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 the Claims
Claims 1-20, 22-24, and 31-40 have been canceled. It is noted that the claim set filed 5/21/2026 does not list claims 1-20 and is therefore incomplete; in the interest of compact prosecution and based on the record in which claims 1-20 previously were indicated canceled, the claims filed 5/21/2026 are examined. Claims 21 and 25-30 remain pending and under current examination.
Withdrawn Objections/Rejections and Response to Arguments
Applicant’s arguments filed 5/21/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
The objections to claims 21, 25, 27, 30, and 31 are withdrawn in view of Applicant’s amendments to the claims. Applicant’s argument to this effect is persuasive.
The rejections of claims 22-24 and 31-39 under 35 U.S.C. 112(b) are withdrawn in view of Applicant’s amendments to the claims filed 5/21/2026. Applicant’s argument to this effect is persuasive.
All rejections of canceled claims are withdrawn.
Regarding the double patenting rejections, Applicant indicates that Applicant will consider filing a terminal disclaimer to overcome rejections at a later time. In reply, this is not a correct and complete response. In the interest of compact prosecution, Applicant’s response is examined herein. The double patenting rejections are maintained being modified as necessitated by amendment as detailed below.
Regarding the rejections of claims 21-38 under 35 U.S.C. 103, Applicant’s arguments that the combination of prior art references do not teach the claimed elements individually or in particular combination are persuasive, especially in view of the narrowed claim scope. Accordingly, the rejections under 35 U.S.C. 103 are withdrawn.
Maintained Ground of Rejection, Modified as Necessitated by Amendment
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory 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 21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11883456. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a composition for weight loss comprising banaba leaf extract, apple fruit extract, rhodiola root extract, chromium chelate, magnesium chelate, and zinc chelate, in the same ranges and amounts as well as the same additional elements gardenia fruit extract, Salacia extract, inositol, berberine, or a combination thereof.
The instant claims differ from the 11883456 allowed claims in that the instant claims further encompass a method step of administering the composition to an individual which in the allowed claims is presented as an intended use. It is the examiner’s position that the issued claims render obvious the claimed method in the instant context since administration would have been a readily apparent and immediately envisaged way to use the weight loss composition and kit or bulk food product thereof as detailed in the issued claims.
Claims 21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11458182. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a composition for weight loss comprising banaba leaf extract, apple fruit extract, rhodiola root extract, chromium chelate, magnesium chelate, and zinc chelate, in the same ranges and amounts as well as the same additional elements gardenia fruit extract, Salacia extract, inositol, berberine, or a combination thereof.
The instant claims differ from the 11458182 allowed claim in that the issued claim is a composition whereas the instant claims are methods encompassing said composition. It is the examiner’s position that where the issued claim recites a weight loss intended use and a daily dosage of a composition whereas the instant claims recite the same composition within a method of administering or for managing weight, the issued claims render obvious the claimed method, particularly in view of the indefinite claim language detailed above.
It is noted that the specification for the issued claims defines the kit may be an embodiment which comprises a bulk food product comprising protein, fat, carbohydrates, fiber, etc. all for the very same intended use or process as instantly recited. Accordingly, both sets of claims are directed to the same invention.
Claims 21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11141448. Although the claims at issue are not identical, they are not patentably distinct from each other where the issued claims are drawn to a composition for weight loss comprising requisite components the same as in the instant claims and where the issued claims further are drawn to a method for promoting weight loss by the stepwise administration of the composition, the instant claims are addressed to the same invention which is a stepwise method of administering or managing weight by administering a daily dosage of the same composition for the same purpose. Accordingly, both sets of claims are directed to the same invention.
Claims 21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10765718. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a composition for weight loss comprising banaba leaf extract, apple fruit extract, rhodiola root extract, chromium chelate, magnesium chelate, and zinc chelate, in the same ranges and amounts, and the issued claims further require berberine inositol, and Salacia extract in claim 1 whereas in the instant invention these elements are included in dependent claims in the same amounts.
The instant claims differ from the 10765718 allowed claims in that the instant claims recite a stepwise method of administering the composition in a daily dosage for the intended use of weight loss or management whereas the issued claims are merely drawn to a composition. It remains the examiner’s position that the issued claims drawn to a composition for weight loss render obvious the instant method claims for managing weight and/or weight loss by administration of the same composition, with a reasonable expectation of success. One would have been motivated to administer the weight loss composition to achieve the known desired weight loss or management results purported for the composition of the issued claims. Accordingly, both sets of claims are directed to the same invention.
Claims 21 and 25-30 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of copending Application No. 18486306(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method in the instant claims corresponds to the daily dosage for weight management or weight loss [from administering] the very same composition included in the instant claims as recited in the copending claims. The same composition components and amounts (ranges and single values) are encompassed in both sets of claims as is the intended use or stepwise method of administering the composition for the very same purpose.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed at this time.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
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