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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1 and 18-21, drawn to a composition.
Group II, claim(s) 22-28, drawn to a process for preparing a composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of 10 to 20% by weight of dried Black tea, 2 to 5% by weight of dried Green tea, and 2 to 5% by weight of dried White tea, wherein the dried Camellia sinensis leaves have a moisture content ranging from 2% to 15%; 4 to 40% by weight of spices, wherein the spices are selected from a group consisting of cinnamon, cardamom, garcinia; 1 to 27% by weight of dehydrated Vitis skins, wherein the dehydrated Vitis skins are obtained by peeling grapes selected from a group consisting of Concord, Flame Seedless, Dominga, Red Globe, Crimson, Black Muscat, Centennial, Thompson Seedless, Autumn Royal, Tempranillo, Glenora, Marquis, Koshu, Kyoho; 5 to 65% by weight of at least one of herbs and fruits, wherein the at least one of herbs and fruits are selected from a group consisting of lemon, pineapple, apple, ginger, raspberry, hibiscus, rooibos, dried jackfruit; 3 to 25% by weight of at least one flavoring agent, wherein the at least one flavoring agent is selected from a group consisting of raspberry, blueberry, beer, wine, cider, brandy; 1 to 10% by weight of at least one sweetener, wherein the at least one sweetener is selected from a group consisting of molasses, sugar, Stevia, Aspartame, Sucrose, Sucralose, mannitol, sorbitol, xylitol, lactitol, isomalt, maltitol and hydrogenated starch hydrolysatcs (HSH); and 1 to 5% by weight of at least one preservative, wherein the at least one preservative is selected from a group consisting of citric acid, Tartaric acid, Ascorbic acid, Vitamin C, Sorbic Acid, Potassium Sorbate, wherein the dried Camellia Sinensis leaves contain moisture content in a range of 2 to 15 %, wherein the dehydrated Vitis skins comprise resveratrol; and wherein the composition exhibits a Brix value ranging from 1.5% to 3%, a pH ranging from 4 to 6, total soluble solids ranging from 8% to 10%, a color absorbance at 420 nm of 0.215 1 0.5, and a turbidity absorbance at 660 nm of 0.113 10.5., this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Victor et al. (herein referred to as Victor, US 20180333355 A1), Smith et al. (herein referred to as smith, US 20190183958 A1) and Singha et al. (herein referred to as Singha, “Free Radical Scavenging Properties of Skin and Pulp Extracts of Different Grape Cultivars In Vitro and Attenuation of H2O2-Induced Oxidative Stress in Liver Tissue Ex Vivo”). See the rejection of claim 1 starting on page 6.
Newly submitted claims 22-28 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: newly added claims 22-28 are directed to a process while the originally presented invention (Claims 1 and 18-21) are directed towards a composition.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-28 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
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.
Claim 1 is 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.
Claim 1 recites the limitation "the dried Camellia sinesis leaves" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 18-21 are rejected due to their dependency on claim 1.
Claim 18 recites the limitation "Black tea" in line 2. While Claim 1, in which claim 18 depends, specifies “dried black tea”. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "White tea" in line 2. While Claim 1, in which claim 18 depends, specifies “dried white tea”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Victor et al. (herein referred to as Victor, US 20180333355 A1) in view of Smith et al. (herein referred to as smith, US 20190183958 A1) and Singha et al. (herein referred to as Singha, “Free Radical Scavenging Properties of Skin and Pulp Extracts of Different Grape Cultivars In Vitro and Attenuation of H2O2-Induced Oxidative Stress in Liver Tissue Ex Vivo”).
