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 .
Application Status
Claim 1, 6-8, 15-18, 21-23 and 26-29 are under examination.
Claim 2-5, 9-14, 19-20 and 24-25 are cancelled.
Claim 1, 6-8, 15-18, 21-23 and 26-29 are rejected.
No claims are allowed.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 6, 7, 8, 15, 16, 17, 18, and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chien et al. (US 8,197,875 B2).
Regarding claim 1 and 6, Chien et al. (Chien) discloses a solution (composition) of chlorogenic acids from a green coffee bean extract (natural extract/concentrated extract) (‘875, col. 11, Example 8) wherein the green coffee bean extract is obtained from green robusta coffee beans (‘875, col. 8, Example 1, ln. 5-35). Chien’s solution (composition) includes water (carrier) (‘875, col. 11, 21-22). Chien discloses a content of the chlorogenic acids is about 35% by weight of the extract (‘ 875, col. 8, ln. 24-26), which is in range with the cited range of claim 1 and 6.
With respect to the recitation of “extracted using methanol/water solvent”, is a product by process limitation, wherein attention is directed to MPEP 2113 I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[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).
Regarding claim 7, Chien discloses the chlorogenic acids comprising 3-CQA in an amount of 11.52 % by weight (‘875, col. 8, ln. 30-35), which is in range with the cited range.
Regarding claim 8, Chien discloses the chlorogenic acids from the green coffee bean extract (natural extract/concentrated extract) includes 3,5-dicaffeoylquinic acid (iso-chlorogenic acid A) (‘875, col 6, ln. 15-16).
Regarding claim 15, it is noted the cited “wherein the composition does not have a precipitate under at least one of the following conditions after storage, during storage and light exposure, is considered a functional limitations of the claimed product when it’s at after storage, during storage and light exposure; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Chien discloses the claimed invention as discussed in claim 1, hence meets the functional limitations as set forth in claim 15.
Regarding claim 16, 17 and 18, Chien discloses a method of adding the composition to a beverage, food product (‘875, col. 11, Example 6, ln. 15-35). With respect to the recitation of “to prevent oxidation of at least one of flavours and colours in a beverage or food product” in claim 18, is considered a functional limitations of the claimed product when it’s at after storage, during storage and light exposure; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990). Chien discloses the claimed invention as discussed in claim 1, hence meets the functional limitations as set forth in claim 18.
Regarding claim 21, 22 and 23, the limitations are directed to process limitation; however the claim is a product claim hence see MPEP 2113 I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[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).
With respect claim 23, Chien discloses a content of the chlorogenic acids is about 35% by weight of the extract (‘ 875, col. 8, ln. 24-26), which is in range with the cited range of claim 23.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Chien et al. (US 8,197,875 B2) in view of Tojo Hiroaki et al. (JP H0638723 A, Machine Translation).
Regarding claim 26, 28, and 29, Chien et al. (Chien) discloses a spray-dried powder (composition) of chlorogenic acids from a green coffee bean extract (natural extract/concentrated extract) (‘875, col. 7, Example 60-67) with carriers; wherein the green coffee bean extract is obtained from green robusta coffee beans (‘875, col. 8, Example 1, ln. 5-35). Chien discloses a content of the chlorogenic acids is about 35% by weight of the extract (‘ 875, col. 8, ln. 24-26), which is in range with the cited range of claim 26 and 29.
Chien does not explicitly disclose the carriers. However, Tojo Hiroaki et al. (Tojo) discloses a composition comprising an antioxidant component chlorogenic acid (‘723, pg. 2, second to last paragraph), wherein the chlorogenic acid is a natural extract from coffee (plant biological material) (‘723, pg. 2, last paragraph, pg. 3, first paragraph) and carrier, wherein the carriers including water, propylene glycol (mono propylene glycol), glycerin (glycerine) (‘723, pg. 3, third paragraph). Tojo and Chien are of the same endeavor of food additive comprising chlorogenic acids with carriers. It would have been obvious to one of ordinary skill in the art to be motivated to employ Tojo’s carriers in Chien’s powder since Tojo clearly teaches known and successful combination of carriers with chlorogenic acids for application in food product.
With respect to the recitation of “extracted using methanol/water solvent” as recited in claim 26 and 29, is a product by process limitation, wherein attention is directed to MPEP 2113 I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[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).
Regarding claim 27, Chien discloses the chlorogenic acids comprising 3-CQA in an amount of 11.52 % by weight (‘875, col. 8, ln. 30-35), which is in range with the cited range.
Response to Arguments
Applicant asserts “…the "consists of" language closes the "carrier" to only water. In other words, the "carrier" cannot contain non-water carriers. There is no disclosure in Chien to use only water as a carrier.…”.
Applicant's arguments filed 07/02/2026 have been fully considered but they are not persuasive. It is noted the transitional phrase of the claim is “comprising” in claim 1, line 1; claim 26, line 1 and claim 29, line 1; wherein the claims are open-ended to include additional components and step(s). In response to Applicant’s remarks of “consisting” in claims; it is noted the phrase “consisting” in the claims is in the body of the claims and not in the preamble of the claim 1, 26 and 29.
Attention is directed to MPEP 2111.03, II, wherein “…[w]hen the phrase "consisting of" appears in a clause of the body of a claim, rather than immediately following the preamble, there is an "exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements." Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359, 119 USPQ2d 1773, 1781 (Fed. Cir. 2016) (a layer "selected from the group consisting of" specific resins is closed to resins other than those listed). However, the "consisting of" phrase limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) (The claims at issue "related to purified DNA molecules having promoter activity for the human involucrin gene (hINV)." Id., 73 USPQ2d at 1365. In determining the scope of applicant’s claims directed to "a purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO:1 wherein said portion consists of the nucleotide sequence from … to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity," the court stated that the use of "consists" in the body of the claims did not limit the open-ended "comprising" language in the claims (emphases added). Id. at 1257, 73 USPQ2d at 1367.
Conclusion
THIS ACTION IS MADE FINAL. 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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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