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 .
Formal Matters
Claims 1-13 are pending.
Election/Restriction
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on 01/06/2026 is acknowledged.
Applicant also elected the following in the reply filed on 01/06/2026:
Pu’er tea as the species of tea leaves; and
Butylene glycol as the species of physiologically acceptable solvent.
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-7 are being examined to the extent of the elected species, i.e., the tea leaves are pu’er tea and the physiologically acceptable solvent is butylene glycol.
Priority
This application is a 371 of PCT/EP2021/082631 filed 11/23/2021, claiming priority to FR 2012019 filed 11/23/2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) filed 05/05/2023 and 01/06/2026 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action.
In the IDS filed 05/05/2023, Foreign Patent Document Cite No. 7 is lined through because there is no document in the case file corresponding to WO 2020/089831 A1 with the publication date of 08/12/2021 by ISP Investments LLC/Oger Elodie. Instead, there is a document in the case file corresponding to WO 2021/156104 A1 with the publication date of 08/12/2021 by ISP Investments LLC/Oger Elodie.
Claim Objections
Claims 1 is objected to because of the following:
In line 6 of claim 1, a space should be added between “80” and the degree symbol for grammatical correctness;
In line 7 of claim 1, the period appearing before the semicolon should be deleted to improve claim readability; and
In claim 1, either remove “(PVPP)” from line 13 or replace “polyvinylpolypyrrolidones” in line 14 with “PVPP” for proper use of the abbreviation and to improve claim readability.
Appropriate correction is required.
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 1-7 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.
(a) Claim 1 is indefinite in the recitation of “tea leaves (Camellia sinensis)” in line 1 because the use of parentheticals makes it is unclear whether ‘Camellia sinensis’ is merely an exemplary embodiment and not required by the claim, or whether ‘Camellia sinensis’ is a further limitation and required, or whether something else is meant by the parentheticals. Claims 2-7 are rejected for depending from claim 1 without resolving the ambiguity.
(b) Claim 1 is indefinite in the recitation of “and then possibly crushing them” in line 3 because it is unclear whether ‘and then crushing them’ is a part of the claimed invention. See MPEP § 2173.05(d). Claims 2-7 are rejected for depending from claim 1 without resolving the ambiguity.
(c) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “ratio of 3% to 20% w/w” and also recites the narrower statement of the range/limitation “preferably in a ratio between 3% and 10%”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
(d) Claim 3 is indefinite in the recitation of “between 1 and mM” in line 2 because it is unclear what range is meant by this phrase.
(e) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation (and indefinite recitation; see (d) above) “between 1 and mM” and also recites the narrower statement of the range/limitation “preferably between 1 and 5 mM”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
(f) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “between 5.8 and 6.5” and also recites the narrower statement of the range/limitation “preferably between 6.0 and 6.5”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 7 is rejected for depending on claim 6 without resolving the ambiguity.
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.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-11 of copending Application No. 18/291,098 (reference application; hereafter ‘098).
Although the claims at issue are not identical, they are not patentably distinct from each other because the process recited in claims 6-11 of ‘098 is the same process recited in instant claims 1-7. Specifically,
Instant claims 1 and 6 are met by claim 6 of ‘098.
Instant claim 2 is met by claim 8 of ‘098.
Instant claim 3 is met by claim 9 of ‘098.
Instant claim 4 is met by claim 10 of ‘098.
Instant claim 5 is met by claim 11 of ‘098.
Instant claim 7 is met by claim 7 of ‘098.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
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/K.E.O./ Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619