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
Status of the Claims
Receipt of Remarks/Amendments filed on 01/13/2026 is acknowledged. Claims 1-6, 13, 15-18, 34, 39-40 and 47 are pending. Claims 7-12, 14, 19-33, 35-38, and 41-46 are cancelled. Claim 47 is new. Claims 1-5, 13, 15, 17-18, and 40 have been amended. Claims 1-6, 13, 15-18, 34, 39-40 and 47 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/09/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Modified Objection/Rejection As Necessitated by the Amendment Filed 01/13/2026
Claim Objections
Claim 47 is objected to because of the following informalities: The list of components in Claim 47 should be listed with a) and b), not c) and d). Appropriate correction is required.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 13, 15-16, 18, and 47 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jensen et al. (EP1129627 A1), hereinafter Jensen.
Jensen discloses a natural feed additive comprising a first active component containing saponin based from Yucca, Quillaja, Azadirachta and/or Tirgonellan, and a second active containing antibacterial substance from citrus, hips, grapes, green pepper or Lamiaceae family (Abstract). Jensen teaches obtaining the first and second active components obtained by extraction or pressing followed by isolation and/or drying into a powder ([0024], [0032], [0049]-[0051]). Jensen discloses different additives comprising the combinations of components (Examples 1-5).
Regarding Claims 1-2, 15-16, and Claim 18, Jensen expressly teaches the production of feed additive comprising yucca powder, oregano powder and rosemary powder (Example 4). The feed additive reads on the feature of “food…for animals”. Jensen teaches that the plant material containing approximately 8% by weight of saponin must be included in the recipe [0024]. When a specific recipe indicates 35 g of Yucca-powder, and the Yucca-powder available only contains 4% by weight of saponin, it is necessary to use 70 g of the Yucca-powder [0024]. By Examiner’s calculation, 8% is equivalent to 80,000 ppm which is within the claimed range in Claim 18.
Regarding Claim 13, Jensen relates that saponin-containing or flavonoid-containing plant materials in animal feed for farm animals are known to improve the environment as well as the state of health of animals, wherein the compositions are admixed into animal feed and causes a reduced release of ammonium and sulphur gases from the animals [0006]. Jensen teaches compositions can comprise a mixture of saponin, inclusive of garlic [0006]-[0007].
Regarding Claim 47, Jensen teaches the natural feed additive comprises saponin obtained from Yucca, Quillaja etc., and an antibacterial substance from inter alia Lamiaceae family (Claim 1).
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 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 3-6, 17, and 39 are rejected under 35 U.S.C. 103(a) as being unpatentable over Jensen, as applied to Claim 1 above, and in view of Choe et al. (KR 2011-0130074A, Machine Translated in IP.com), hereinafter Choe.
The teachings of Jensen are set forth above.
Jensen does not expressly teach the phenolic diterpene.
Regarding Claims 3-4, 6, and 39, Choe discloses antibacterial composition in the form of feed additive, comprising 0.5-1% carnosic acid as active ingredient, wherein the carnosic acid is isolated from rosemary extract (Abstract; Claims 1-4). The concentration of carnosic acid touches the at least about 1% claimed, and renders the amount in Claim 4 obvious.
Both Choe and Jensen are in the feed additive field, and teach antibacterial substances in the feed. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Choe with Jensen and incorporate about 1% carnosic acid from rosemary extract, which both have identified to be useful for feed additive. The conclusion of obviousness is grounded on the rationale that some teaching, suggestion, or motivation in the prior art would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings and arrive at the claimed invention. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Regarding Claim 5, Choe discloses 1% carnosic acid whereas Jensen teaches 8% saponin in its composition. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to start with this amounts of actives, which gives a ratio of 1:8 carnosic acid to saponin, and is within the claimed range.
Regarding Claim 17, Choe discloses 1% carnosic acid, which corresponds to 10,000 ppm, and is within the claimed range.
Claim 34 is rejected under 35 U.S.C. 103(a) as being unpatentable over Jensen as applied to Claim 16 above, and in view of Berdahl et al. (US 7,550,162 B2), hereinafter Berdahl.
The teachings of Jensen have been set forth above.