With regard to Claim 1, Victor teaches an enhanced green tea-based product for oral use (abstract). Victor teaches the composition may comprise black tea, green tea, and white tea ([0014]). Victor teaches the black tea, green tea, and white tea can be derived from Camellia sinensis leaves ([0073], [0166]). Victor teaches the plant material can be dried and/or ground ([0011]). Victor teaches the tea composition can have 5 wt % to 95 wt % of a plant material harvested from one or more of Camellia sinensis, yerba mate, and peppermint; ([0078]). Thus, Victor reads such that black. green, and white tea can be utilized together in an amount of 5 wt % to 95 wt % of the total composition. Victor teaches the ingredients disclosed herein can be mixed together in any composition without limitation to ingredient type (whether present or not used), compositional range, weight range, volume range, percentage, or other metric. The constituents and/or components can be mixed, blended, or otherwise brought together in many ways. All ingredients and/or constituents can have a value in a formulation as optionally and as desired from 0 wt % to 90 wt %, or greater, or as the upper limit is determined by health considerations of a user ([0061]). Therefore, it would have been obvious to one with ordinary skill in the art through routine optimization to determine the amount of black, green, and white tea in the composition to achieve the desired final product. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to the moisture content of the Camellia Sinesis leaves, Victor teaches the tea leaves can be moistened by water, oil or other means external to the leaf and/or have an internal water content in a range of from 1 wt % up to 75 wt % ([0103]). One with ordinary skill in the art would recognize that “internal water content” is the same as moisture content. See MPEP 2144.05(I) 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); Victor teaches the compositions mouthfeel is directly related to the water content and water activity ([0167]). Victor teaches the water of the tea composition can be the naturally occurring moisture of the constituents of the tea composition. In another embodiment, the water can be a concentration of water which is retained in dried or desiccated constituents of the tea composition ([0038]).
Continuing, Victor teaches the composition comprises cinnamon as a natural flavorant ([0019]). Wherein the flavorant is present in an amount of 0.5wt % to 50wt % ([0172]). See MPEP 2144.05(I) 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);
Victor teaches ginger can be added to the composition in a range of from 0.25 wt % to 5 wt % to provide or assist the user with digestive support ([0053]). See MPEP 2144.05(I) 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 addition to ginger, Victor teaches the tea composition can have Lemon juice powder and/or any one or more of lemon flavor, citrus flavor, lemon oil, citrus oil, or other flavor or oil ([0047]).
Further, Victor teaches the composition can have additional ingredients, additives, flavors and extracts; including blueberry extract ([0186]). It would have been obvious to one with ordinary skill in the art through routine optimization to modify the amount of blueberry extract in the composition to achieve the desired flavor. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Victor teaches the composition can have a sweetener such as any one or more of the following a Stevia, an agave, monk fruit extract, honey and honey powder ([0025]). Victor teaches embodiments wherein the stevia is 0.25 wt% to 25 wt% ([0078]-[0080]). See MPEP 2144.05(I) 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).
Victor teaches the composition may comprise tartaric and/or citric acid ([0186]). It would have been obvious to one with ordinary skill in the art to modify the amount of tartaric and/or citric acid in the composition to achieve the desired effect. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, Victor is silent to the composition comprising dehydrated vitis skins.
Smith teaches powder grape extracts having elevated phenolic content (abstract). Smith teaches the extracts can be made from grape seeds, grape skins, or a combination thereof (abstract). Smith teaches the methods of manufacturing described include steps to preserve the phenolic compound content of the extracts (both powder and liquid) and minimize insoluble content ([0086]). Smith teaches the provided extracts may be used in foods, beverages, cosmetics, dietary supplements, nutraceuticals, and the like, thereby providing products with increased antioxidant content ([0190]). Smith teaches the antioxidant compounds including phenolics, flavonoids and resveratrol (emphasis added), can be beneficial for human health ([0003]). Further, Smith teaches the resultant powder extract may have a residual moisture content of about 3.0-3.4% ([0129]). See MPEP 2144.05(I) 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);
Therefore, It would have been obvious to one with ordinary skill in the art to modify Victor to include the dehydrated vitis skin as taught by Smith to increase the antioxidant content in the composition. It would be obvious to one with ordinary skill in the art through routine optimization to include the dehydrated vitis skin in an amount to achieve the desired antioxidant content. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The antioxidants taught by smith include resveratrol. Thus, Smith imparts reasoning for obviousness because the teaching shows dehydrated vitis skin contains resveratrol.
However, the combination of Victor and Smith is silent to the vitis skin being from the group consisting of concord, flame seedless, Dominga, Red Globe, Crimson, Black Muscat, Centennial, Thompson seedless, Autumn Royal, Tempranillo, Glenora, Marquis, Koshu, or Kyoho.
Singha evaluated the phytochemical contents, scavenging activities and protective role against H2O2-induced oxidative stress in of four grape (Vitis vinifera) cultivars extracts, namely Flame seedless (black), Kishmish chorni (black with reddish brown), Red globe (red) and Thompson seedless mutant (green) (abstract). Singha teaches grapes are one of the most popular, widely cultivated, and consumed fruits in the world and are rich in phytochemicals, such as sugars, organic acids, mineral salts, vitamins and enzymes. These phytochemicals are responsible for nutraceutical and health benefits (Introduction, page 306). Singha teaches but among the grape skin of different cultivars, Flame seedless (black) cultivar showed highest concentration of protein, ascorbic acid, polyphenols and flavonoid (Results, page 307).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Victor and Smith to use Flame seedless grape skin as taught by Singha because of the high concentration of protein, ascorbic acid, polyphenols and flavonoids which are responsible for nutraceutical and health benefits.
