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 .
Claims 1-10 are being examined on the merits.
Specification
The disclosure is objected to because of the following informalities:
[005], line 12-13, the phrasing “Bamboo tea as known till date” is confusing and should be reworded to --Bamboo tea as known to date-- or the like.
[085], line 15, the phrase “as compared to well-known” should instead read --as compared to a well-known--.
[085], line 16, “specie” should instead be spelled --species--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-10 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.
Claims 1, 2, and 8 recite the limitations Bambusa cacharensis var. Betu and Bambusa cacharensis var. Pechi Betu, however these variants do not appear to exist (see e.g., Gadua Bamboo, page 3). Additionally, “Betu” appears to be a Bengali vernacular name for Bambusa cacharensis, and either a misspelling of “Betua” or shortening of “Betu bans” (see e.g., Devi & Bhattacharyya, page 31). Without a description clearly describing the two variants and where they came from or additional evidence of the existence of these two varients of Bambusa cacharensis, there is no description clearly conveying to one of ordinary skill in the art that that the inventors had possession of the claimed invention.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under 35 U.S.C. § 112(a) for the reasons set forth above.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-10 are 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.
Claims 1, 2, and 8 recite Bambusa balcooa and Bambusa balcoa. The latter appears to be a misspelling of the former and it is unclear whether the intention is to include a total of 20-40% w/w of Bambusa balcooa or if Bambusa balcoa is meant to represent a different species altogether. Clarification is necessary.
Claims 1, 2, and 8 also recite Bambusa cacharensis var. Betu and Bambusa cacharensis var. Pechi Betu, however as described above these variants do not appear to exist and it is unclear what is intended by listing these two separate variants or whether the intention is to include a total of 20-40% w/w of Bambusa cacharensis. Clarification is necessary.
Regarding Claims 1 and 7, the phrase "optional" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.
Claim 1 recites “thyroid” as a condition the composition is useful for treating/managing/preventing and it is unclear whether this refers to the gland itself or a specific condition related to the thyroid gland. Clarification is necessary.
Claim 3 recites “0.9 mg/100 gm” and it is unclear whether “gm” is meant to stand for gram or is a typo for “mg.” Additionally, the values for potassium and calcium are lacking units and this it is unclear what the numbers are describing. Appropriate correction is required.
Claim 5 recites the limitation "the aqueous solution or decoction of the herbal tea composition.” There is insufficient antecedent basis for this limitation in the claim.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under 35 U.S.C. § 112(b) for the reasons set forth above.
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, 2, 4, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 20050038220 A) in view of Xiong (CN 103371256 B) and Ferrer (Tea Life, 2020, 7 pages).
The instant claims are as of record, drawn to an herbal tea composition rich in antioxidants and other elements comprising seven different species of dried bamboo leaves and an optional flavoring agent which is useful for treating, managing, or preventing various listed health conditions.
Kim et al. teach a bamboo leaf (herbal plant) tea and manufacturing method thereof wherein the bamboo leaves are harvested, cut into 2-3 cm sizes (crushing into tiny bits), and washed prior to additional processing steps including steaming and drying with hot air to achieve a water content of 4%, reduced from 35% (reduction up to 60%; Kim et al., pages 4-5; as required for instant Claims 8-10). The leaves go through a scenting process to produce aroma (strong and pleasant fragrance) and the bamboo leaf tea is brewed in water (aqueous solution) for three minutes (Kim et al. Experimental Example 2, page 7) to obtain a drink (decoction; beverage) which has excellent palatability such as taste, color, flavor, and a high Vitamin C content (balanced nutritional value; Kim et al., pages 5-7; as required for instant Claims 5 and 6). Additionally, Kim et al. teach that bamboo leaves comprise polyphenols (antioxidants), Vitamin C, potassium, amino acids, and sugars, a lot of (rich in) iron (broadly, treat/manage/prevent anemia), linolenic acid, and dietary fiber (other elements), and is low in calories (balanced nutritional value; Kim et al., page 1; as required for instant Claims 1 and 4). Bamboo leaf prevents heart disease (cardiovascular disease), diabetes,
Kim et al. do not teach combining multiple species of bamboo in specific amounts or ratios, all of the claimed uses, inclusion of a flavoring agent, or specifically present other elements.
Xiong teaches a bamboo leaf tea comprising eight different species of bamboo which are ground into a powder (blended) wherein each species accounts for 10 to 15% of the total weight of the composition, and preferably each species comprises 12.5% of the total weight (1:1:1:1:1:1:1:1:1 ratio; Xiong, page 2; as required for instant Claims 1, 2, and 8). The combination of different bamboo species provides a more effective health care composition (Xiong, page 2) which can treat urologic disorders, remove damp heat (e.g., improve skin health), invigorate the spleen, clear heart fire (e.g., prevent insomnia), and provide calming (stress; broadly, brain health), relieving, and detoxifying effects (Xiong, [0019], page 2; as required for instant Claim 1).
