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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed April 2, 2026 is acknowledged.
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
23-38
Withdrawn claims:
24
Previously canceled claims:
1-22
Newly canceled claims:
None
Amended claims:
26, 31, 38
New claims:
None
Claims currently under consideration:
23, 25-38
Currently rejected claims:
23, 25-38
Allowed claims:
None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 23, 25-33, and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Rajha (Rajha, Hiba N., et al. “Beta-Cyclodextrin Assisted Extraction of Polyphenols from Vine Shoot Cultivars”. Journal of Agricultural and Food Chemistry, Vol. 63, p. 3387-3393, published March 18, 2015 [accessed online August 25, 2025])(IDS Reference filed 05/16/2023) in view of Hedges (DE 69327335)(IDS Reference filed 05/16/2023).
Regarding claim 23, Rajha teaches of β-cyclodextrin extraction of polyphenols (a known aromatic substance) from vine shoots (i.e., an organic substance) by adding a β-cyclodextrin solvent (Abstract). Rajha also teaches that β-cyclodextrin are likely to form complexes with polyphenols (p. 3389, col. 1, ¶ 4). Rajha further teaches that after extraction with β-cyclodextrin, the extracts are centrifuged (p. 3388, col. 1, ¶ 3), which would necessarily result in the separation of the cyclodextrin-polyphenol complex from the liquid phase. Rajha also teaches inclusion of the polyphenols in pharmaceuticals (p. 3387, col. 1, ¶ 1).
Rajha does not teach enzymatically treating the separated cyclodextrin-aromatic substance complex to obtain a composition that is loaded with at least one organic substance comprises at least one aromatic substance or wherein the enzymatic treatment is performed using at least one enzyme selected from the group consisting of enzymes with amylase activity, debranching enzymes, and mixtures thereof.
However, in the same field of endeavor, Hedges teaches of removing cyclodextrin using amylase and CGTase ([0007]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of extracting polyphenols as taught by Rajha with the addition of an enzyme step as taught by Hedges. One of ordinary skill would have been motivated to make this modification because Hedges teaches that the use of enzymes removed cyclodextrin from the system ([0007]), which would result in purely the aromatic compound.
Regarding claim 25, Rajha teaches that cyclodextrins are likely to form complexes with hydrophobic polyphenols (p. 3389, col. 1, ¶ 4). Although Rajha does not teach that the polyphenols have at least one apolar group, this is an inherent property of the composition as claimed. Evidence to support that polyphenols have at least one apolar group is provided by the instant specification. The instant specification states that the organic substances comprising at least one apolar group of the present invention are those that are hydrophobic enough to form a complex with cyclodextrin (p. 8, l. 17-20). Thus, the hydrophobic polyphenols of Rajha would meet the definition of having at least one apolar group since they are able to form a complex with cyclodextrin.
Regarding claim 26, although Rajha does not teach combining cyclodextrin and a water/ethanol solvent, Rajha teaches performing extraction with an ethanol/water solvent and that when compared to cyclodextrin, similar polyphenol recovery was seen with ethanol and water (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of cyclodextrin extraction with the addition of water/ethanol as a solvent as taught by Rahja. One of ordinary skill would have been motivated to combine the two processes because water/ethanol was able to extract polyphenols in 1.65 hours compared to 48 hours of cyclodextrin alone, and cyclodextrin amplified the extraction process (Abstract).
Although the cited prior art does not teach the amount of water and/or the amount of ethanol used as a solvent in the process, Rajha teaches that ethanol enhances the polyphenol extraction process (p. 3391, col. 2, ¶ 1). Therefore, one of ordinary skill in the art would have adjusted the amount of ethanol during routine optimization to find the concentration of ethanol that resulted in the optimum polyphenol extraction. MPEP §2144.05(II) states where 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). The claimed range would thus be obvious.
Regarding claim 27, Rajha does not teach a further step of diluting the cyclodextrin-AOS complex in step c) and/or the cyclodextrin-aromatic substance complex with water prior to treatment in step d).