Lastly, because the combination of Victor, Smith, and Singha teaches a substantially identical composition to the claimed invention the Brix value, pH, total soluble solids, the color absorbance at 420 nm, and a turbidity absorbance at 660 nm would inherently be the same as what is claimed because a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). And See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 18, Victor teaches an enhanced green tea-based product for oral use (abstract). Victor teaches the composition comprises black tea, green tea, and white tea ([0014]). Victor teaches the black tea, green tea, and white tea can be derived from Camellia sinensis leaves ([0073], [0166]). Victor teaches the plant material can be dried and/or ground ([0011]). Victor teaches the tea composition can have 5 wt % to 95 wt % of a plant material harvested from one or more of Camellia sinensis, yerba mate, and peppermint; ([0078]). Thus, Victor reads such that black. green, and white tea can be utilized together in an amount of 5 wt % to 95 wt % of the total composition. Victor teaches the ingredients disclosed herein can be mixed together in any composition without limitation to ingredient type (whether present or not used), compositional range, weight range, volume range, percentage, or other metric. The constituents and/or components can be mixed, blended, or otherwise brought together in many ways. All ingredients and/or constituents can have a value in a formulation as optionally and as desired from 0 wt % to 90 wt %, or greater, or as the upper limit is determined by health considerations of a user ([0061]). Therefore, it would have been obvious to one with ordinary skill in the art through routine optimization to determine the amount of black and white tea in the composition to achieve the desired final product. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Because the combination of Victor, Smith, and Singha teaches a substantially identical composition to the claimed invention the Brix value, pH, total soluble solids, the color absorbance at 420 nm, and a turbidity absorbance at 660 nm would inherently be the same as what is claimed because a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). And See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 19, Victor teaches an enhanced green tea-based product for oral use (abstract). Victor teaches the composition comprises black tea, green tea, and white tea ([0014]). Victor teaches the black tea, green tea, and white tea can be derived from Camellia sinensis leaves ([0073], [0166]). Victor teaches the plant material can be dried and/or ground ([0011]). Victor teaches the tea composition can have 5 wt % to 95 wt % of a plant material harvested from one or more of Camellia sinensis, yerba mate, and peppermint; ([0078]). Thus, Victor reads such that black. green, and white tea can be utilized together in an amount of 5 wt % to 95 wt % of the total composition. Victor teaches the ingredients disclosed herein can be mixed together in any composition without limitation to ingredient type (whether present or not used), compositional range, weight range, volume range, percentage, or other metric. The constituents and/or components can be mixed, blended, or otherwise brought together in many ways. All ingredients and/or constituents can have a value in a formulation as optionally and as desired from 0 wt % to 90 wt %, or greater, or as the upper limit is determined by health considerations of a user ([0061]). Therefore, it would have been obvious to one with ordinary skill in the art through routine optimization to determine the amount of green and white tea in the composition to achieve the desired final product. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Because the combination of Victor, Smith, and Singha teaches a substantially identical composition to the claimed invention the Brix value, pH, total soluble solids, the color absorbance at 420 nm, and a turbidity absorbance at 660 nm would inherently be the same as what is claimed because a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). And See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 20, Victor is silent to the dehydrated vitis skins.
Smith teaches powder grape extracts having elevated phenolic content (abstract). Smith teaches the extracts can be made from grape seeds, grape skins, or a combination thereof (abstract). Smith teaches the methods of manufacturing described include steps to preserve the phenolic compound content of the extracts (both powder and liquid) and minimize insoluble content ([0086]). Smith teaches the provided extracts may be used in foods, beverages, cosmetics, dietary supplements, nutraceuticals, and the like, thereby providing products with increased antioxidant content ([0190]). Smith teaches the antioxidant compounds including phenolics, flavonoids and resveratrol (emphasis added), can be beneficial for human health ([0003]). Further, Smith teaches the resultant powder extract may have a residual moisture content of about 3.0-3.4% ([0129]). See MPEP 2144.05(I) 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);
Therefore, It would have been obvious to one with ordinary skill in the art to modify Victor to include the dehydrated vitis skin as taught by Smith to increase the antioxidant content in the composition. It would be obvious to one with ordinary skill in the art through routine optimization to include the dehydrated vitis skin in an amount to achieve the desired antioxidant content. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, the combination of Victor and Smith is silent to the vitis skin being from the group consisting of concord, flame seedless, Dominga, Red Globe, Crimson, Black Muscat, Centennial, Thompson seedless, Autumn Royal, Tempranillo, Glenora, Marquis, Koshu, or Kyoho.