Ferrer teaches that bamboo leaf tea has a mildly sweet flavor (sweet textured taste) and can be mixed with other teas (flavoring agent; dried leaves) such as lemon (Citrus limon Brum f.) and ginger (Zingiber officinale; Ferrer, page 2; as required for instant Claims 1 and 5). The bamboo leaf tea is also high in silica (other elements; Ferrer, page 3; as required for instant Claims 1 and 3). Additionally, bamboo leaf tea provides health benefits such as maintaining health blood sugar levels (diabetes), lowers cholesterol (cardiovascular disease), boosts bone health, smooths wrinkles, boosts skin elasticity, rejuvenates joints, directs calcium into and out of the bones (broadly, osteoporosis), regenerates cells, slows aging, reduces the risk of stroke, prevents arterial blood clots, lowers the risk of hypertension, and strengthens the body (Ferrer, pages 2-3; as required for instant Claim 1).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the bamboo leaf tea-making method of Kim et al. to produce a tea with multiple species of bamboo in a 1:1 ratio as taught by Xiong in order to produce a sweet, fragrant tea with numerous health benefits as taught by Ferrer. A skilled artisan would be motivated to combine different species of bamboo in order to provide more health effects, as taught by Xiong, and could expect to do so with a reasonable expectation of success based upon the positive teachings of the prior art regarding the various health benefits of bamboo leaf tea. Additionally, based upon the teachings of the prior art of the known health benefits of bamboo in generally along with the teaching of Xiong that multiple species of bamboo leaves provide more health benefits, a skilled artisan could reasonably be expected to perform a simple substitution of bamboo species to arrive at the instantly claimed invention (see MPEP § 2143).
Kim et al., Xiong, and Ferrer are relied upon for the reasons discussed above. If not expressly taught by the prior art, based upon the overall beneficial teaching provided by this reference with respect to brewing times, such as too short of a time not having good flavor as taught by Kim et al. and too long of a brewing time leaving to bitterness as taught by Ferrer, the adjustments of particular conventional working conditions (e.g., determining one or more suitable brewing time ranges in which to prepare a tea (instant Claim 6)), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
Additionally, with respect to the USC 103 rejection above, please note that the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is intrinsic to the composition reasonably suggested by the cited references, as a whole. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting (see, e.g., MPEP 2112).
Claims 1-4, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 20050038220 A) in view of Xiong (CN 103371256 B) and Ferrer (Tea Life, 2020, 7 pages) as applied to Claims 1, 2, 4, 6, and 8-10 above, and further in view of Wang et al. (Austin Food Sci, 2017, 8 pages).
The instant claims and teachings of Kim et al., Xiong, and Ferrer are as of record.
Kim et al., Xiong, and Ferrer do not teach the other elements in the claimed amounts.
Wang et al. teach that nutrient value of bamboo leaves depends on species, harvesting, and growing location and indicate that depending on the choice of bamboo (or, broadly, by including multiple species) that in general bamboo leaves comprise (Wang et al., Tables 3 and 4, page 5):
4.7 – 16.7 μg/g (ppm) of copper (Cu);
22.1 – 36.0 μg/g of zinc (Zn);
111.5 – 151.2 μg/g of iron (Fe);
7.9 – 12.6 mg/g of potassium (K); and
4.2 – 6.5 mg/g of calcium (Ca),
The “at least” values for copper and zinc overlap.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the bamboo leaf tea-making method of Kim et al. to produce a tea with multiple species of bamboo in a 1:1 ratio as taught by Xiong in order to produce a sweet, fragrant tea with numerous health benefits as taught by Ferrer using bamboo with the minerals of Wang et al. A skilled artisan would be motivated to provide those minerals because they are dietary nutritional components (Wang et al., Conclusion, page 7) and could do so with a reasonable expectation of success by providing multiple species of bamboo leaves in the tea product which comprise the minerals as claimed.
If not expressly taught by Kim et al., Xiong, Ferrer, or Wang et al., based upon the overall beneficial teaching provided by this reference with respect to amounts of other elements provided in the composition in the manner disclosed therein, the adjustments of particular conventional working conditions (e.g., determining one or more suitable silica, iron, potassium, and calcium amounts to provide in the composition (instant Claim 3)), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
Claims 1, 2, 4-5, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 20050038220 A) in view of Xiong (CN 103371256 B) and Ferrer (Tea Life, 2020, 7 pages) as applied to Claims 1, 2, 4, 6, and 8-10 above, and further in view of My Blue Tea (Benefits of Bamboo Tea, 27 January 2021, 3 pages).
The instant claims and teachings of Kim et al., Xiong, and Ferrer are as of record.
Kim et al., Xiong, and Ferrer do not teach the tea having a golden color.
My Blue Tea teaches that bamboo tea is a delicious, healthy infusion of a pale green-light yellow (golden) color containing numerous beneficial properties (My Blue Tea, page 2; Image, page 1). The tea comprises silica, magnesium, potassium, iron, copper, other minerals, and 17 amino acids (My Blue Tea, page 2).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the bamboo leaf tea-making method of Kim et al. to produce a tea with multiple species of bamboo in a 1:1 ratio as taught by Xiong in order to produce a sweet, fragrant tea with numerous health benefits as taught by Ferrer with the golden color taught by My Blue Tea. As indicated by Kim et al., pleasant color is important (Kim et al., pages 5-7), and a skilled artisan would know that brewing time affects both color and taste as taught by Kim et al. and Ferrer. A skilled artisan could therefore produce a tea with the golden color of My Blue Tea in order to obtain a mild, thirst-quenching tea (My Blue Tea, page 2) with a reasonable expectation of success.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972).
Conclusion
No claims are allowed.
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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655