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 .
This Office Action is in response to applicant’s submission dated February 17, 2026. Any objections and/or rejections made in previous actions and not repeated below are hereby withdrawn.
Claim Rejections - 35 USC § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 48-56, 58, 60, 61, and 63-66 are rejected under 35 U.S.C. 103 as being unpatentable over Giallourou et al. (Effects of domestic processing methods on the phytochemical content of watercress (Nasturtium officinale), Food Chemistry Journal).
With respect to Claim 1, Giallourou et al. teaches a method of determining the nutritional characteristics of fresh watercress [Pg. 412, Sec. 2.1] as a result of common cooking methods used at home, [Pg. 412, Col. 1, Par. 2] Of those methods taught by Giallourou et al. are boiling, [Pg. 412, Sec. 2.3.1] chopping with a food processor, [Pg. 412, Sec. 2.3.4] and blending, [Pg. 412, Sec. 2.3.5] followed by freeze-drying and grinding into a powder. [Pg. 412, Sec 2.3.5, Par. 2] Giallourou et al. also teaches methods of extraction that include heating the ground watercress to 75°C for 2 min, mixed with MeOH, heated to 70°C, then centrifuged in order to separate liquids and solids. [Pg. 412, Sec. 2.4.1, Par. 1]
Giallourou et al. teaches the blending method comprises adding watercress and water to a blender and creating a homogenous mixture. [Pg. 412, Sec. 2.3.5, Par. 1] Giallourou et al. teaches the boiling process comprises boiling watercress with water for 2, 5, and 10 min at about 90°C, then separating the solid watercress from the remaining liquid. [Pg. 412, Sec. 2.3.1, Par. 1] According to MPEP 2144.04 C, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. It would have been obvious to perform the blending step in order to produce a homogenous mixture, then the heating step in order to imitate the process of preparing a boiled watercress food. This reads on the limitations recited in steps a and b of claim 1.
Additionally, Giallourou et al. teaches the use of a centrifuge in order to separate the supernatant of the resulting extraction from the solid pellet. [Pg. 412, Sec. 2.4.1] The separated product reads on isolating the liquid fraction and isolating the protein fraction recited in step c of claim 1. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Giallourou et al. to produce a method of extraction using watercress wherein the steps comprise macerating the watercress, heating the watercress, and isolating the liquid fraction and protein fractions, thereby rendering claim 1 obvious.
With respect to Claims 48-52, Giallourou et al. teaches macerating the fresh watercress [Pg. 412, Sec. 2.1] through a method of blending with water, [Pg. 412, Sec. 2.3.5, Par. 1] wherein the fresh watercress would be in contact with the blades of the blender while in a liquid medium. According to the instant specification, “the watercress may be ‘fresh’ in the sense that watercress proteins are present in their natural form, i.e. are not denatured”. Therefore, fresh watercress reads on watercress that is substantially free of denatured watercress protein. Therefore, Giallourou et al. renders obvious claims 48-52.
With respect to Claim 53 and 64, Giallourou et al. teaches chopping the watercress [Pg. 412, Sec 2.3.4] and boiling the watercress, wherein the boiling step comprises removing solids. [Pg. 412, Sec 2.3.1] According to MPEP 2144.04 C, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. Therefore, one of ordinary skill in the art would have found it obvious to have performed the steps of chopping, boiling, and removing solids in any reasonable order. This reads on blanching, then macerating, as well as macerating, separating some of the solids, then boiling. Therefore, Giallourou et al. renders claims 53 and 64 obvious.
With respect to Claims 54 and 55, Giallourou et al. teaches the boiling process comprises boiling watercress with water for 2, 5, and 10 min at about 90°C, then separating the solid watercress from the remaining liquid. [Pg. 412, Sec. 2.3.1, Par. 1] These times and temperatures fall within the claimed ranges.
With respect to Claims 56, 58, and 60, Giallourou et al. teaches the use of a centrifuge in order to separate the supernatant of the resulting extraction from the solid pellet. [Pg. 412, Sec. 2.4.1] The separated product reads on isolating the liquid fraction and isolating the protein fraction through centrifugation. Therefore, Giallourou et al. renders obvious claims 56, 58, and 60.
With respect to Claim 61, Giallourou et al. teaches the boiling process comprises boiling watercress with water for 2, 5, and 10 min at about 90°C, then separating the solid watercress from the remaining liquid. [Pg. 412, Sec. 2.3.1, Par. 1] Additionally, Giallourou et al. teaches the use of a centrifuge in order to separate the supernatant of the resulting extraction from the solid pellet. [Pg. 412, Sec. 2.4.1]
According to MPEP 2144.04 C, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. It is well-known in the field that sterilization is advantageous for the destruction of bacteria and other components that cause disease. Additionally, boiling for the time taught by Giallourou et al. would be sufficient to sterilize the extract.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have sterilized the watercress extract by using the teaching of the extraction and boiling of Giallourou et al., rendering claim 61 obvious.
