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 .
DETAILED ACTION
Response to Amendment
As a result of the amendments to the claim, the rejection under 35 U.S.C. 112 have been withdrawn.
All rejections not repeated in this Office Action have been withdrawn.
Claims 1-13 are currently pending in this Office Action.
Claim Rejections - 35 USC § 112
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 1-13 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.
Regarding Claim 1, the term “the beginning extraction temperatures” recited in the second to last line lacks sufficient antecedent basis. Also, the term “temperatures” would suggest there are multiple temperatures involved, therefore, it is not clear as to what constitute a “beginning extraction temperatures”; that is, whether it is the initial starting temperature, or one of the temperatures within an indefinite “beginning” of the extraction.
Claims 2-13 are rejected based on its dependency on a rejected claim.
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) 1-7, 11, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (CN 108157551 A- see machine translations).
Regarding Claims 1 and 4, Huang discloses a method for producing a combined extract liquid, comprising:
extracting a first material to be extracted with a first deionized water (all Examples 1-6 uses de-ionized water), wherein the extracting a material comprises removing an extract solution while leaving an extract residue after the extraction (Step 1, Pg. 2 of the translations);
performing, at least once on the extraction residue, actions comprising:
obtaining at least one extract liquid by adding an additional deionized water to extract at least some of the extraction residue (Step 2, Pg. 2 of the translations); and
removing the at least one extract liquid after extraction of at least some of the extraction residue (“separating solid and liquid to obtain the second tea extract solution”, Step 2, Pg. 2 of the translations); and
mixing the extract solution and one or more of the at least one extract liquid to obtain a combined extract liquid (Step 4, Pg. 2 of the translations);
wherein the beginning extraction temperatures is at a temperature of 5°C (“the extracting temperature is -5~5 degrees centigrade”, Pg. 3, second paragraph of the translations) which is within the claimed range of 5°C to 100°C and 5°C to 35°C (as per Claim 4).
Regarding Claims 2-3 and 13, Huang further teaches wherein the material to be extracted comprises components of herbaceous plants such as green tea leaves (green tea, Step 4, Pg. 2 of the translations).
Regarding Claim 5, Huang further teaches wherein a mass ratio of tea leaves to the deionized water used for extraction is in a range of 1:8 to 1:10 (Pg. 3, first paragraph of the translations).
Regarding Claim 6, Huang further teaches wherein the extracting of the first material or the extraction residue is carried out for a time of between 5 to 20 minutes (Pg. 3, second paragraph of the translations).
Regarding Claim 7, Huang’s disclosure of steps 1-4 on Pg. 2 of the translations is construed to repeat the extraction on the extraction residue step 0 times.
Regarding Claim 11, Huang further teaches wherein the extraction is carried out without stirring; that is, Steps 1 and 2 recite extracting steps and are silent to stirring (Pg. 2 of the translations).
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 108157551 A- see machine translations).
Regarding Claim 8, Huang is silent to wherein the temperature of the deionized water of the extracting the material step is the same as the additional deionized water in the obtaining the extract liquid step. However, Huang recognizes that temperature plays a role in the particular compounds extracted in the tea leaves. That is, using a temperature of -5°C-5°C is beneficial to obtain a fragrant and fresh tasing product, and using a temperature of 20°C-35°C (page 3, fifth paragraph of the translations) is beneficial to extract active substances as well as additional flavor substances (see ‘The beneficial effects of the invention are:’, bottom of page 3 of the translations). Therefore, since both temperature conditions are within the claimed range of 5°C to 100°C, it would have been obvious to one of ordinary skill in the art to modify the temperatures of the deionized water to be the same in both the extracting step and the obtaining step based on the desired flavor profile of the brewed tea beverage. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Since Applicant’s specification recites that the deionized water “used for extraction in each step” is optionally the same (page 3, lines 26-29), the limitation is not construed to be critical.
