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 .
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dienaite “Lipophilic extracts isolated from European cranberry bush (Viburnum opulus) and sea buckthorn (Hippophae rhamnoides) berry pomace by supercritical CO 2 – Promising bioactive ingredients for foods and nutraceuticals” Food Chemistry 348 (2021) 129047.
Regarding claims 1, 2 and 4, Dienaite teaches cranberry and sea buckthorn pomace powder produced by grinding cranberry or sea buckthorn pomace to a particle size less than 0.2 mm followed extraction with super critical CO2 which yields cranberry and sea buckthorn powder.(Sec. 2.2) This is the same process disclosed by applicant to produce cranberry and sea buckthorn pomace powders having the properties claimed and therefore it necessarily follows the cranberry and sea buckthorn pomace powders disclosed by Dienaite would possess the same properties claimed. Therefore, Dienaite anticipates or renders obvious the limitations of claims 1, 2 and 4.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kitryte “Zero waste biorefining of lingonberry (Vaccinium vitis-idaea L.) pomace into functional ingredients by consecutive high pressure and enzyme assisted extractions with green solvents” Food Chemistry 322 (2020) 126767.
Regarding claims 1 and 3, Kitryte teaches lingonberry pomace powder produced by grinding cranberry or lingonberry pomace to a particle size less than 0.5 mm followed extraction with super critical CO2 which yields lingonberry powder. This is the same process disclosed by applicant to produce lingonberry pomace powder having the properties claimed and therefore it necessarily follows the lingonberry pomace powder disclosed by Kitryte would possess the same properties claimed. Therefore, Kitryte anticipates or renders obvious the limitations of claims 1 and 3.
Response to Arguments
Applicant's arguments filed 4 August 2025 have been fully considered but they are not persuasive.
Applicant asserts on page 5 of the remarks that because Dienaite and Kitryte do not analyze the pomace left over from their respective extraction procedures these references do not suggest that the secondary berry pomace “could have any nutritional value”. This argument is not germane as the rejections are premised on inherency and there is not requirement that the prior art recognize a property that necessarily flows from the composition disclosed. As stated in MPEP 2144.09 VII. “a claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, applicant’s recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
Applicant asserts unexpected results regarding cholesterol and cholate binding on page 5 of the remarks, however, unexpected results arguments are not germane to anticipation rejections. Additionally, the prior art’s failure to disclose an inherent property does not render a claimed composition patentable. See MPEP 2144.09 VII.
Applicant’s assertions regarding the quality of the berry pomace powder being dependent on extraction conditions fails to provide any evidence. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding differences between the claims and the prior art must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”. “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). (MPEP 2112 V) In the absence of evidence establishing any differences between the prior art and the claims, applicant’s assertions are not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793