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 .
Claims 79, 84-89, and 91-93 are pending in this application.
Acknowledgment is again made of applicant's claim for foreign priority based on an application filed in Israel, application number 245378, on 5/2/2016. It is noted, however, that applicant has not filed a certified copy of this application as required by 37 CFR 1.55. It is noted further that the Examiner who examined the parent application (16/092,899) indicated in an Office action mailed 6/1/2020 that all foreign priority application has been received from the International Bureau, but the undersigned Examiner has not been able to verify that a copy of Israel application number 245378 has been received in said application or in the instant application.
Withdrawn grounds of rejection
The outstanding ground of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendment to the claims filed on 11/17/2025.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) or, in the alternative, under 35 U.S.C. 103 over Silberstein (US 2013/0287708) is withdrawn in view of the amendment to the claims (“whole extract”)1 and declaration filed on 11/17/2025.
New grounds of rejection necessitated by Applicant’s amendment
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 79, 84-89, and 91-93 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 79 and 89 have been amended to recite “the styrax extract being a whole extract of the at least one plant species of the genus Styrax” (emphasis added). Applicant states in the response filed on 11/7/2025 that support can be found in specification paragraphs 27-34. However, said paragraphs and the rest of the specification neither disclose “whole extract” nor describe what is meant by “whole” in whole extract. Claims 79 and 89 require mixing the resin and/or bark with a hydrophobic solvent, so the extract is already something less than “whole” from the Styrax plant. In the context of the claimed invention and the originally filed disclosure, “whole extract” was not reasonably conveyed. Dependent claims are included here because they do not cure the deficiency of the independent claims. For these reasons, the claims fail to find adequate descriptive support from the originally filed disclosure.
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 79, 84-89, and 91-93 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.
Independent claims 79 and 89 have been amended to recite “the styrax extract being a whole extract of the at least one plant species of the genus Styrax” (emphasis added). In the context of the claimed invention, “whole extract” is ambiguous and indefinite. This is because claims 79 and 89 require mixing the resin and/or bark with a hydrophobic solvent, so the extract is already something less than “whole” from the Styrax plant. The specification does not provide any information as to what is meant by “whole extract,” as claimed herein. Consequently, one skilled in the art would not be able to determine the metes and bounds of “whole extract.” Dependent claims are included here because they do not cure the deficiency of the independent claims.
In conclusion, all claims are rejected. No claim is 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 JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 See further discussion of this amendment in the new grounds of rejection set forth below.
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