DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed February 17, 2026 has been received and entered. The text of those sections of Title 35, U.S. Code, not included in this action can be found in a prior Office action. Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.
3. Claims 21-24, 26-30, 32-35, 37 and 38 are pending.
4. In the reply filed on March 4, 2024, applicant elected Cichorium endivia var. latifolium and Lactuca sativa var. crispa for species A and pre-diabetes for species B without traverse.
5. Claims 24, 30, and 35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
6. Claims 21-23, 26-29, 32-34, and 37-38 are examined on the merits.
7. The declaration of Gerard Housey and Monica Balash, filed February 17, 2026, has been received and considered.
Claim Rejections - 35 USC § 103
8. Claim(s) 21-23, 26-29, 32-34, and 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Housey (US 2016/0022752) for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues that the declaration of Gerard Housey and Monica Balash overcomes the rejection because the declaration shows that the combination of Cichorium endivia var. latifolium and Lactuca sativa var. crispa produces an unexpected result in regards to their insulin-like activity. However, as discussed in the previous Office action, unexpected results must stem from a difference between the claimed invention and what is taught in the prior art. In this case, Housey specifically teaches a combination of C. endivia var. latifolium and L. sativa var. cripsa. Thus, any results shown for the combination of these two ingredients, unexpected or otherwise, would be inherent in the composition taught by the prior art.
In response to this statement, applicant argues:
Housey may include a general statement that a combination of at least two species can be used, but Housey does not include a specific disclosure of the combination of C. endivia var. latifolium and L. sativa var. crispa. Nor does Housey include a specific disclosure of the combination of C. endivia var. latifolium and Lactuca sativa var. longifolia.
Housey discloses 38 plants having insulin like biological activity… In the absence of a specific disclosure of the combination of C. endivia var. latifolium and L. sativa var, crispa (or the combination of C. endivia var. latifolium and Lactuca sativa var. longifolia), the Office must provide an explanation of why the skilled person would select these specific species and variants among the many combinations of 38 plants disclosed Housey. Applicant respectfully submits that the Office cannot simply pick and choose from among the possibilities that a document might offer; a valid motivation for doing so must be articulated.
However, as discussed in MPEP section 2131.02(III), ‘A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.’ While Housey may list 38 plants in Table 2, the reference only specifically discusses, and specifically claims, three of these plants, i.e. Cichorium endivia var. latifolium, Lactuca sativa var. crispa, and Lactuca sativa var. longifolia (see paragraph 39 and claims 4-6). Thus, these are clearly the preferred extracts. Consequently, the artisan would clearly envisage that two or three of these specifically disclosed and claimed extracts are the two or three extracts indicated by any embodiment with two or more extracts. Therefore, the combination of Cichorium endivia var. latifolium and Lactuca sativa var. crispa is considered to be explicitly taught in the reference because an artisan would clearly “at once envisage” the claimed composition. Thus, since the combination is considered to be explicitly taught, the declaration is not considered sufficient to overcome the rejection because the declaration only addresses the combinations that are anticipated by the reference. Therefore, the claimed invention is still considered to be properly rendered obvious by the reference.
Double Patenting
9. Claims 21-23, 26-29, 32-34, and 37-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,633,446 in view of Housey (US 2016/0022752) for the reasons set forth in the previous Office action.
Applicant has requested that this rejection be held in abeyance until allowable subject matter is indicated. The request is noted. The rejection is currently still considered valid at this time for the reasons set forth in the previous Office action.
10. Claims 21-23, 26-29, 32-34, and 37-38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-17 of copending Application No. 18/664,874 (reference application) in view of Housey (US 2016/0022752)
Applicant has requested that this rejection be held in abeyance until allowable subject matter is indicated. The request is noted. The rejection is currently still considered valid at this time for the reasons set forth in the previous Office action.
12. No claims are allowed.
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 Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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