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 .
Receipt is acknowledged for preliminary amendment and IDS filed 01/22/2024.
Claims 2-6, 8-11 and 14-17 are amended.
Claims 1-17 are pending.
Priority
This application is a 371 of PCT/EP2022/070181 filed 07/19/2022 and which claims benefit of FR2107927 filed 07/22/2021.
Information Disclosure Statement
The IDS filed 01/22/2024 has been considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Page 2, paragraph [6] has computer executable embedded link.
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 1-17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-2, 6, 8, 9 and 13 recite the broad recitation mg/kg catechin and pH (claim 1), catechin present or not present (claim 2), pH (claim 6), plant matter/water ratio (claim 8), phytic acid concentration (claim 9), and concentration of active agent (claim 13) and the claims uses the term preferably to further narrow those parameters within the same claim and the narrower ranges/limitation represent range within a range limitation in the same claim. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-17 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-13 of co-pending Application No. 18035711 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending process for obtaining aqueous extract of tea leaves (Camellia sinensis, a species of black tea leaves) in steps a) to k) is the same steps in the examined process of examined claim 6 and the same steps involved in the process sets of examined claim 1; these steps lead to the production of extracts of the black tea leaves of the species Camellia sinensis. The co-pending process steps teach all the elements of the examined process steps of claims 1 and 6. The short length RNA having at lost 150 nucleotide in co-pending claims 8 and 9 meet the RNA examined claims 1 and 5. The co-pending compositions and the examined compositions have utility as cosmetics. The co-pending claims have an earlier effective date of 11/23/2020 while the examined claims have an effective date of 07/22/2021.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior art of Interest cited by applicant in IDS: SATAKE NORIHIKO et al in JP 2006191924 A teaches method of extracting green tea leaves using phytic acid, the extract is added with a mixed solvent of organic and water, and then contacted with activated carbon; the pH of the composition is adjusted with citric acid to a pH in the range of up to 6 (claims 1-8 of the translation. Paragraph [0010] of the translation include tea leaves from Camellia sinensis which meets the limitation of the species extracted in the examined claims. While extract of Camellia sinensis contains or should contain RNA, SATAKE NORIHIKO does not teach that the extract contains small RNA with a length of at most 150 nucleotides. The extract composition of SATAKE NORIHIKO also contains catechins in amounts of 10-90% (claims 1, 3, 4 and 7 and paragraphs [0002]-[0004], [0006]-[0009]).
No claim is allowed.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached at 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613