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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application on 06/28/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/15/2025 and 01/21/2025 is being considered by the examiner. The signed IDS form is attached with the instant office action.
Response to Amendment
Applicant's amendment and argument filed 03/04/2026, in response to the non-final rejection, are acknowledged and have been fully considered. Any previous rejection or objection not mentioned herein is withdrawn.
Claims 1 and 13-23 are pending of which claims 1 and 13-22 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/29/2025.
Claims 23 is being examined on the merits.
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 23 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 23 recites, in lines 2-3, “a freeze-dried deer antler powder preparation step of freezing a raw deer antler, pulverizing and freeze-drying” and it is unclear if the applicant is intending a step of freezing raw deer antler, pulverizing and freezing again or if there is only one freezing step. The limitation is confusing and indefinite.
Claim 23 contains the trademark/trade name Flavourzyme. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe product and, accordingly, the identification/description is indefinite.
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Miller Haines Stephen Roy Coat (CN1795204A), Lee Chan Ho et. al. (KR20110113404A) and Cheong (from IDS 06/28/2023, KR101822752).
Coat teaches of isolated deer velvet extracts (see abstract) and teaches “Deer antler is processed commercially by heat soaking or freeze drying. The hot dipping method is a traditional method in China in which the stems of antlers are suspended from the bottom (i.e. the tip is down) and dipped repeatedly into almost boiling water for a period of time. After dipping, the antlers are allowed to cool before being dipped again. The maceration is continued until a clear plasma foam appears in the bottom of the antler cuts. Then, the antlers are placed in a desiccator with a temperature of about 15°C and low humidity for several weeks until the antlers are dry.
Choose antlers that have been treated (heat-soaked or freeze-dried). The antler skin is removed from the antlers with a sharp knife. All parts of elk antlers aged 55-60 days were included except the bottom area of the stem, including the brow tynes. The antler horns are cut into 1-2cm thick rings with a band saw, then chiseled into small blocks of a few centimeters in size, and then ground into a powder with a grinder with a 0.5mm aperture” (see page 4, para. 8).
Coat does not teach using an enzyme such as Neutrase or Flavourzyme in the process of creating the deer antler extract or heat treating the freeze-dried antler powder.
Cheong teaches that obtaining a protein hydrolase extract from deer antlers maximizes physiologically active ingredients of deer antler and maximizes the concentration of effective physiologically active ingredients (see description 2nd para.). Cheong teaches wherein the enzyme which can be used for hydrolyzing the antlers can be Neutrase (see page 4 near bottom, page 5 first line or 4th para., table 7). Cheong teaches different enzyme type characterizations and optimizing conditions (see page 4, after II. Results). Cheong also teaches Flavourzyme use (see page 5, para. 3 and table 7and 8, figure 6).
Ho teaches of creating fermented antlers using enzymes from Saccharomyces cerevisiae (see abstract). Ho teaches wherein heat sterilization steps are needed which can be done by sterilizing at high temperatures of 100 to 120 degrees Celsius for 20 to 30 minutes (see page page 2, para. 17). Ho teaches of adding the enzyme medium in an amount of 10 to 100 times (by weight) based on 1 g of antler.
Therefore it would have been obvious to persons having ordinary skill in the art and before the effective filing date to create the instant method for obtaining a freeze-dried enzyme treated deer antler. Coat teaches wherein commercial production of deer antlers in China is done by a method known as hot dipping which can be done by either soaking the antlers in boiling water of freeze-drying them. Coat teaches maceration and cutting of the antlers to create powders of a specific size, which would be the pulverization step instantly claimed. Ho teaches of sterilization steps that can sterilize the antlers through heating at temperatures of 120 degrees Celsius for 20 minutes. Cheong teaches that enzyme treating the antlers creates a hydrolyzed product that maximizes the active ingredients and teaches using Neutrase to enzymatically break down proteins. Cheong also discusses wherein optimization of the enzyme treatments are needed depending on the enzyme being used. Optimizing the amount of enzyme to antler and length of enzyme treatment are therefore well within the optimization of any skilled artisan and does not appear to be critical to the method.
Conclusion
Currently no claims are 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 JACOB ANDREW BOECKELMAN whose telephone number is (571)272-0043. The examiner can normally be reached Monday-Friday 8am-5pm.
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JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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