However, in the same field of endeavor, Hedges teaches treating residual cyclodextrin in the presence of water (i.e., diluted with water) with enzymes ([0007]). Hedges further teaches an example where the complex with cyclodextrin was dissolved in water (i.e., diluted) prior to treatment with enzymes ([0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Rajha with the inclusion of diluting the cyclodextrin complex with water prior to enzyme treatment as taught by Hedges. One of ordinary skill would have been motivated to make this modification because Hedge teaches that all residual cyclodextrin can be removed when treated in the presence of water with enzymes ([0007]).
Regarding claim 28, Rajha does not teach wherein step d) is performed such that the cyclodextrin concentration in the final composition is less than 0.5 wt%.
However, in the same field of endeavor, Hedges teaches in example 2 that the detection limit of cyclodextrin in liquid chromatography was 50 ppm, and that no cyclodextrin was detected after treatment with enzymes ([0027]-[0028]). Thus, it logically follows that cyclodextrin was present in an amount less than 50 ppm (equivalent to 0.005%), which falls within the claimed range of “less than 0.5 wt%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Rajha with the addition of treatment with enzymes as taught by Hedges. One of ordinary skill would have been motivated to make this modification because Hedges teaches that the use of enzymes removed cyclodextrin from the system ([0007]), which would result in purely the aromatic compound.
Regarding claim 29, although the cited prior art does not teach filtering the mixture resulting from enzymatic treatment of the cyclodextrin complex, wherein a composition loaded with at least one organic substance comprising at least one apolar group and/or with at least one aromatic substance is obtained, Hedges teaches filtering out the complex of cyclodextrin ([0027]). Although Hedges does not teach filtering after treatment with an enzyme, one of ordinary skill would have found it obvious to remove the enzymes from the solution after treatment to obtain a pure produce. One of ordinary skill would have been motivated to make this modification because it is well known in the art that filtration is used to remove impurities.
Regarding claim 30, although Rajha does not teach combining cyclodextrin and a water/ethanol solvent, Rajha teaches performing extraction with an ethanol/water solvent and that when compared to cyclodextrin, similar polyphenol recovery was seen with ethanol and water (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of cyclodextrin extraction with the addition of water/ethanol as a solvent as taught by Rahja. One of ordinary skill would have been motivated to combine the two processes because water/ethanol was able to extract polyphenols in 1.65 hours compared to 48 hours of cyclodextrin alone, and cyclodextrin amplified the extraction process (Abstract).
Regarding claim 31, Rajha teaches using β-cyclodextrin for extraction (Abstract).
Regarding claim 32, Rajha teaches that after extraction with β-cyclodextrin, the extracts are centrifuged (p. 3388, col. 1, ¶ 3), which would necessarily result in the separation of the cyclodextrin-polyphenol complex from the liquid phase.
Regarding claim 33, Rajha teaches allowing the solution with water/ethanol solvent to sit for 1.65 hours (Abstract).
Although Rajha teaches that the cyclodextrin is held for 48 hours, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the process of Rajha with the use of an extraction time of 1.65 hours as applied to a reaction with water/ethanol solvent. One of ordinary skill would have been motivated to make this modification because Rajha teaches that the extraction time worked when water/ethanol was present.
Regarding claim 35, Rajha does not teach a further step of diluting the cyclodextrin-AOS complex obtained in step c) and/or the cyclodextrin-aromatic substance complex with water prior to treatment in step d) to obtain a final concentration of the substances.
However, in the same field of endeavor, Hedges teaches treating residual cyclodextrin in the presence of water (i.e., diluted with water) with enzymes ([0007]). Hedges further teaches an example where the complex with cyclodextrin was dissolved in water (i.e., diluted) prior to treatment with enzymes ([0029]). Although Hedges does not teach diluting to obtain a desired final concentration, one of ordinary skill would have found it obvious to dilute the complex based on the final desired concentration.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Rajha with the inclusion of diluting the cyclodextrin complex with water prior to enzyme treatment as taught by Hedges. One of ordinary skill would have been motivated to make this modification because Hedge teaches that all residual cyclodextrin can be removed when treated in the presence of water with enzymes ([0007]).
