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 .
Status of Claims
Claims 1-2 are currently under examination and the subject matter of the present Office Action.
Specification
A substitute specification is required pursuant to 37 CFR 1.125(a) because the instant Specification submitted 09/13/2023 contains multiple grammatical errors, and some sentences are incomprehensible. A few examples are noted herein:
[0004] In powder beverage, since the action of dispersing into liquid such as water is performed by the consumer by himself (herself), from the viewpoint of reducing the work burden of the consumer, development of powder beverage having excellent dispersibility was awaited.
[18] A method for proliferating intestinal lactic acid bacteria, comprising administering the powder beverage according to [7] to human.
[0015] Green leaves of specific plants of the present invention relate to plant body including leaf part of the specific plant, and can include leaves, as well as stem, or other parts. Since it takes effort to remove stem from the aerial part at the time of harvest, and the stem part also comprises nutrient components such as insoluble dietary fiber, etc. in abundance, from the viewpoint of reducing manufacturing cost and the viewpoint of alibility, it is preferable to comprise stem together with leaves.
[0037] As juice powder of dark-green vegetables of the present invention, for example, those obtained by concentrating juice of dark-green vegetables at low temperature to concentrate the solid content, and lyophilizing or spray drying the concentrated liquid can be used.
[0059]
(1) Use intending effect of intestinal regulation
Since the powder beverage comprising young barley grass of the present invention exerts an effect of intestinal regulation, it can be used as a composition for intestinal regulation. When using as a composition for intestinal regulation, it is not particularly limited as long as it can be distinguished from other products as product as being used for intestinal regulation. Those with an indication of having an effect of intestinal regulation on any of the main body, package, instructions, advertisement of the product of the present invention are encompassed. Embodiment of using the powder beverage comprising young barley grass of the present invention as a composition for intestinal regulation is not limited to those with an indication of comprising young barley grass as active ingredients for intestinal regulation on the package of the product, etc. For example, it can be one indicating a particular ingredient (dietary fiber, etc.) contained in young barley grass as active ingredient, and it can be also one not specifying the active ingredients.
[0119] Since the powder beverage of the present invention comprises dark-green vegetables, and is a powder beverage having excellent dispersibility, it can be used as foods and drink, and is the industrial applicability is high.
Applicant is asked to thoroughly review the Specification for grammar. It appears to be a literal translation into English from a foreign document. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
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 1-2 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. For example, Claim 2 recites at least 3 different sentences. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. See MPEP 2175.
Claim 1 is indefinite for reciting “A powder beverage comprising at least one type of dark-green vegetable, wherein a dispersion time…”. It is unclear from this recitation what is being dispersed and in what medium it is being dispersed in. While the claim goes on to list a procedure for measuring the dispersion time of a powder beverage, this succeeding paragraph is not examined because it is in improper form, and because the claim is drawn to a composition, and the measurement of a property of the composition does not materially affect the composition. Similarly, Claim 2 is rejected for indefiniteness for reciting “A powder beverage comprising at least one type of dark-green vegetable, wherein a dispersion distance…”.
Claim 1 recites “<Measurement procedure of dispersion time>” and “(dispersion time)”; Claim 2 recites “<Measurement procedure of separation distance>”and “(separation distance)”. It is unclear what the Applicant mean with the use of parentheses, i.e. whether Applicant is limiting certain features or not. Thus, the metes and bounds of the claims cannot be determined, and the claim are rejected. Should Applicant be attempting to narrow the certain features, e.g. time with “dispersion time” limitation, then the claims are also rejected because a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation in the same claim is 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). The claim is 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.
Claims 1-2 recite the limitation "“inject a powder beverage", but neither claim makes it clear that the powder beverage comprising the dark-green vegetable is the powder beverage being injected. Therefore, the recitation in Claim 1, lines 10-11, and Claim 2, line 13 recite, “the powder beverage” lacks proper antecedent basis because it is unclear if the “powder beverage” are the claimed powder comprising the dark-green vegetable.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujiwara et al. (JP 2014-23524 A, Machine Translated in IP.com), hereinafter Fujiwara.
Regarding Claims 1 and 2, Fujiwara discloses a powdered beverage comprising a dry powder of leafy vegetable (Abstract; p. 8).
With regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner notes that the dispersion time and distance are properties of the powder beverage, and in light of the lack of clarity of the claims, i.e. the claims are directed to a composition and provide no specificity as to the particulars of the composition, other than being a powder comprising dark-green vegetable, the prior art anticipates the claims’ particulars of the composition as best understood. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01(II).
The Examiner also notes that, regardless of the recitation of what happens to a composition when it is subjected to specific conditions, a composition claim is examined based on the components. The claims characterize the results of dispersing the powder in a container with water, which does not distinguish the instantly claimed composition from the composition taught in the prior art. As such, the rejection supra is proper.
Double Patenting
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 of co-pending Application 18/367,751, hereinafter ‘751.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to the same subject matter and composition components.
‘751 is directed to a granulated product comprising a dark-green vegetable wherein the dark-green vegetable is a dry powder, and teaches that the granulated product is for beverage, which overlaps with the instantly claimed feature in near entirety .
As with the 103 rejection above, with regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner points out that a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, Claims 1 and 2 use the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of dispersing the powder in a container with water, and does not distinguish the instantly claimed composition from the composition taught in ‘751.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-7 of co-pending Application No. 18/466,314, hereinafter ‘314.
Although the claims at issue are not identical, they are not patentably distinct from each other.
314’ teaches young barley grass powder, and beverage comprising the same, which overlaps with the instantly claimed feature in near entirety.
As with the 103 rejection above, with regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner points out that a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, Claims 1 and 2 use the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of dispersing the powder in a container with water, and does not distinguish the instantly claimed composition from the composition taught in ‘314.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 of co-pending Application No. 18/367,757, hereinafter ‘757.
Although the claims at issue are not identical, they are not patentably distinct from each other.
’757 teaches granulated product comprising dry powder, dark-green vegetable, and the granulated product is for beverage, which overlaps with the instantly claimed feature in near entirety.
As with the 103 rejection above, with regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner points out that a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, Claims 1 and 2 use the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of dispersing the powder in a container with water, and does not distinguish the instantly claimed composition from the composition taught in ‘757.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 of co-pending Application No. 18/898,701, hereinafter ‘701, in view of Fujiwara et al. (JP 2014-23524 A, Machine Translated in IP.com), hereinafter Fujiwara.
Although the claims at issue are not identical, they are not patentably distinct from each other.
’701 is drawn to a container-packed composition, wherein the composition contains green vegetable, specifically barley leaves, and is powdery .
‘701 does not teach that a beverage composition.
Fujiwara discloses a powdered beverage comprising a dry powder of leafy vegetable (Abstract; p. 8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Fujiwara with ‘701 and make a beverage comprising the powder composition comprising barley leaves. Obviousness is established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
As with the 103 rejection above, with regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner points out that a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, Claims 1 and 2 use the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of dispersing the powder in a container with water, and does not distinguish the instantly claimed composition from the composition taught in ‘701.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-16 of co-pending Application No. 18/473,672, hereinafter ‘672, in view of Fujiwara et al. (JP 2014-23524 A, Machine Translated in IP.com), hereinafter Fujiwara.
Although the claims at issue are not identical, they are not patentably distinct from each other.
’672 is drawn to an oral composition comprising a dark-green vegetable and one or more selected from an amino acid, a peptide, and a protein; wherein the dark-green vegetable is a dry powder.
‘672 does not teach that a beverage composition.
Fujiwara discloses a powdered beverage comprising a dry powder of leafy vegetable (Abstract; p. 8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Fujiwara with ‘672 and make a beverage comprising the powder composition comprising barley leaves. Obviousness is established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
As with the 103 rejection above, with regards to the phrases “wherein a dispersion time measured by…” in Claim 1 and “wherein a dispersion distance after stirring for 1 min as measured by…” in Claim 2, the Examiner points out that a 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d 1165, 1172 (Fed._Cir. 1993). See also Minton v. National Assoc. of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) ("A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited."). Note MPEP 2111.04. In this case, Claims 1 and 2 use the term "wherein", rather than "whereby", but it is concluded that the terms should be treated the same ... the wherein clause merely characterizes the results of dispersing the powder in a container with water, and does not distinguish the instantly claimed composition from the composition taught in ‘672.
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792