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/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 10-16 in the reply filed on March 31, 2026 is acknowledged.
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 31, 2026.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-16
Withdrawn claims:
6-9
Claims currently under consideration:
1-5, 10-16
Currently rejected claims:
1-5, 10-16
Allowed claims:
None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because Fig. 1 is illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komeda (US 2008/0096266 A1)(IDS Reference filed 12/01/2023).
Regarding claim 1, Komeda teaches a drink with lactic acid bacteria and polyphenols, wherein the drink may be a tea drink and packed in a sealed container ([0020]), with a total polyphenol concentration of 50 to 130 mg/100 mL (which lies within the claimed range of “10 to 200 mg/100 mL”; [0031]). Komeda also teaches that high-temperature treatment is conducted at a pH range of 4.6-6.6 during production ([0021]), which falls within the claimed range of “4.5-7.5”.
Regarding claim 3, Komeda also teaches that the lactic acid bacterium may be Lactococcus ([0032]).
Regarding claims 5 and 13, Komeda also teaches that the drink is a green tea drink ([0020]) and a black tea drink ([0043]).
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 2, 10, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Komeda (US 2008/0096266 A1)(IDS Reference filed 12/01/2023).
Regarding claim 2, Komeda teaches that the lactic acid bacterium is added in an amount of 109 to 1011 bacteria per 100 g of drink (equivalent to 1 billion to 100 billion bacteria per 100 g of drink; [0020]). Because tea is primarily water, one of ordinary skill would reasonably presume that the density of the tea is approximately that of water, which is 1 g/mL. Thus, the lactic acid bacteria of Komeda would be added in an amount of 109 to 1011 bacteria per 100 mL of drink, which overlaps with the claimed range of “10 billion or more bacteria/ 100 mL”.
With respect to the overlapping ranges, MPEP §2144.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 10, Komeda teaches all elements of claim 2 as described above. Komeda also teaches that the lactic acid bacterium may be Lactococcus ([0032]).
Regarding claim 12, Komeda teaches all elements of claim 2 as described above. Komeda also teaches that the drink is a green tea drink ([0020]) and a black tea drink ([0043]).
Regarding claim 15, Komeda teaches all elements of claim 10 as described above. Komeda also teaches that the drink is a green tea drink ([0020]) and a black tea drink ([0043]).
Claims 4, 11, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Komeda (US 2008/0096266 A1)(IDS Reference filed 12/01/2023) in view of Amano (JP 2017079683 A).
Regarding claims 4 and 11, Komeda teaches that there is no particular limitation to the lactic acid bacteria used as long as it has antiallergenic activity, including Lactococcus lactis ([0032]).
Komeda does not teach wherein the Lactococcus lactis is JCM5805.
However, in the same field of endeavor, Amano teaches of a packaged beverage ([0001]) comprising JCM5805 as the lactic acid bacteria in the drink ([0025]), which is a known Lactococcus lactis.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the beverage of Komeda with the use of Lactococcus lactic JCM5805 as the lactic acid bacteria as taught by Amano. One of ordinary skill would have been motivated to make this modification because Amano teaches that the JCM5805 strain killed bacteria in the beverage composition ([0025]). Furthermore, the claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element (the Lactococcus lactis of Komeda) for another (the Lactococcus lactis JCM5805 of Amano) and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B).
Regarding claims 14 and 16, Komeda in view of Amano teaches all elements of claims 4 and 11 as described above. Komeda also teaches that the drink is a green tea drink ([0020]) and a black tea drink ([0043]).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-16 of copending Application No. 18/281,991 (reference application, hereinafter ‘991). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of ‘991 recites a packaged tea beverage comprising JCM5805 strain in a tea extract liquid having a polyphenol concentration of 10 mg or more/100 mL, which overlaps with the instant claimed range of 10 to 200 mg/100 mL. Although claim 1 of ‘991 does not recite the pH of the tea beverage, it would have been obvious to one of ordinary skill in the art to make a tea product with the instantly claimed pH. Additionally, although the instant claim 1 does not recite specifically JCM5805 bacteria, JCM5805 is a known lactic acid bacterium. Additionally, claims 4, 9, and 10 of ‘991 recite a polyphenol concentration of 10 to 200 mg/100 mL, which matches the instantly claimed polyphenol composition. Additionally, although claim 3 of ‘991 recites the heat treatment temperature, this is a product-by-process limitation. The composition of ‘991 would be patentably indistinct from that of the instantly claimed invention.
Regarding claim 2, claim 2 of ‘991 recites that the content of the lactic acid bacteria is 6 billion or more bacteria/100 mL, which overlaps with the instantly claimed amount of 10 billion or more/100 mL.
Regarding claims 3, 4, 10, and 11 claim 1 of ‘991 recites that the bacteria used is JCM5805.
Regarding claims 5 and 12-16, claims 5 and 11-16 of ‘991 recites that the packages tea beverage is a green tea beverage.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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