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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I (claims 1 and 3-4) in the reply filed on 12/17/2025 is acknowledged. The traversal is on the ground(s) that the product and method-of-use claims do not represent distinct inventions as without the formulation, the method cannot be practiced and presents no additional search burden. This is not found persuasive because the search system and the focus of the invention are completely different, requiring an undue burden on the patent examiner. While searches may seem to be overlapping, however extensive since the patent examiner searches the databases mostly literally. Rarely do applicants present claims to an inventions where the distinctness of the invention are readily clear such as a chemical compound and a gene sequence. It is the responsibility of the examiner to enforce 35 USC 101, which allows the applicant to obtain a patent for a single invention. In the opinion of the examiner the applicants present two distinct inventions.
As far as the arguments against Shabana et al. and that the amended claims represent a multi-component formulation of 13 distinct plant species, it is pointed out that the claims have been amended to this composition and will be examined as so in this action, however the initial claims that were presented did not have a special technical feature as discussed in the restriction requirement of 10/17/2025.
As such, the requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 06/21/2023 has been considered here.
Status of Claims
Claims 1, 3-5, and 7-16 are now pending. Claims 2 and 6 are canceled; claims 1 and 3-4 are amended; claims 5 and 7-16 are withdrawn; claims 14-16 are new.
Claims 1 and 3-4 will be examined on the merits herein.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 2009000433 A1 (Nair, 2009) in view of US PGPUB 20150374624 A1 (Ragot et al., 2015).
Nair teaches a composition comprising a plant, plant part, or extract of Curcuma longa, Cuminum Cyminum, Sygzygium aromaticum, Zingiber officinale, Foeniculum vulgare, Nigella sativa, Myristica fragrans, Glycyrrhiza glabra, Trigonella foneum-gracium, and Linum usitatissiumum in the amount from about 0.1 wt% to about 20 wt% based on the total weight of the composition (see Nair, paragraph 0021; claims 10-12). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Nair is silent on the use of Cinnamomum verum, Elettaria cardamom, and Psidium guajava in any amount and is silent on the amount of Linum usitatissimum being 31.5% by weight of the total formulation.
Ragot teaches an infusion composition for making a herbal beverage or tea using hot water extraction (see Ragot, abstract; paragraph 0098) comprising the plant extract of Curcuma longa, Cuminum Cyminum, Sygzygium aromaticum, Zingiber officinale, Foeniculum vulgare, Nigella sativa, Myristica fragrans, Glycyrrhiza glabra, Trigonella foneum-gracium, Linum usitatissiumum, Cinnamomum verum, Elettaria cardamom, and Psidium guajava (see Ragot, paragraphs 0064, 0068). The plant extract is taught to be from the root, leave, and seeds of the plants (see Ragot, paragraphs 0058, 0060-0061). It is taught that the composition comprises more than one of the plant extracts in varying amounts, such as up to 50% (see Ragot, paragraph 0138). As such, it would be within the purview of one with ordinary skill in the art to envisage a composition with amounts up to 50% of one plant extract with mixtures of another plant extract. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1 and 4, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of Nair and Ragot as both references teach nutritional supplements using similar ingredients. Further, both compositions are drawn to herbal extracts from plant materials. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art combine the teachings of Ragot according to the known method of making a dietary nutritional supplement of Nair (see Nair, Example 1) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 2009000433 A1 (Nair, 2009) in view of US PGPUB 20150374624 A1 (Ragot et al., 2015) as applied to claims 1 and 4 above, and further in view of Adaramola (2016).
The teachings of Nair and Ragot have been described supra.
The teachings of Nair and Ragot are silent on the Syzygium aromaticum extract being extracted from the flower buds.
Adaramola teaches that extracts of clove (i.e., Syzygium aromaticum) are known to come from the clove bud, which is the dried unopened flower bud of the clove tree (see Adaramola, introduction, paragraph 2). It is also taught that the clove extract is extracted using water extraction (see Adaramola, 2.1 Sample collection and preparation).
In regards to claim 3, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate the instant composition using the teachings of Nair and Ragot with Adaramola as both Nair and Ragot teach that the extract comes from a plant part (see Nair, claim 10; Ragot, paragraph 0058) and Adaramola teaches that the extraction is done with clove buds, which are a part of the plant. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art combine the teachings of Adaramola (i.e., to use the clove buds to get an extract of clove) according to the known method of using clove extract as discussed in Nair and Ragot to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Conclusion
No claims allowed.
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/Isis A Ghali/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611