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 .
Application Status
Amended claim 1, 3, 5-6, 8-11, 19 and new claim 21-22.
Claim 4 and 7 are cancelled.
Claim 2, 12-18 and 20 are withdrawn from examination.
Claim 1, 3, 5-6, 8-11, 19 and 21-22 are rejected. No claims are allowed.
Withdrawn Rejections
The 101 rejection set forth in previous office action has been withdrawn in light of Applicant’s amendments.
The 112 second paragraph rejection over claims 1, 3-11 and 19 as set forth in previous office action have been withdrawn in light of Applicant’s amendments.
Claim Rejections - 35 USC § 112
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.
Claim 21 and 22 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.
Claim 21 and 22 recites the black tea particles have a particle size of greater than 5 um as recited in claim 21; and a particle size of greater than 20 um as recited in claim 22; however the specification does not support the black tea particles having a particles sizes of size of greater than 5 um in claim 21; and a particle size of greater than 20 um and a particle size of less than 250 um as recited in independent claim 1, in other words, the specification does not disclose multiple particle size distribution of two or more particle sizes in the composition. The limitation of claim 21 and 22 are new matter. Applicant is required to remove new matter in response to this office action.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 5-6, 8-11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee et al. (US 8,246,943 B2) in view of Takahashi Kenzo (JP 2011072321, English Translation, PTO-892 06/13/2025).
Regarding claim 1, Banerjee et al. (Banerjee) discloses a method of administration a composition comprising black tea leaf (black tea leaf particles) (‘943, col. 4, ln. 27-59, col. 6, ln. 16-18, 33-43) to an individual. Banerjee discloses the black tea leaf (black tea leaf particles) comprising black tea flavonoids which produce a prebiotic effect in the individual (‘943, col. 4, ln. 49-57; col. 14, claim 1). Banerjee teaches effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect.
Banerjee does not explicitly disclose the black tea leaf (black tea leaf particles) with a particle size of less than 250 um. However, Takahashi Kenzo (Takahashi) discloses a method of ultrafine milling black tea leaf with particle sizes of less than 1 um (‘321, Abstract; pg. 2, ln. 1-3; pg. 3, ln. 9; pg. 7, ln. 4-7), which is in range with the cited range. Banerjee and Takahashi are of the same field of endeavor of food product with black tea leaf. It would have been obvious to one of ordinary skill in the art to be motivated to use Takahashi’s black tea leaf particle size in Banerjee’s method to provide a desirable finished tea beverage for the individual, since Takahashi teaches the particle size causing no sedimentation or turbidness in the beverage (‘321, Abstract).
Regarding claim 3, modified Banerjee disclose the effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect, including treating or preventing chronic inflammation (‘943, col. 4, ln. 35-40, claim 2).
Regarding claim 5, modified Banerjee disclose the effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect, including treating or preventing influenza, common cold (‘943, col. 4, ln. 35-40, claim 2).
Regarding claim 6, modified Banerjee disclose the effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect, including treating or preventing inflammatory bowel disease (gastrointestinal condition) (‘943, col. 4, ln. 41-46, claim 3).
Regarding claim 8, modified Banerjee disclose modified Banerjee disclose the effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect, including removal or alleviation of visceral pain (‘943, col. 4, ln. 47-48).
Regarding claim 9, modified Banerjee disclose the black tea leaf (black tea leaf particles) comprising around 20-40% by weight of flavonoids (‘943, col. 57-58), which is in range with the cited range.
Regarding claim 10 and 19, modified Banerjee disclose the flavonoids comprises at least 82% of theaurbigin (‘943, claim 1), which is in range with the cited range.
Regarding claim 11, modified Banerjee disclose the administrating to the individual in an amount of 2.5 grams of black tea leaf per day (‘943, col. 4, ln. 55), which is in range with the cited range.
Claim(s) 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee et al. (US 8,246,943 B2) in view of Takahashi Kenzo (JP 2011072321, English Translation, PTO-892 06/13/2025) as applied to claim 1 above, and further in view of NL 8203277 A (Abstract English Translation).
Regarding claim 21 and 22, modified Banerjee discloses the claimed invention as discussed above. Modified Banerjee does not explicitly disclose the black tea leaf (black tea leaf particles) with a particle size of greater than 5 um as recited in claim 21 or a particle size greater than 20 um as recited in claim 22. However, NL 8203277 discloses a black tea formulation with granules (particles) with particle size of 0.05 mm (50 um) to 1.5 mm (1500 um) (‘277, Abstract), which overlaps the particle size as recited in claim 21 and 22. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Banerjee and NL 8203277 are of the same field of endeavor of black tea formulation in tea bags (‘943, col. 6, ln. 51-56; ; ‘277, Abstract). It would have been obvious to one of ordinary skill in the art to be motivated to use NL 8203277’s particle size in modified Banerjee to provide good mechanical stability as taught by NL 8203277 (‘277, Abstract).
Response to Arguments
Applicant asserts “…Banerjee fails to teach or suggest using any tea other than black leaf tea to achieve the reported prebiotic effects… Banerjee also fails to teach or suggest using black tea leaf particles with a particle size of less than 250 µm... While Takahashi discloses that black tea leaves may be used in specific circumstances such as making lemon tea (see Example 7), Takahashi repeatedly emphasizes that the disclosure of Takahashi is directed toward producing green tea. See Background Art. Takahashi fails to teach or suggest that any of the methods disclosed have any prebiotic effect.”
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive. In response to Banerjee fails to teach or suggest using any tea other than black leaf, Applicant’s remark does not commensurate with the scope of the claim with respect to any other tea than black leaf, wherein the instant claim recites black leaf tea. Banerjee clearly teaches the black tea leaf (black tea leaf particles) comprising black tea flavonoids which produce a prebiotic effect in the individual (‘943, col. 4, ln. 49-57; col. 14, claim 1). Banerjee teaches effective amount of the black tea leaf (black tea leaf particles) comprising the black tea flavonoids to the individual (‘943, col. 4, ln. 49-65) to provide the prebiotic effect.
In response to applicant's arguments against the references individually, 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). Takahashi is relied upon for the teaching of the black tea leaf with particle sizes of less than 1 um (‘321, Abstract; pg. 2, ln. 1-3; pg. 3, ln. 9; pg. 7, ln. 4-7), which is in range with the cited range.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Banerjee and Takahashi are of the same field of endeavor of food product with black tea leaf. It would have been obvious to one of ordinary skill in the art to be motivated to use Takahashi’s black tea leaf particle size in Banerjee’s method to provide a desirable finished tea beverage for the individual, since Takahashi teaches the particle size causing no sedimentation or turbidness in the beverage (‘321, Abstract).
Conclusion
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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792