Singha evaluated the phytochemical contents, scavenging activities and protective role against H2O2-induced oxidative stress in of four grape (Vitis vinifera) cultivars extracts, namely Flame seedless (black), Kishmish chorni (black with reddish brown), Red globe (red) and Thompson seedless mutant (green) (abstract). Singha teaches grapes are one of the most popular, widely cultivated, and consumed fruits in the world and are rich in phytochemicals, such as sugars, organic acids, mineral salts, vitamins and enzymes. These phytochemicals are responsible for nutraceutical and health benefits (Introduction, page 306). Singha teaches but among the grape skin of different cultivars, Flame seedless (black) cultivar showed highest concentration of protein, ascorbic acid, polyphenols and flavonoid (Results, page 307).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Victor and Smith to use Flame seedless grape skin as taught by Singha because of the high concentration of protein, ascorbic acid, polyphenols and flavonoids which are responsible for nutraceutical and health benefits.
Therefore, because the combination of Smith and Singha teaches the identical dehydrated vitis skins as claimed, the skins would inherently comprise anthocyanins including malvidin-3-glucoside.
See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
With regard to Claim 21, Victor teaches the composition may comprise lemon peel ([0019]). Because a composition and its properties are inseparable. The lemon peel would inherently comprise y-terpinene, terpinolene, d-limonene, and citral.
See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Victor is silent to the dehydrated vitis skins.
Smith teaches powder grape extracts having elevated phenolic content (abstract). Smith teaches the extracts can be made from grape seeds, grape skins, or a combination thereof (abstract). Smith teaches the methods of manufacturing described include steps to preserve the phenolic compound content of the extracts (both powder and liquid) and minimize insoluble content ([0086]). Smith teaches the provided extracts may be used in foods, beverages, cosmetics, dietary supplements, nutraceuticals, and the like, thereby providing products with increased antioxidant content ([0190]). Smith teaches the antioxidant compounds including phenolics, flavonoids and resveratrol (emphasis added), can be beneficial for human health ([0003]). Further, Smith teaches the resultant powder extract may have a residual moisture content of about 3.0-3.4% ([0129]). See MPEP 2144.05(I) 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);
Therefore, It would have been obvious to one with ordinary skill in the art to modify Victor to include the dehydrated vitis skin as taught by Smith to increase the antioxidant content in the composition. It would be obvious to one with ordinary skill in the art through routine optimization to include the dehydrated vitis skin in an amount to achieve the desired antioxidant content. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, the combination of Victor and Smith is silent to the vitis skin being from the group consisting of concord, flame seedless, Dominga, Red Globe, Crimson, Black Muscat, Centennial, Thompson seedless, Autumn Royal, Tempranillo, Glenora, Marquis, Koshu, or Kyoho.
Singha evaluated the phytochemical contents, scavenging activities and protective role against H2O2-induced oxidative stress in of four grape (Vitis vinifera) cultivars extracts, namely Flame seedless (black), Kishmish chorni (black with reddish brown), Red globe (red) and Thompson seedless mutant (green) (abstract). Singha teaches grapes are one of the most popular, widely cultivated, and consumed fruits in the world and are rich in phytochemicals, such as sugars, organic acids, mineral salts, vitamins and enzymes. These phytochemicals are responsible for nutraceutical and health benefits (Introduction, page 306). Singha teaches but among the grape skin of different cultivars, Flame seedless (black) cultivar showed highest concentration of protein, ascorbic acid, polyphenols and flavonoid (Results, page 307).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Victor and Smith to use Flame seedless grape skin as taught by Singha because of the high concentration of protein, ascorbic acid, polyphenols and flavonoids which are responsible for nutraceutical and health benefits.
Therefore, because the combination of Smith and Singha teaches the identical dehydrated vitis skins as claimed, the skins would inherently comprise water-soluble procyanidins having a molecular weight of less than 7000 Da.
See MPEP 2112.01(II) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant's arguments filed 06 July 2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In this case, the combination of Fang, Victor, Singha, and Smith are no longer relied upon to teach the claimed invention. Now, Victor, Singha, and Smith are relied upon to teach the newly amended and newly added claims. Thus, all of applicant’s arguments with regard to the combination of Fang, Victor, Singha, and Smith are moot.
