DETAILED ACTION
The receipt is acknowledged of applicant’s election filed 02/06/2026, and IDS filed 02/23/2023.
Claims 1-70 are pending.
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 .
Election/Restrictions
Applicant’s election without traverse of invention I, species berries for the fruit, and species (O) for the process of invention I, claims 1-6, 13, 29, 33-37, in the reply filed on 02/06/2026 is acknowledged.
Claims 7-12, 14-28, 30-32, 38-70 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/06/2026.
Claim Rejections - 35 USC § 112 (b)
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 4, 5, 33-37 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 claims 4 and 5, the expression “about 50% or more” does not set forth the metes and bounds of the claim. Recourse to the specification does not define the expression. The expression permits two contradicting interpretation of the claims. The term “or more" permits only values more than 50%, while the term “about” permits values below and above the claimed value, usually 10% unless otherwise defined in the specification. The boundaries of coverage is not imposed by the disclosure.
Claim 33 recites the limitation "the temperature of the mixture" in sentence bridging the first and second lines of the claim. There is insufficient antecedent basis for this limitation in the claim or in claim 1 from which claim 33 depends.
Claim 34 recites the limitation "the temperature of the mixture" in sentence bridging the first and second lines of the claim. There is insufficient antecedent basis for this limitation in the claim or in claim 1 from which claim 33 depends.
Claim 34 recites the limitation "the water activity of the mixture" in the second line of the claim. There is insufficient antecedent basis for this limitation in the claim or in claim 1 from which claim 34 depends.
Claim 35 recites the limitation "the temperature of the mixture" in sentence bridging the first and second lines of the claim. There is insufficient antecedent basis for this limitation in the claim or in claim 1 from which claim 35 depends.
Regarding claim 35, the expression “more than about 30 minutes” does not set forth the metes and bounds of the claim. Recourse to the specification does not define the expression. The expression permits two contradicting interpretation of the claims. The term “more than" permits only time more than 30 minutes, while the term “about” permits values below and above the claimed value, usually 10% unless otherwise defined in the specification. The boundaries of coverage is not imposed by the disclosure.
Claims 36 and 37 recite the limitation "the water activity of the liquid fraction" in the sentence bridging the second and third lines of each claim. There is insufficient antecedent basis for this limitation in the claims or in claim 1 from which claims 36 and 37 depend.
Claim Rejections - 35 USC § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 13, 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Burgos et al. (US 2011/0268825) and RU 2452277 (hereinafter RU ‘277), both references are currently cited on PTO 892, and copy of machine translation of RU reference is currently provided.
Applicant Claims
Claim 1 is directed to a method of making a fruit or berry extract, comprising:
separating a fruit or berries into a polyphenol-containing liquid fraction and a fibercontaining solid fraction;
concentrating the liquid fraction to form a concentrated liquid fraction;
combining the concentrated liquid fraction with a solid carrier to form a mixture; and
drying the mixture to form the extract.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Burgos teaching method of extracting polyphenol, e.g. anthocyanidin, from berries (abstract; ¶¶ 0002, 0012-1-0015). Berries can be extracted from different kind of berries including Aristotelia chilensis, i.e. maqui berries (¶¶ 0040-0042, 0058). The reference teaches using the berries extract in pharmaceutical composition comprising the extract and a solid carrier (¶¶ 0099, 0100). The reference teaches method of extraction of polyphenolic compounds from the frozen berries that is concentrated at a temperature between 25oC and 40oC, e.g. 30oC, under vacuum to achieve half the weight of the berries, and to dry the extract, wherein the extract comprises 30-95% polyphenols. The extract can be a solid or liquid substance extracted from a plant, containing its essence in concentrated form. The "carrier" refers to carrier materials suitable for administration of polyphenols, that are non-toxic conventionally used in pharmaceuticals that may improve stability or bioavailability of the active agent (¶¶ 0090, 0091, 0097, 0103-0105; claims 89-93). The extract can be in the form of pellets (¶ 0098).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
While Burgos teaches extraction of liquid fraction of berries that implies the presence of liquid and solid fractions of the berries in the extract, and teaches the extract can be a solid or liquid substance extracted from the berries, containing its essence in concentrated form however, the reference does not explicitly teach separating the berries into liquid fraction and fiber-containing solid fraction as claimed by claim 1.
RU ‘277 teaches production of berries concentrate including a step of separating the berries into liquid fraction and solid fraction, i.e. fiber containing fraction, and then concentrating the liquid fraction under vacuum at a temperature of 50oC-60oC. The solid dry substance forming 40-45% in the mixture that provides good organoleptic properties. This process of production yields increase, low viscosity of the liquid concentrate and enhancement of quality, and increases the content of biologically active polyphenolic compounds in the extract (abstract; ¶¶ 0010, 0011, 0041; claim 1). Table 2, paragraph [0015] shows that the dry matter content is 40% and comprises polyphenols.