Regarding claim 36, Rajha does not teach wherein the enzymatic treatment is performed using at least one enzyme selected from the group consisting of alpha-amylase, pulluanase, isoamylase, and mixtures thereof.
However, in the same field of endeavor, Rajha teaches removing cyclodextrin using alpha-amylase ([0003]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of extracting polyphenols as taught by Rajha with the addition of an enzyme step as taught by Hedges. One of ordinary skill would have been motivated to make this modification because Hedges teaches that the use of enzymes removed cyclodextrin from the system ([0007]), which would result in purely the aromatic compound.
Regarding claim 37, although the cited prior art does not teach the amount of enzyme used, Hedges teaches that the amount of enzyme used is based on the amount of enzyme relative to the amount of cyclodextrin ([0011]). Therefore, one of ordinary skill in the art would have adjusted the amount of enzyme used in terms of FAU per gram during routine optimization to find the amount of enzyme that resulted in the desired cyclodextrin removal. MPEP §2144.05(II) states where 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). The claimed range would thus be obvious.
Claim 34 rejected under 35 U.S.C. 103 as being unpatentable over Rajha (Rajha, Hiba N., et al. “Beta-Cyclodextrin Assisted Extraction of Polyphenols from Vine Shoot Cultivars”. Journal of Agricultural and Food Chemistry, Vol. 63, p. 3387-3393, published March 18, 2015 [accessed online August 25, 2025])(IDS Reference filed 05/16/2023) in view of Hedges (DE 69327335)(IDS Reference filed 05/16/2023) as applied to claim 23 above, and further in view of Uemasu (US 20030073831 A1).
Regarding claim 34, the cited prior art does not teach wherein the separated liquid phase obtained by separating out the cyclodextrin complex is admixed again with at least one cyclodextrin and is recirculated to maximize yield.
However, in the same field of endeavor, Uemasu teaches extraction using cyclodextrin ([0003]) where the extraction solvent (i.e., liquid phase) may be separated and returned back to the reaction system and reused as the extraction solvent ([0028]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Rajha with the addition of recycling the liquid phase as taught by Uemasu. The claim would have been obvious because all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function, and the combination yielded nothing more than predictable results to one of ordinary skill in the art, see MPEP §2143(A).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Rajha (Rajha, Hiba N., et al. “Beta-Cyclodextrin Assisted Extraction of Polyphenols from Vine Shoot Cultivars”. Journal of Agricultural and Food Chemistry, Vol. 63, p. 3387-3393, published March 18, 2015 [accessed online August 25, 2025])(IDS Reference filed 05/16/2023) in view of Hedges (DE 69327335)(IDS Reference filed 05/16/2023) and Guenin (US5468725A).
Regarding claim 38, Rajha in view of Hedges teaches the claimed method steps (a)-(d) as described above in the rejection of claim 23. Rajha also teaches utilization of the compounds in pharmaceuticals and cosmetics (p. 3387, col. 1, ¶ 1), which would necessarily require introducing the substance into the pharmaceutical or cosmetic product.
The cited prior art does not teach that the product has an ethanol content of 0.0 vol%.
However, in the same field of endeavor, Guenin teaches of a fragrance (i.e., cosmetic) comprising one or more aromatic chemicals (col. 3, lines 37-40) and that the fragrance is substantially in the absence of ethanol (col. 6, lines 37-47). Thus, it logically follows that the fragrance has an ethanol content of 0.0 vol%.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include the composition as taught by Rajha and Hedges in the fragrance composition of Guenin as an aromatic chemical. One of ordinary skill would have been motivated to make this modification because Guenin teaches that there is a movement in the perfume industry towards the elimination of alcohol in fragrances (col. 1, lines 36-38).
Response to Arguments
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 38 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §101 of claim 38: Applicant has overcome the 35 U.S.C. §101 rejection of claim 38 based on amendments to the claims and/or cancellation. Accordingly, the 35 U.S.C. §101 rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 23, 25-33, 35-37 over Rajha and Hedges: Applicant’s arguments filed April 2, 2026 have been fully considered but they are not persuasive.
