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 .
Applicants amendment filed 3/12/2026 has been entered. Claims 9-11 were amended. Claim 7 was canceled. Claims 6 and 8-11 are under examination. Claims 1-5 and 13-20 are withdrawn. Claims 1-6, 8-11 and 13-20 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 3/12/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,303,587. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a protein hydrolysate from Moringa peregrina seed cake fraction P1 comprising amino acid derivatives, peptides and glycopeptides with a molecular weight of between 1,500-5,000 Da and/or P2 (10,000-17,000 Da) and or P3 (approximately 23,000).
Claims 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,303,587. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a protein hydrolysate from Moringa peregrina seed cake fraction P1 comprising amino acid derivatives, peptides and glycopeptides with a molecular weight of between 1,500-5,000 Da and/or P2 (10,000-17,000 Da) and or P3 (approximately 23,000) whereas the patent is drawn to an extract of Moringa peregrina seed cake. However, the protein hydrolysate and the extract are both obtained by proteolysis pt a pH greater than 13 for 2 hours at a temperature of 16-25˚C. The density and fractions with molecular weight 10,000-17,000 Da of about 23,000 Da is not specified in the patent claims, however, it would be an inherent property of the claimed composition since the protein hydrolysate is obtained from the same process as the extract claimed in the patent
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive. Applicant argues that the extract of ‘587 is obtained by ultrafiltration and would necessarily be different because the present claim recite the produce comprises major fraction P1, P2 or P3. The examiner is not persuaded by this argument because the protein hydrolysate and the extract comprising peptide hydrolysate claimed in ‘587 are both obtained from moringa peregrina seed. Furthermore, the patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore the rejection has been maintained because the claims encompass overlapping products which are not patentably distinct.
Claims 6-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,717,476. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a protein hydrolysate from Moringa peregrina seed cake fraction P1 comprising amino acid derivatives, peptides and glycopeptides with a molecular weight of between 1,500-5,000 Da and/or P2 (10,000-17,000 Da) and or P3 (approximately 23,000) whereas the patent is drawn to an extract of Moringa peregrina seed cake comprising peptide hydrolyzate. However, the protein hydrolysate and the extract comprising peptide hydrolyzate are both obtained by proteolysis pt a pH greater than 13 for 2 hours at a temperature of 16-25˚C. The density and fractions with molecular weight 10,000-17,000 Da of about 23,000 Da is not specified in the patent claims, however, it would be an inherent property of the claimed composition since the protein hydrolysate is obtained from the same process as the extract claimed in the patent.
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive. Applicant argues that the extract of ‘476 is obtained by solid-liquid extraction and would necessarily from the claimed invention which comprises major fraction P1, P2 or P3. The examiner is not persuaded by this argument because the protein hydrolysate and the extract comprising peptide hydrolyzate are both obtained from moringa peregrina seed. Furthermore, the patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore the rejection has been maintained because the claims encompass overlapping products which are not patentably distinct.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1611
Prosecution Insights