With respect to Claim 63, Giallourou et al. teaches retaining the water phase from the boiling step for further processing, [Pg. 412, Sec. 2.3.1] and freeze drying the retained samples. [Pg. 412, sec. 2.3.5, Par. 2] This reads on freeze drying the aqueous watercress extract, thereby rendering obvious claim 63.
With respect to Claims 65 and 66, Giallourou et al. teaches the method recited in claim 1. Claims 65 and 66 recite the aqueous watercress extract and the watercress protein extract respectively. According to the MPEP 2113 I, “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”. The method taught by Giallourou et al. provides an aqueous extract and a protein extract, thereby rendering obvious claims 65 and 66.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Giallourou et al. (Effects of domestic processing methods on the phytochemical content of watercress (Nasturtium officinale), Food Chemistry Journal) as applied to claim 1, in view of Boyd et al. (Assessment of the Anti-Genotoxic, Anti-Proliferative, and Anti-Metastatic Potential of Crude Watercress Extract in Human Colon Cancer Cells, Nutrition and Cancer) as evidenced by Kassie et al. (Genotoxic effects of crude juices from Brassica vegetables and juices and extracts from phytopharmaceutical preparations and spices of cruciferous plants origin in bacterial and mammalian cells, Chemico-Biological Interactions).
With respect to Claim 57, Giallourou et al. teaches the method according to claim 56, but is silent to using filtration as a method of separating the liquid and solid phase of the extract.
Boyd et al. teaches a study of the beneficial health effects of watercress, [Abstract] as well as an extraction method used to produce extract samples. [Pg. 234, Col. 1, Par. 2] The extraction taught by Boyd et al. comprises, watercress is bought fresh, chopped into pieces, homogenized in a juice maker, subsequently centrifuged, and filter sterilized through a 45um filter and a 22um filter. [Pg. 234, Col. 1, Par. 2] Boyd et al. also states that the method taught was taught by Kassie et al. [Pg. 234, Col. 1, Par. 2] and Kassie et al. teaches that filter sterilization occurs with a 0.22um. [Pg. 3, Sec. 2.3, Par. 1]
Giallourou et al. and Boyd et al. exist within the same field of endeavor in that they are both concerned with watercress extracts and the methods for obtaining them. Where Giallourou et al. teaches a process comprising freeze-drying and centrifugation, Boyd et al. teaches a simpler and easier process involving filtration.
According to MPEP 2144.07, “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297”. It would have been obvious for one of ordinary skill in the art, before the effective filing date of the instant invention, to have substituted the 45um or 22um taught in Boyd et al. for the 0.22um filter taught in Kassie et al. as the method taught by Boyd et al. is derived from the method of Kassie et al. Additionally, 0.22um filter lies within the range recited in claim 57.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the filtration step taught by Boyd et al. in the extraction process taught by Giallourou et al., wherein the filter is 0.22um, thereby rendering claim 57 obvious.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Giallourou et al. (Effects of domestic processing methods on the phytochemical content of watercress (Nasturtium officinale), Food Chemistry Journal) as applied to claim 1, as evidenced by Stewart et al. (Watercress and the gut, Wiley).
With respect to Claim 59, Giallourou et al. teaches the method recited in claim 58, but is silent to a urease inhibitor and/or urease inhibitory activity. Stewart et al. teaches that watercress comprises multiple classes of urease inhibitors. [Pg. 1, Col. 1, Par. 4] According to MPEP 2112 II, “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.”
Stewart et al. teaches that watercress comprises urease inhibitors, meaning that urease inhibitors would have been present in the extract taught by the method of Giallourou et al. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have produced a watercress extract taught by the method of claim 1, wherein the extract comprised urease inhibitors or urease inhibitory activity, thereby rendering claim 59 obvious.
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over Giallourou et al. (Effects of domestic processing methods on the phytochemical content of watercress (Nasturtium officinale), Food Chemistry Journal) as applied to claim 1, in view of Augustono et al. (Crude Protein Content and Crude Fiber on Watercress Leaf Water in fermented Processing, Jurnal Ilmiah Perikanan dan Kelautan).
With respect to Claim 62, Giallourou et al. teaches the method recited in claim 1, but is silent to a step of fermenting the extract.
Augustono et al. teaches a process of increasing the protein content of watercress leaf water [Abstract, Par. 2] through the use of fermentation. [Abstract, Par. 1] Augustono et al. teaches that watercress leaf water can be inoculated with probiotics in order to encourage fermentation [Abstract, Par. 3] in order to produce a watercress leaf water with more advantageous properties. [Abstract, Par. 4]
Giallourou et al. and Augustono et al. exist within the same field endeavor in that they both teach watercress byproducts. Where Giallourou et al. teaches an extract with a solid and a liquid phase, Augustono et al. teaches fermenting an aqueous watercress composition in order to promote better protein content. One would be motivated to combine these references in order to create a more nutritious aqueous watercress extract.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teaching of Giallourou et al. to produce an aqueous watercress extract according to the method recited in claim 1, and have fermented the extract according to the teaching of Augustono et al. in order to produce a more nutritious product, thereby rendering claim 62 obvious.