Applicant argued that Rajha does not disclose the claimed treatment because Rajha teaches to retain the cyclodextrin-polyphenol complex and provides no motivation to modify the process to remove the complex after formation (Remarks, p. 8, ¶ 5- p. 9, ¶ 4).
This argument has been considered. However, the Examiner maintains that Rajha is sufficient for teaching steps (a)-(c) of the claim method. Although Rajha teaches that the encapsulated polyphenols can be used without the enzyme treatment, the Examiner maintains that one of ordinary skill would have found it obvious to apply the enzyme treatment as taught by Hedges to obtain a pure aromatic compound as described above.
MPEP §2123(I) states “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989) and “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Applicant argued that Hedges is directed to the removal of cyclodextrin from a system and that the object is to eliminate remaining cyclodextrin. Thus, Hedges does not disclose treating an intact cyclodextrin-aromatic substance complex (Remarks, p. 9, ¶ 5-7).
This argument has been considered. However, the Examiner maintains that Hedges is sufficient to teach the removal of a cyclodextrin product with an enzyme. One of ordinary skill would have found it obvious to modify the process of Rajha with the use of an enzyme treatment as taught by Hedges to arrive at the claimed invention. Although Hedges does not teach the cyclodextrin-polyphenol complex, the modification of Rajha results in the claimed process. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Examiner maintains that Hedges is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
Applicant further argued that the combination of references relies on impermissible hindsight (Remarks, p. 9, ¶ 8- p. 10, ¶ 3).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The Examiner maintains that it would have been obvious before the effective filing date of the claimed invention to modify Rajha with the addition of the enzyme treatment step taught by Hedges.
Applicant also argued that the claimed sequence of steps (c) and (d) are not taught or suggested by the prior art (Remarks, p. 10, ¶ 4-7).
This argument has been considered. However, as discussed in the rejection of claim 23 above, Rajha teaches after the β-cyclodextrin treatment, the extracts are centrifuged (p. 3388, col. 1, ¶ 3), which would necessarily result in the removal of the cyclodextrin-polyphenol complex from the liquid phase. Additionally, Hedges teaches the removal cyclodextrin compounds using amylase enzymes ([0007]). One of ordinary skill would have found it obvious to treat the cyclodextrin-polyphenol complex removed from the liquid phase to result in further purification of the complex. Thus, Rajha as modified by Hedges teaches the claimed invention.
Applicant argued that the Rajha identified trade-offs of using ethanol extraction vs. β-cyclodextrin, and that they are presented as alternatives (Remarks, p. 10, ¶ 1-4).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have found it obvious to modify the process of Rajha to use both β-cyclodextrin and ethanol/water in the extraction process of Rajha. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see MPEP §2144.06(I).
Applicant also argued that Rajha shows a comparison between ethanol and β-cyclodextrin extraction, but does not teach that ethanol enhances β-cyclodextrin extraction (Remarks, p. 11, ¶ 5-6).
This argument has been considered. However, MPEP §2144.06(I) states it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Thus, it is prima facie obvious to combine β-cyclodextrin and ethanol because they are both useful for extracting polyphenols.
Applicant further argues that the example of Hedges does not support that claimed process, and that Hedges example shows the removal of unbound cyclodextrin (Remarks, p. 11, ¶ 7- p. 12, ¶ 2).
This argument has been considered. However, Example 3 of Hedges is not relied upon in the present rejection. Although the disclosure of Hedges is directed to the removal of unbound cyclodextrin after bound cyclodextrin has been removed from the system, there is no evidence to support that the method of Hedges would not also work on bound cyclodextrin. Hedges teaches that the present invention is effective not only with cyclodextrin and branched cyclodextrin, but also with modified cyclodextrin ([0007]). Thus, it logically follows that the enzyme treatment would be effective when applied to the cyclodextrin-polyphenol complex of Rajha.
The rejections of claims 23, 25-38 have been maintained herein.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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