious over modified Lee’s product ‘culture medium comprising red ginseng-derived dietary fiber’.
Response to Arguments
Applicant has traversed the previous rejections of claims 1-2 under 35 U.S.C. 102 (remarks, pages 4-6), and of claims 3-4 under 35 U.S.C. 103 (remarks, pages 7-10). Applicant’s arguments with respect to claims 1-4 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
No claims are allowed.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA ZINGARELLI whose telephone number is (703)756-1799. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANDRA ZINGARELLI/ Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653
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