Claim(s) 9, 10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 108157551 A- see machine translations) in view of Han et al. (CN 102754711 A- see machine translations).
Regarding Claim 9, while Huang is directed to deionized water, Huang does not specifically recite wherein the first deionized water and the additional deionized water comprises one or more of: anion-cation resin exchanged deionized water; distilled water; RO water. “RO” is construed to be ‘Reverse Osmosis’ as defined by Applicant’s specification (Page 7, ln. 28-29). Han is relied on to teach a method of making a brewed tea beverage product (see abstract) using deionized water that has been purified through reverse osmosis as well as deoxidized (deoxidized and de-ionized reverse osmosis water, see abstract). This allows the tea product to reduce bad smell and coloring caused by a sterilization process and retain the flavors of the fresh tea (see paragraph 1). Therefore, since Huang also comprises a step of sterilizing (Step 2, page 3 of the translations), it would have been obvious to one of ordinary skill in the art to use deoxygenized and deionized reverse osmosis water to reduce undesired odor and coloring that occurs during a sterilization process.
Regarding Claim 10, Huang is silent to wherein the extracting comprises adding the material to be extracted before adding the deionized water. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Since Huang is also directed to a brewed tea beverage using deionized water at a temperature within the claimed range and produces a tea beverage having acceptable flavors, the order of adding the material to be extracted before adding the deionized water is not patentably distinct over the prior art. In any case, Han is relied on to teach a method of brewing tea which comprises the step of adding the material to be extracted prior to adding the deionized water (see paragraph 10 of the translations). Therefore, since both Huang and Han are directed to method of extracting green tea materials, it would have been obvious to one of ordinary skill in the art to add the extract material before adding deionized water as a substitution of equivalents known for the same purpose (see MPEP 2144.06).
Regarding Claim 12, while Huang is directed to combining tea leaves with deionized water, Huang does not specifically recite wherein the extraction is carried out using one or more of: a tank; a basket; a drip extraction apparatus. However, the extraction would have necessarily been carried out in at least some type of vessel that may be construed as a “tank”. In any case, Han is relied on to teach a method of brewing tea within a sealed extracting tank (see paragraph 10 of the translations). Therefore, since both Huang and Han are directed to extracting tea leaves using deionized water, it would have been obvious to one of ordinary skill in the art to perform the extracting step within a tank to sufficiently carry out the extraction.
Response to Arguments
Applicant’s arguments in the response filed 29 Dec 2025 has been considered, but is found not persuasive over the prior art.
Applicant argues that the Huang reference is directed to an extraction using ice water and therefore does not teach an extraction temperature of 5°C (page 6 of the remarks). Applicant further notes that thermodynamic equilibrium dictates that the temperature decreases until the ice fully melts. The argument is not persuasive because Huang explicitly recites “in the step 1), the extracting temperature is -5~5 degrees centigrade” (page 3, second paragraph) thus presenting a prima facie case of obviousness over the claimed range. In fact, Huang discloses that the extracting temperature, as a whole, is -5~5 degrees centigrade, or more specifically 3~5 centigrade, thus intending for embodiments with extractions occurring at temperatures above 0 and including 5 degrees centigrade as instantly claimed . For these reasons, the prior art rejection is maintained. Furthermore, the fact that ice is used does not inherently mean that the water mixture of Huang is below 5°C because it is not clear what the starting temperature of the water is prior to adding ice, and it is not clear how much ice is being used relative to the amount of water being used. Also, it is not clear how fast the water is being heated by the environment. For example, the water may heated by the environment at a rate similar to the rate the ice is cooling down the water. What is clear is that the extraction temperature is carried out at -5~5 degrees centigrade, which is construed to include the beginning extraction temperatures. For these reasons, Applicant’s arguments are not persuasive over the prior art.
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 THANH H NGUYEN whose telephone number is (571)270-0346. The examiner can normally be reached 10am-6pm.
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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