Regarding Claim 34, Berdahl discloses a packaged food product comprising the food with an antioxidant which contains a rosemary herb acid selected from the group consisting of carnosic acid, carnosol etc., wherein the food has been packaged by modified atmosphere packaging in an atmosphere comprising 20% or more oxygen and a mixture of carbon dioxide and nitrogen (Claims 1-6). Berdahl teaches that hop extracts containing beta acids, in combination with Labiatae herb extracts, most preferably rosemary extract, containing, carnosic acid, carnosol and/or rosmarinic acid, enhance the color shelf life and retard the growth of microorganisms in meat, fish and poultry stored in an atmosphere that contains 20% or more oxygen (Col. 6, lines 44-51). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Jensen and use the composition in Berdahl comprising the feed-additive containing rosemary in packaged food or feed under 20% oxygen or more in order to retard the growth of microorganisms.
Claim 40 is rejected under 35 U.S.C. 103(a) as being unpatentable over Jensen in view of Choe, as applied to Claims 3 and 39, and in further view of Aguilar (Of record).
The teachings of Jensen and Choe are above. These references do not expressly teach other phenolic diterpene derivatives.
Aguilar teaches rosemary extract for use as flavouring in processed food and drinks, i.e. incorporating the rosemary extracts in food products, e.g., meats, sauces, seasonings, dietary supplements, flavorings, and soft drinks (p. 12-29, Section 1.7, 2nd paragraph; Table 4). Aguilar relates that the antioxidant activity of rosemary extract can be attributed mainly to two components, carnosic acid and carnosol, which is a carnosic acid derivative (p. 9-29, Section 1.3, 1st paragraph).
Aguilar teaches rosemary extracts prepared using different production process, which gives varying amounts of phenolic diterpenes, carnosol and carnosic acid (pp. 6-29 to 7-29, Section 1.2. For example, Aguilar teaches a rosemary extract D74 comprising 8.7% carnosic acid and 1.3% carnosol (Extract D74, Table 1, p. 8-29). Aguilar also teaches the extract comprising 0.65 mg/kg Genkwanin (Extract D74, Table 1, p. 8-29).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Aguilar with that of Jensen and use rosemary extract comprising phenolic diterpenes carnosic acid and carnosol, which Aguilar teaches to provide antioxidant activity of rosemary extract.
Response to Arguments:
The gist of Applicant’s argument is that DeLease does not teach the saponin expressly in the Quillaja or yucca extract, and the combination with Lamiaceae extract.
The modified rejection supra was necessitated by the amendment and no longer relies on DeLease.
Applicant argues that that the claimed combination of Quillaja and/or yucca with Lamiaceae extract shows unexpected synergistic effect, which cannot be expected over DeLease.
As stated, the modified rejection supra was necessitated by the amendment and no longer relies on DeLease. This rejection now relies on Jensen as primary art which teaches a natural feed additive comprising saponin based from Yucca, Quillaja, Azadirachta and/or Tirgonellan, and a second active containing antibacterial substance from citrus, hips, grapes, green pepper or Lamiaceae family (Abstract). Therefore, one skilled in the art taking guidance from the teachings of Jensen would reasonably expect the same effect being argued by Applicant. Please see MPEP §716.02(b)[R-2], which states, “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’ Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)”.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 6, 16-17, 34, 39-40, and 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-2, 11, and 14-15 of US 10,321,695 B2, hereinafter ‘695, in view of Jensen.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to the same subject matter and composition components.
Both the instant claims and ‘695 are drawn to a composition comprising Lamiaceae extract selected from rosemary extract, oregano extract, thyme extract etc., and contains phenolic diterpenes selected from carnosol, carnosic acid, etc. at overlapping amounts claimed. The difference lies in the intended use of ‘695, and that ‘695 does not teach the combination with a Quillaja or yucca saponin. However, Jensen cures the deficiency of ‘695. The teachings of Jensen have been set forth in the rejections above. ‘695 and Jensen both recognize the antibacterial properties of the Lamiaceae extract and saponin based from Yucca and Quillaja, and therefore are compatible.
Therefore, the claims are drawn to the same subject matter and are not patentably distinct from the instant claims.
Response to Arguments:
The crux of Applicant’s argument is that ‘695 does not teach the combination of one Lamiaceae extract and an at least Quillaja or yucca saponin.
The modified rejection supra was necessitated by the amendment and now relies on ‘695 in view of Jensen.
Conclusion
No claims are 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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792