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to extract berry by the process comprising the step of concentrating liquid frozen berries, and combining the concentrated liquid fraction with a solid carrier and drying the mixture as taught by Burgos, and add a step of separating liquid fraction and fiber containing solid fraction as taught by RU ‘277. One would have been motivated to do so because RU ‘277 teaches this process of production provides enhancement of quality, and increases the content of biologically active polyphenolic compounds in the extract that provides good organoleptic properties. One would reasonably expect to extract berries by the process comprising the step of separating liquid and solid fraction of the berries, concentrating liquid frozen fraction of the berries, and combining the concentrated liquid fraction with a solid carrier and drying the mixture, wherein the process provides increasing the content of biologically active polyphenolic compounds in the extract that provides good organoleptic properties.
Note that claim 1 requires four steps: 1) separating liquid and solid fraction, 2) concentrating the liquid fraction, 3) combining the concentrated liquid with a carrier and 4) drying the mixture; and the claimed four steps are taught by combination of the cited references.
Regarding maqui berries claimed by claim 2, Burgos teaches extraction of polyphenols from maqui berries.
Regarding claim 3 that the fiber containing solid fraction comprises polyphenols from the berries, Burgos teaches the extract comprising polyphenols can be liquid or solid, and RU ‘277 teaches solid fraction, i.e. fiber containing fraction, containing polyphenols. Berries are expected to have polyphenols in both liquid and fibers.
Regarding claim 4 that the solid fraction comprises about 50% or more of polyphenols from the berries, such amount is based on the type of berries used and the method of separation of the solid fraction, and steps of extraction and drying.
Regarding claim 5 that the polyphenol liquid fraction comprises about 50% or more of the polyphenols from the berries, such amount is based on the type of berries used and the method of separation of the liquid fraction, and steps of extraction and drying.
Regarding claim 6 that the solid carrier comprises portion or all of the solid fraction, based on the final product comprising the extract and its intended use, one having ordinary skill in the art would have determined the desired amount of the solid fraction in the final product. One having ordinary skill in the art would have used the solid fraction as a carrier to gain the benefit of the polyphenols in the solid fraction along with the polyphenols in the liquid fraction
Regarding claim 13 that the liquid fraction is concentrated at a temperature about 10oC to about 30oC, Burgos exemplifies temperature of 30oC and suggests 25-40oC that embrace the claimed temperature. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Regarding claim 33 that drying is performed at a temperature of 50oC or less, Burgos teaches drying under vacuum at temperature of 25-40oC that overlaps with the claimed temperature. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Regarding claim 34 that temperature of the mixture increases as the water activity of the mixture increases during drying, this is expected property from the prior art method using the same steps and same temperature as claimed.
Regarding claim 35 that temperature of the mixture does not exceed 30oC for more than 30 minutes as claimed by claim 35, the reference suggests 30oC, and one having ordinary skill in the art would have determined the desired period of drying based on the desired product and its intended use.
Regarding claims 36 and 37 concerning concentration temperature and water activity of the liquid fraction, this is expected property from the prior art method using the same temperature as claimed.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Burgos and RU ‘277 as applied to claims 1-6, 13, 33-37 above, and further in view of the article by Zielinska et al. (“Effects of freezing, convective and microwave-vacuum drying on the content of bioactive compounds and colors of cranberries”, currently provided).
Applicant Claims
Claim 29 recites that the method of claim 1 comprising pelleting the mixture to form a pelleted mixture; freezing the pelleted mixture to form a frozen, pelleted mixture; and drying the frozen pelleted mixture by applying a vacuum and microwave power to the frozen, pelleted mixture, to form the extract.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The combined teachings of Burgos and RU ‘277 are previously discussed in this office action.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
While Burgos teaches the steps pelleting, freezing and drying using vacuum, the reference however does not teach applying microwave power as claimed by claim 29.
Zielinska teaches frozen berries dried by microwave vacuum seems to be a good alternative to convective drying of berries in terms of phytochemical and colors and is characterized by significant high content of polyphenols (see the entire document, and in particular the abstract and page 207).
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to extract polyphenol from berries using a process comprising step of drying frozen pelleted berries using vacuum as taught by the combination of Burgos and RU ‘277, and dry the frozen pelleted berries by a process of microwave vacuum taught by Zielinska. One would have been motivated to do so because Zielinska teaches drying frozen berries by microwave vacuum seems to be a good alternative to convective drying of berries in terms of phytochemical and colors and is characterized by significant high content of polyphenols. One would reasonably expect producing a berries extract from frozen pelleted berries that is dried by microwave-vacuum that is characterized by significant high content of polyphenols.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention.
Minor Informalities
Claim 1 recites the following minor informality: in the third line of the claim, the claim recites the term “fibercontaining”, it seems that the term is misspelling of the term “fiber containing” as claimed by claims 3, 4 and 6. Appropriate correction is required.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Isis A D Ghali whose telephone number is (571)272-0595. The examiner can normally be reached Monday through Friday, 8:30 AM to 5:00 PM EST.
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.
/Isis A Ghali/Primary Examiner, Art Unit 1611
Prosecution Insights