Declaration
The declaration under 37 CFR 1.132 filed February 17, 2026 is insufficient to overcome the rejection of Claim 1 based upon Giallourou et al. (Effects of domestic processing methods on the phytochemical content of watercress (Nasturtium officinale), Food Chemistry Journal) as set forth in the last Office action because: all assertions made by applicant have been considered but are not persuasive.
Applicant declares the prior art of record would not have taught the claimed invention due to a lack of understanding with respect to the mechanism of protein coagulation that would have occurred due to the method taught by Giallourou et al. Applicant cites examples 3 and 7, and comparative examples 1 and 2 as evidence that the prior art is fundamentally different from the instant invention, and that the primary thrust of Giallourou et al. does not provide a skilled artisan with reasonable expectation of success to modify the method taught in order to achieve the method recited in the instant claims.
Examiner respectfully disagrees and directs applicant to MPEP 2144.04(IV) C, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”, and 2145 II, stating, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”. Though Giallourou et al. does not explicitly teach the method steps in the order recites, there is no teaching away from reordering the steps for the convenience of space or time such that the maceration would have been performed before the heating step. The method, so modified, would have produced a composition substantially identical to the one recited in the instant claims, and would therefore have possessed the same latent properties, regardless of whether they had been recognized at the time of discovery.
Additionally, applicant draws attention to comparative examples that use dried watercress in lieu of fresh watercress. This comparison is not an effective comparison with the closest prior art, as the teaching of Giallourou et al. teaches the use of fresh watercress in the extraction method.
For these reasons, applicant’s declaration does not overcome the rejection of record.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive.
Applicant asserts on Page 8, Lines 17-21, that, “the claims are not obvious in view of the cited reference, at least because Giallourou fails to teach or reasonably suggest the features of the claims as set forth, and a person of ordinary skill in the art at the time of the invention would not have had a reason to modify the references to arrive at the claimed methods with the requisite reasonable expectation of success”.
Examiner respectfully disagrees and directs applicant to the rejection of claim 1, specifically the section concerning MPEP 2144.04(IV)C, “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”. Additionally, one of ordinary skill in the art would have found it obvious to blend the watercress first, as in the teaching of a smoothie, [2.3.5] before cooking as in the description of the uses of watercress in soups. [Pg. 411, Col. 2, Par. 3]
For this reason, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, Lines 28-29, that, “heating of the macerated watercress sufficiently coagulates the proteins allowing for separation and Giallourou fails to appreciate this important difference in processing”, continuing on Page 9, lines 1-2, that, “Giallourou is silent about protein coagulation and does not teach or suggest the criticality of the specified order of the claimed process”. Applicant reasserts on Page 10, lines 3-5, “a person skilled in the art at the time of the invention would not have arrived at the claimed method with the requisite expectation of success upon review of Giallourou because there is no disclosure of coagulation of proteins or the desire to do so”.
Applicant is directed to MPEP 2145 II, which states, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”. The method taught by Giallourou et al., which would conceivably comprise macerating the fresh watercress before heating, would impart all the same properties on the resulting composition discovered in the instant invention, regardless of the absence of an explicit teaching in the prior art. Therefore, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 10, lines 15-17, that, “the watercress treatment protocols described by Giallourou (which are essentially various domestic cooking methods) are clearly aimed at preventing the loss of phenolic content, antioxidants and glucosinolates during conventional cooking and processing methods”, adding on lines 22-23 “[t]here is, therefore, no teaching in Giallourou to arrive at a method of separating a solid or a semi-solid watercress protein material from a liquid watercress fraction” and on line 25, “Giallourou teaches away from a method as claimed in the present application”.
Applicant is firstly directed to MPEP 2141.02(VI), which states, “the prior art’s mere disclosure of more than one alternative does not constitute teaching away from any of these alternatives because such a disclosure does not criticize, discredit, or otherwise discourage the solution claimed”. Giallourou et al. teaching a preferred method of heating the watercress does not teach away from any limitations recited in the instant claims, as no limitation narrows the heating method. Secondly, applicant is directed to the rejection above, wherein Giallourou et al. teaches the use of a centrifuge in order to separate liquid and solid fractions of the resulting extraction, which would inherently comprise the latent properties of the instant invention, including the protein recited, as described in the above response.
For these reasons, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 11, Lines 5-8, that, “Although Applicant has not addressed all the issues of the dependent claims, Applicant respectfully submits that Applicant does not necessarily agree with the characterization and assessments of the dependent claims made by the Examiner, and Applicant believes that each claim is patentable on its own merits”.
Examiner respectfully disagrees and reasserts the above responses and rejections with regard to the patentability of the claims dependent upon the instant claim 1.
For this reason and those enumerated above, applicant’s assertions are found to be unpersuasive and the rejection of claims 1 and 48-66 are maintained.
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.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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