With regard to Victor, applicant argues that Victor does not disclose or suggest simultaneously incorporating black tea, green tea and white tea in the specific proportions in the amended claim 1. First, this argument is not found to be persuasive because Victor explicitly discloses the composition may comprise black tea, green tea, and white tea ([0014]) and further with regard to the ingredients within the composition, Victor teaches the ingredients disclosed can be mixed together in any composition without limitation to ingredient type (whether present or not used), compositional range, weight range, volume range, percentage, or other metric. The constituents and/or components can be mixed, blended, or otherwise brought together in many ways ([0061]). Thus, Victor clearly teaches simultaneously incorporating black tea, green tea and white tea. With regard to the proportions, as stated above, Victor teaches the ingredients within the composition can be mixed together in any composition without limitation to ingredient type (whether present or not used), compositional range, weight range, volume range, percentage, (emphasis added) or other metric ([0061]). However, Victor is even more explicit that black tea, green tea, and white tea can be derived from Camellia sinensis leaves ([0073], [0166]). Vicor teaches the Camellia sinensis leaves are plant material and the plant material can be dried and/or ground ([0011]). Victor teaches the tea composition can have 5 wt % to 95 wt % of a plant material harvested from one or more of Camellia sinensis, yerba mate, and peppermint; ([0078]). Thus, Victor reads such that the black tea, green tea, and white tea can be present together in amount of 5 wt % to 95 wt %. And then with regard to their individual percentages in the composition, one with ordinary skill in the art through routine optimization would determine the amount of individual black, green, and white tea in the composition to achieve the desired final product. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, applicant’s argument is not found to be persuasive.
With regard to Singha, applicant argues that Singha is directed to a comparative scientific evaluation rather than a beverage formulation or botanical composition. In this case, Singha is merely relied upon to teach that it would be advantageous to utilize the Flame seedless grape skin because of the high concentration of protein, ascorbic acid, polyphenols and flavonoids which are responsible for nutraceutical and health benefits. 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, the motivation is nutraceutical and health benefits. Continuing, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the teaching of Singha is pertinent to the particular problem in which the inventor was concerned. This particular problem in this case would be the use of specific types of grape skins. Thus, applicant’s argument is not found to be persuasive.
With regard to Singha not teaching the newly added limitation of resveratrol, Singha is not relied upon to teach this limitation. Instead, Smith teaches dehydrated vitis skin contains resveratrol ([0086], [0190]). Thus, applicant’s argument is not found to be persuasive.
With regard to Smith, applicant argues that Smith is not directed to the formulation of the presently claimed botanical composition and does not disclose the integrated formulation in newly amended claim 1. As discussed above with Singha, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, teaches dehydrated gape skin powder which can be used in beverages and thus would be in the field of the inventors endeavor (abstract, [0190]). Smith provides ample motivation to utilize dehydrated vitis skins in the composition taught by Victor to increase the antioxidant content in the composition. Thus, applicant’s argument is not found to be persuasive.
Applicant argues that when amended Claim 1 is considered as a whole, the cited references neither individually nor collectively teach or suggest every limitation of the presently claimed invention, fail to provide an articulated motivation to combine the cited teachings in the manner proposed by the Office Action, and fail to establish that one of ordinary skill in the art would have possessed a reasonable expectation of arriving at the presently claimed integrated botanical formulation. These arguments are not found to be persuasive because amended claim 1 has new grounds of rejection in view of the combination of Victor, Smith, and Singha. The combination of Victor, Smith, and Singha teach all the claimed limitations of amended claim 1. 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, Smith provides ample motivation to utilize dehydrated vitis skin to increase the antioxidant content in the composition. Further Singha provides ample motivation to combine with Victor and Smith to use Flame seedless grape skin as taught by Singha because of the high concentration of protein, ascorbic acid, polyphenols and flavonoids which are responsible for nutraceutical and health benefits. Thus, applicants argument is not found to be persuasive. With regard to applicant’s last argument stating one of ordinary skill in the art would have possessed a reasonable expectation of arriving at the presently claimed integrated botanical formulation, this argument is not found to be persuasive in light of the reasons discussed above. The combination of Victor, Smith, and Singha teach all the claimed limitations of amended claim 1 and provides ample motivation to combine and therefore would arrive at the presently claimed integrated botanical formulation. Thus, applicant’s arguments are not found to be 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.
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/K.I.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
