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, 8-16 in the reply filed on November 19, 2025 is acknowledged.
Claims 6-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.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 November 19, 2025.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-16
Withdrawn claims:
6-7
Claims currently under consideration:
1-5, 8-16
Currently rejected claims:
1-5, 8-16
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 § 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 1-5 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Komeda (US 2008/0096266)(IDS Reference filed 12/01/2023) in view of Amano (JP 2017079683 A)(IDS Reference filed 06/18/2025).
Claims 1, 3, and 8 are product-by-process claims. MPEP §2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Regarding claim 1, the structure imparted by the process of claim 1 is a tea beverage including JCM5805.
Regarding claim 1, Komeda teaches a drink having lactic acid bacterium resistant to high-temperature heat treatment and polyphenols, where the drink is a tea drink that is packed in a sealed container (i.e., packaged; [0020]). Komeda also teaches that the polyphenols are mixed with extract solutions of tea selected from green tea to make a drink ([0042]). Komeda also teaches that the concentrations of polyphenols in the present invention are in a range of 50 to 130 mg/100 mL ([0031]), which falls within the claimed range of “10 mg or more/ 100 mL”. Komeda also teaches subjecting drinks to high-temperature heat treatments ([0011]) and that high-temperature heat treatments include sterilization at 50°C or higher ([0029]), which overlaps with the claimed range of “heating to 100°C or higher”).
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.
Komeda does not teach the tea beverage comprising JCM5805.
However, in the same field of endeavor, Amano teaches a packaged beverage ([0001]) comprising JCM5805 as the lactic acid bacteria in the drink ([0025]).
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 drink of Komeda with the use of 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 stain killed bacteria in the beverage composition ([0025]).
Regarding claim 2, Komeda teaches that lactic acid bacterium is added to the drink at an amount of 109 to 1011 bacteria per 100 g of drink ([0020]). Because tea is primarily water, one of ordinary skill would reasonably presume that the density of a tea beverage is approximately that of water, which is 1 g/mL. Thus, the lactic acid bacteria would be added to Komeda in an amount of 109 to 1011 (1 billion to 100 billion) bacteria per 100 mL of drink, which overlaps with the claimed range of “6 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 claims 3 and 8, the structure imparted by the process of claim 3 is a tea beverage.
Regarding claims 3 and 8, Komeda teaches subjecting the drink to high-temperature heat treatment ([0011]) and that high-temperature heat treatments include sterilization at 50°C or higher ([0029]), which overlaps with the claimed range of “heating to 111°C to 150°C”). Although Komeda does not teach that the high-temperature heat treatment has an F0 value of 1 to 40, the product of Komeda is patentably indistinct from that of the claimed invention. The required F0 value does not result in a structurally different product.
Regarding claims 4, 9, and 10, Komeda also teaches that the concentrations of polyphenols in the present invention are in a range of 50 to 130 mg/100 mL ([0031]), which falls within the claimed range of “10 mg/100 mL to 200 mg/100 mL”.
Regarding claims 5 and 11-16, Komeda teaches that the polyphenols are mixed with extract solutions of tea selected from green tea to make a drink ([0042]).
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).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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, 8-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 10-16 of copending Application No. 18/281,985 (reference application), hereinafter ‘985.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and ‘985 are both directed to a heat-treated packaged tea beverage comprising polyphenols and lactic acid bacterial. Although the claims are not identical, ‘985 is obvious in view of the instant application.
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 Generally available M-Th 8:00a-5:00p, F 8:00-2:00.
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793