DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-20 are currently pending.
Election/Restrictions
3. Applicant’s election without traverse of Group II, claims 8-20, soybean peptide powder for species A and arabic gum for species B in the reply filed on September 18, 2025 is acknowledged.
4. Claims 1-7 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
5. Claims 8-11 and 13-20 are examined on the merits in regards to the elected species.
Information Disclosure Statement
6. In the Information Disclosure Statement filed 8/8/24, applicant did not supply a copy of NPL reference #1. Thus, this reference could not be considered and the citation was lined through.
In the Information Disclosure Statement filed 8/12/25, applicant did not supply a copy of NPL reference #1. Thus, this reference could not be considered and the citation was lined through.
Claim Rejections - 35 USC § 103
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.
7. Claim(s) 8, 9, and 13-20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 111973504 A – English translation) in view of Yue (CN 103689733 A – English translation).
Lin teaches a method for promoting weight loss and reducing body fat by administering a composition comprising a fermented black tea. The fermented black tea is made by extracting Camellia sinensis leaves with water at 50 to 100°C for 0.5 to 3 hours and then fermenting the extract with Saccharomyces cerevisiae BCRC20271, Bifidobacterium lactis BCRC910887, Lactobacillus gasseri BCRC910886, and Gluconacetobacter xylinus BCRC12335 for 12 days to 25 days (see Embodiment 1). The reference teaches that the method is also useful for reducing waist circumference (see last paragraph of page 3 and Embodiment 8). The reference does not teach including soybean peptide powder in the composition.
Yue teaches a method for promoting weight loss by administering a composition comprising black tea and soybean peptide powder (see abstract and claims).
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions that promote weight loss. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions to promote weight loss, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions to promote weight loss. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
The references do not specifically teach adding the ingredients together in the amounts claimed by applicant or administering the dosages claimed by applicant. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” The references teach the use of each of the ingredients in a pharmaceutical composition. Varying the concentration of ingredients within a pharmaceutical composition and the dosage of a pharmaceutical composition is not considered to be inventive unless the concentration or dosage is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients or the dosage produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient concentration and dosage would have been obvious before the effective filing date of applicant’s claimed invention.
The references do not specifically teach that the administration of the composition has all of the same effects claimed by applicant in claims 14-16. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The references teach administering the same composition as claimed to the same subject as claimed for the purpose of weight loss. Thus, the method taught by the prior art is structurally the same as the claimed method. Therefore, the administration of the reference composition should intrinsically result in the promotion of the growth of Hafnia alvei, the increase in short-chain fatty acids, and the inhibition of appetite if applicant’s invention functions as claimed.
8. Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 111973504 A – English translation) in view of Yue (CN 103689733 A – English translation) as applied to claims 8, 9, and 13-20 above, and further in view of Asano (JP 2005187442 A – English translation).
The teachings of Lin and Yue are discussed above. The references do not teach including arabic gum in the composition. However, Asano teaches that arabic gum is useful for treating obesity (see abstract and claims).
These references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions that promote weight loss. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions to promote weight loss, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions to promote weight loss. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
The references do not specifically teach adding the ingredients together in the amounts claimed by applicant claimed by applicant. However, as discussed in MPEP section 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” The references teach the use of each of the ingredients in a pharmaceutical composition. Varying the concentration of ingredients within a pharmaceutical composition is not considered to be inventive unless the concentration is demonstrated as critical. In this particular case, there is no evidence that the claimed concentration of the ingredients produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameter, this optimization of ingredient concentration would have been obvious before the effective filing date of applicant’s claimed invention.
9. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Coe Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 3:30pm.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655