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 .
Claims 1,4-5,8-24 and 26-31 are pending.
Claims 4-5,8-24 and 26-31 remain withdrawn. Applicant asserts that the extracts in Marker were from Hesperaloe, and therefore, Applicant believes Marker was not relevant to the instant invention. Applicant’s argument is not found persuasive as the claims read upon pure furcreastatin or yuccaloiside C which are both taught in the art, including Gomes as demonstrated below.
Claim 1 is currently under consideration to the extent that it reads upon Applicant’s elected species.
It is noted that Applicant elected the composition of claim 1, wherein said election therefore includes:
The specific components present:
at least one of the saponins recited in claim 1,
The saponin is water soluble,
The specific amount of the saponin: at least 5%,
No additional components were identified as present.
No specific components were identified as excluded.
Rejections Maintained and Made Again in view of Applicant’s Amendments
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.
Claim(s) 1 (all claims currently under consideration) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gomes et al (CA 3071684).
Gomes teaches an extract characterized in that it comprises at least one steroidal glycoside from selected from the group including yuccaloiside C (see entire document, for instance, claim 6, and page 4, lines 12-15).
It is noted that the instant claims are directed to a composition, wherein how the composition is obtained, including the source material, do not appear to materially change the composition itself. As such, the prior art teaching of yuccaloiside C reads on the instant claim.
Response to Arguments
Applicant argues in the remarks filed 04/20/2026 that the prior art does not teach at least one saponin selected from the group taught in newly amended claim 1. Applicant’s argument is not found persuasive in as much as Gomes teaches at least yuccaloiside C.
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.
Claim 1 (all claims currently under consideration) is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-27 of copending Application No. 18/011,335 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach the presence of 25(27)-dehydrofucreastatin, 5(6), 25(27)-disdehydroyuccaloiside, 5(6)-disdehydroyuccaloiside, furcreastatin and yuccaloiside (see entire claims set, for instance, claim 6) in an amount of 10-25% (see entire claims set, for instance, claim 8).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant asserts that since allowable subject matter has not been identified in either of these applications, the rejection is premature. Applicant’s argument is not found persuasive against the ground of rejection, and therefore, the rejection is maintained.
Claim 1 (all claims currently under consideration) is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-25 of copending Application No. 18/011,341 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach the presence of 25(27)-dehydrofucreastatin, 5(6), 25(27)-disdehydroyuccaloiside, 5(6)-disdehydroyuccaloiside, furcreastatin and yuccaloiside (see entire claims set, for instance, claim 7) in an amount of 15-25% (see entire claims set, for instance, claim 10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant asserts that since allowable subject matter has not been identified in either of these applications, the rejection is premature. Applicant’s argument is not found persuasive against the ground of rejection, and therefore, the rejection is maintained.
Claim 1 (all claims currently under consideration) is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-26 of copending Application No. 18/571905 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach the presence of 25(27)-dehydrofucreastatin, 5(6), 25(27)-disdehydroyuccaloiside, 5(6)-disdehydroyuccaloiside, furcreastatin and yuccaloiside (see entire claims set, for instance, claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant asserts that since allowable subject matter has not been identified in either of these applications, the rejection is premature. Applicant’s argument is not found persuasive against the ground of rejection, and therefore, the rejection is maintained.
Claim 1 (all claims currently under consideration) is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/571,922 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach the presence of 25(27)-dehydrofucreastatin, 5(6), 25(27)-disdehydroyuccaloiside, 5(6)-disdehydroyuccaloiside, furcreastatin and yuccaloiside (see entire claims set, for instance, claim 3) in an amount of 0.1-10% (see entire claims set, for instance, claim 2).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant asserts that since allowable subject matter has not been identified in either of these applications, the rejection is premature. Applicant’s argument is not found persuasive against the ground of rejection, and therefore, the rejection is maintained.
New/Modified ground of rejection in view of the copending Application issuing
Claim 1 (all claims currently under consideration) is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,576,098 (Application number 18/011326). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach the presence of 25(27)-dehydrofucreastatin, 5(6), 25(27)-disdehydroyuccaloiside C, 5(6)-disdehydroyuccaloiside C, furcreastatin and yuccaloiside (see entire claims set, for instance, claim 9) in an amount of at least 5% (see entire claims set, for instance, claim 1).
Response to Arguments
Applicant asserts that since allowable subject matter has not been identified in either of these applications, the rejection is premature. Applicant’s argument is not found persuasive for at least the reason that the patented claims have been issued.
Conclusion
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 TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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