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 1-15 are currently pending.
Election/Restrictions
3. Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on February 12, 2026 is acknowledged.
4. Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
5. Claims 1-7 are examined on the merits.
Information Disclosure Statement
6. In the Information Disclosure Statement filed November 12, 2024, applicant did not provide a copy of NPL reference number 1. Thus, this reference could not be considered and the citation has been lined through.
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.
7. Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazza (Journal of Food Science (1982), vol. 47, pp. 1730-1731) in view of Clark (US 2013/0273199).
Mazza teaches the use of Saskatoon (Amelanchier alnifolia) berry as an iron supplement in subjects with anemia (see page 1731, second paragraph). The reference does not teach using a water extract from the Saskatoon berry.
Clark teaches a nutritional supplement beverage which comprises a Saskatoon berry water extract. The reference teaches that the extract is made by extracting the berry with water for an hour. The reference teaches that the beverage is a good source of minerals including iron (see paragraphs 6, 9, 11, 22, and 56).
Thus, it was known in the art prior to the effective filing date that Saskatoon berries were useful in supplementing iron in a subject in need thereof and that water extracts of Saskatoon berries were useful in compositions that provide iron. Given this knowledge, a person of ordinary skill in the art would reasonably expect that a water extract of Saskatoon berries would be useful in supplementing iron in a subject in need thereof. Therefore, based on this reasonable expectation of success, an artisan would have been motivated to supplement iron in a subject using a water extract from Saskatoon berries.
The references do not specifically teach extracting the berries using the ratios of water to berry or the temperatures 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).” Varying the extraction parameters such as temperature and solvent concentration is not considered to be inventive unless the concentrations and temperatures are demonstrated as critical. In this particular case, there is no evidence that the claimed concentrations or temperatures produces an unexpected result. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of extraction parameters 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 Saskatoon berry extract has all of the same effects on the subject as claimed by applicant in claims 6 and 7. 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 together teach administering the same composition as claimed to the same subject as claimed. Thus, the effects claimed in claims 6 and 7 should naturally result from the reference administration if applicant’s invention functions as claimed.
8. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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