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 .
Claims 1-2 are pending in this application.
IDS filed on 11/25/2022
Document No. 1 from the IDS filed on 11/25/2022 was crossed out because it contained a citation to more than one document. Applicant is advised that the Examiner has taken those documents and cited them on the attached PTO-892, so the end result is the same; the documents were considered.
Substitute Specification
The marked-up substitute specification filed on 2/14/2023 is improper because it does not show all deletions, including tables and figures, and the added subject matter in the substitute specification (filed on 1/26/2023). A new marked-up substitute specification is required along with a statement that no new matter was added.
Applicant has misunderstood the 1/20/2023 Notice of Incomplete Reply, which required a marked-up version of the substitute specification. The requirement means markings showing all the changes relative to the immediate prior version of the specification of record must be provided. All deletions, including tables and figures, must be shown by strike-throughs and all new text must be shown by underlining.
These requirements are from 37 CFR 1.125(a) to (c), which are copied below (with emphases added) for Pro Se Applicant so that the exact requirements can be reviewed:
37 C.F.R. 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
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(b) Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
(c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
Examiner’s Recommendation to resolve this issue
1. File a marked-up substitute specification that strikes-through everything, i.e., all text, tables, embedded hyperlinks, and figures from the originally filed specification (filed on 11/25/2022) wherein this marked-up specification further contains the new text (all underlined) of the substitute specification. To reiterate, the substitute specification must contain all old subject matter deleted (shown by strike-throughs) and all added subject matter (shown by underlines).
2. Additionally, file a clean copy of the substitute specification to clear up any issue that the marked-up copy is a marked-up version of the accompanying clean copy.
3. Accompany the above filings with a statement that the substitute specification includes no new matter.
Embedded hyperlinks
The disclosure is objected to because it contains numerous embedded hyperlinks and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlinks and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
See for example the following embedded hyperlink on page 2:
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Objection to claims
Claims 1-2 are objected to because of the following informalities:
Claims 1 and 2 are preceded by text that are not part of claims numbered as 1 and 2. Text that is not part of a claim is text that does not appear after a claim number. MPEP 608.01(m) states, “Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material” (emphases added). Therefore the following text (enclosed in the box below) must be removed and a new claim set on a separate sheet must be submitted:
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Appropriate correction is required.
Rejection under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Claims 1 and 2 do not specify the plant that the extract or oil is obtained from. The plant is assumed to be Trichosanthes cucumerina but the claim must positively recite this feature. Currently, the claims read on any aroma-containing plant extract or oil.
(2) The claim is confusingly written such that it is not clear whether the product per se, i.e., the plant extract or plant oil, is being claimed or its method of use. A claim must be directed to either a composition or a method, not both.
(3) In claim 2, “as in #1 above” is improper claim language. A reference to a previous claim must clearly state the claim that is being referenced, i.e., “claim 1.”
(4) Claim 2 states that the product of claim 2 can be used for the same “purpose” as in #1 above. Assuming that “#1 above” is meant to be claim 1, the claim is still indefinite because the purpose of claim 1 is not clearly set forth in claim 1. All that claim 1 provides is that the extract/oil can be uniformly sprayed but the claim does not set forth the “purpose” for the spraying.
Rejection under 35 USC 112(a) or 35 USC 112 (pre-AIA ), first paragraph
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.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 2 is directed to “Synthetically prepared the same aromatic product.” It is the Examiner’s position that a “same aromatic product” that is synthetically prepared has not been enabled.
For a synthetically prepared extract of Trichosanthes cucumerina to be the same product as the natural extract, one skilled in the art would have to know the exact compositional ingredient makeup and proportions in the natural extract. Typically, a plant extract contains numerous ingredients, with many of them unidentified or in trace amounts, with their exact proportions unstudied. Sandhya et al. disclose that T. cucumerina contains, inter alia, proteins, fat, fiber, carbohydrates, vitamin A, E, carotenoids, flavonoids, lycopene, phenolics, β-carotene, sodium magnesium, zinc, 23,24-dihydrocucurbitacin D, 23,24-dihydrocucurbitacin B, and 3β-hydroxyolean-13(18)-en-28-oic acid (page 15). Percentages or proportions are not disclosed. Specific proteins, fat, fiber, and carbohydrates are not identified.
Thus, the breadth and nature of the claimed invention is an extract or extract product that is synthetically prepared but the same as the natural extract of T. cucumerina, whereas the state of the prior art is that the natural extract of T. cucumerina has not been completely characterized in terms of its components and proportions.
Although the level of one of ordinary skill in the art in the high, the level of predictability in the art is low because the natural product, with unknown number of ingredients and proportions, has not been completely characterized to make the same aromatic product.
The specification provides no working example of a synthetic product. A synthetic product “having the same aroma” or “same intense smell as the snake gourd leaves and fruits” (page 6) is disclosed but the inventor fails to provide direction to actually make such a synthetic product. No disclosure as to the product content, compositional proportions, and which ingredients at which proportions provide the extract aroma are provided.
For these reasons, the quantity of experimentation needed to make or use the invention of claim 2, based on the content of the disclosure, would be undue; and claim 2 fails to find adequate enabling support from the disclosure.
Rejection under 35 USC 102 or 103
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.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rudroju et al. (hereinafter, Rudroju).
Rudroju explicitly discloses water, methanol, chloroform, petroleum ether, and acetone extracts of stem, leaf, flower, and seed of Trichosanthes cucumerina as having antimicrobial activity (pages 1095-1101).
Claims 1 and 2 read on Rudroju’s extracts. Claim 1 has the language, “can be uniformly sprayed upon the said target plants …throughout the year” but Rudroju’s extracts can also be sprayed to any object or substrate. No other property is required of claims 1 and 2. Further, even if Applicant’s claims recited language that required pest control properties, any property asserted by Applicant must necessarily be present in Rudroju’s extracts because the T. cucumerina extracts are the same.
It is noted that claim 2 is written as “Synthetically prepared the same aromatic product ..” Thus, full scope of claim 2 encompasses, and is readable on, the natural extract because claim 2 is directed to the “same aromatic product.”
In the alternative, the claimed extract or extract product would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because numerous extracts of T. cucumerina are clearly disclosed by Rudroju and any property recited in the instant claims must necessarily be present in the same prior art plant extracts.
To assist Pro Se Applicant in reviewing the prior art issue addressed above, the following hypothetical claim and prior art are presented:
Hypothetical Claim 1. A 325 mg tablet of aspirin, which can be administered to a patient to effectively treat disease X, which disease has never been effectively treated before.
Prior art: 325 mg tablet of aspirin for treating pain and fever.
The hypothetical claimed tablet is anticipated or rendered obvious by the prior art tablet, because the claim is directed to the tablet per se. The prior art 325 mg tablet of aspirin is the same exact substance as the claimed 325 mg tablet of aspirin, so any property possessed by the claimed tablet must also be necessarily possessed by the prior art tablet.
Analogously, the extract claimed by Applicant’s claims is clearly disclosed by Rudroju, so any property possessed by the claimed extract or extract product must necessarily possessed by Rudroju’s extracts.
For the foregoing reasons, all claims must be rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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