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 with traverse of Group I in the reply filed on 5/11/2026 is acknowledged. The traversal is on the ground(s) that Barroso (which was used ot break unity) does not disclose the claimed weight ration of Di caffeoylquinic acids to tocopherol. This is not found persuasive because the technical feature (which Barroso does not make a contribution over) is a mixture of dicaffeoylquinic acids and tocopherol (as discussed on page 5 of the Restriction requirement).
The requirement is still deemed proper and is therefore made FINAL.
Claims 25-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/11/2026.
Current Status of 18/290,919
This Office Action is responsive to the amended claims of 1/22/2021.
New Claims 16-24 are examined on the merits.
Priority
This is a national stage entry of PCT/EP2021/070712.
The effective filing date is 07/23/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/22/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 20-24 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.
Claim 20 recites the limitation “composition” while base claim 16 recites “mixture”. Merriam-Webster defines composition as “ a product of mixing or combining various elements or ingredients”. It is confusing what distinguishes “mixture” from “composition” based on the Merriam-Webster definition. Because it is confusing how claims 20 and 16 are different, the scope of claims 20-24 are unclear and thus indefinite.
Claim 22 is additionally indefinite because Claim 22 recites that it comprises one or more plant extracts. Examiner is unsure if the composition should add an additional one or more plant extracts OR if the components (a) and (b) in claim 16 are themselves plant extracts. Because the metes and bounds of claim 22 are unclear, claim 22 is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 22 recites that it comprises one or more plant extracts. If the composition should add an additional one or more plant extracts, then applicants should say “further comprises”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 16-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to plant extracts (natural phenomenon) without significantly more. The claim(s) recite(s) plant extracts comprising (a) diacaffeoylquinic acid and (b) tocopherol, which (per broadest reasonable interpretation) are interpreted as nothing other than constituents of plant extracts (hence a judicial exception). This judicial exception is not integrated into a practical application because the weight ratios of said constituents of these plant extracts amount to insignificant extra-solution activities that add nothing more than a drafting effort designed to monopolize the exception(s). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because these weight ratios are insignificant extra-solution activities that add nothing more than a drafting effort designed to monopolize the exception(s). The various weight ratios may also constitute well-understood, routine, conventional activities previously known to the industry, as the industry does know how to select only specific weight ratios and weight percentages.
Step 1: Is the broadest reasonable interpretation of the claims as a whole drawn to a process, machine, manufacture, or composition of matter?
Yes, the broadest reasonable interpretations of claims 16-24 are drawn to a plant extract, which is a composition of matter. Lattanzio discloses that Artichokes contain both dicaffeoylquinic acids and tocopherol (abstract and 5. Therapeutic properties).
Revised Step 2A:
Prong One: Do claims 16-24 recite natural phenomenon?
Yes, the broadest reasonable interpretation of claims 16-24 are drawn to plant extracts (natural phenomenon) comprising (a) diacaffeoylquinic acid and (b) tocopherol (both of which are naturally occurring in plant extracts).
Prong Two: Do claims 16-24 recite additional elements that integrate the judicial exception (JE) into a practical application?
No, claims 16-24 do not recite additional elements that integrate the JE into a practical application. Claims 16-24 are each interpreted (broadest reasonable interpretation) as drawn to plant extracts comprising (a) diacaffeoylquinic acid and (b) tocopherol. The various weight ratios do not constitute “additional elements that integrate the JE into a practical application” as these weight ratios are insignificant extra-solution activities that add nothing more than a drafting effort designed to monopolize the exception(s).
Step 2B: Do claims 16-24 recite additional elements that amount to significantly more than the judicial exceptions (JE)?
No, the claims 16-24 do not recite additional elements that amount to significantly more than the JE. Claims 16-24 are each interpreted (broadest reasonable interpretation) as drawn to plant extracts comprising (a) diacaffeoylquinic acid and (b) tocopherol. The various weight ratios do not constitute “additional elements that amount to significantly more than the JE” as these weight ratios are insignificant extra-solution activities that add nothing more than a drafting effort designed to monopolize the exception(s). The various weight ratios may also constitute well-understood, routine, conventional activities previously known to the industry, as the industry does know how to select only specific weight ratios and weight percentages.
Thus, claims 16-24 are not patent eligible and are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
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.
Claim(s) 16-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LIN (CN101057674) as evidenced by Thomas (Dr. Liji Thomas, “Vitamin E alpha Tocopherol”, News Medical, April 1, 2016).
LIN anticipates a composition of functional ingredients of functional health products (i.e. a mixture) comprising vitamin E and one or more dicaffeoylquinic acids (example 6).
Thomas is relied upon for the beneficial teaching that another name for vitamin E is tocopherol (page 1).
LIN anticipates (from example 6) 100 g of propolis extract (which contains at most 30 grams of dicaffeoylquinic acid) and 100 grams of vitamin E/tocopherol. This is a 0.3 ratio which is between the instant 0.001 and 5 ratios. This anticipates claim 16.
LIN anticipates the dicaffeoylquinic acids of 3,4-dicaffeoylquinic acid, 3,5- dicaffeoylquinic acid, and 1,5- dicaffeoylquinic acid (page 5). This anticipates claim 17.
LIN anticipates the total weight to be 300 grams (example 6). Dicaffeoylquinic acid can be present in an amount of (30g/300g; example 6) 10%. This anticipates claim 18.
LIN anticipates 100 grams of vitamin E/tocopherol which is 33.3% (100g/300g) (example 6). This anticipates claim 19.
The instant specification states that a composition is preferably a cosmetic composition, composition for food or pleasure, or a pharmaceutical composition. This limitation will not be read into the broadest reasonable interpretation of the claim. However, LIN anticipates a composition of food (“functional health food” Example 6). This anticipates claims 20-21 and 23.
LIN anticipates the mixture/composition containing 2 extracts (propolis and gardenia; Example 6). This anticipates claim 22.
LIN anticipates the mixture/composition being a pharmaceutical composition (page 3). This anticipates claim 24.
Conclusion
No claims are currently allowed as written.
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/G.A.H./ Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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