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 .
Claim Status
Applicant’s remarks and amendments, filed 23 July 2026 in response to the non-final rejection mailed 6 February 2026, are acknowledged and have been fully considered. Applicant’s amendments to the claims are acknowledged. The listing of claims filed 23 July 2026 replaces all prior versions and listings of the claims.
Claims 1-9, 11, and 12 are pending. Claims 1-4 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims and 10 and 13-18 are canceled by Applicant’s amendment. Claims 5, 8, 11, and 12 are amended. Claims 5-9, 11, and 12 are being examined on the merits.
Response to Amendment
Any previous rejection or objection not mentioned herein is withdrawn.
Applicant’s amendments to the specification have overcome the specification objection in regards to italicizing scientific names. The objection to the specification has thus been withdrawn.
Applicant’s arguments and amendments, on page 5 of the reply filed 23 July 2026 with respect to the rejection of Claims 5-8 and 11 under 35 USC § 102(a)(1) as being anticipated by Chou et al. (US 8,119,170 B2) have been fully considered. The rejections of Claims 5-8 and 11 are withdrawn due to amendment of Claim 5.
Claim Objections
Claims 5-9, 11, and 12 are objected to because scientific names should be italicized throughout. In Claim 5, Rhodiola crenulata should be italicized.
All other claims depend directly or indirectly from objected to claims and are, therefore, also objected to for the reasons set forth above.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 5-9, 11, and 12 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.
Claims 5 recites the limitation “and, drying the extraction fluid into an extraction powder” in addition to “drying the Rhodiola crenulata extract into a Rhodiola crenulata extract powder.” It is unclear whether this is an additional drying step or an erroneous step which was meant to be deleted. It is therefore also unclear which powder is being referenced in Claims 6, 9, 11, and 12.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under 35 U.S.C. §112(b) for the reasons set forth above.
Appropriate clarification is required.
Claim Rejections - 35 USC § 102
(grounds modified as necessitated by amendment)
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 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 5-7, 9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Min et al. (CN 101974045 A, Translation, 12 pages).
The instant claims are as of record, drawn to a method of producing an extract of Rhodiola crenulata comprising the steps of providing an extraction fluid, adjusting the extraction fluid pH to between 8 and 9 using a base or alkali, extracting Rhodiola crenulata root with the extraction fluid to obtain a Rhodiola crenulata extract, and drying the Rhodiola crenulata extract into a Rhodiola crenulata extract powder.
Min et al., however, anticipate the claims by teaching a preparation method of rhodioloside (salidroside) comprising microwave extraction of Rhodiola crenulata root in water (extraction solvent), adding 60-85% ethanol and adjusting the pH to 8-10 using alkali and letting the solution sit for 12-48 hours (e.g., extraction), refining to obtain an eluent, condensing, and finally drying to obtain a dried (e.g., powder) product (Min et al., [0007]-[0020]; as required for instant Claims 5, 11, and 12). HPLC is used to measure the content of salidrosides (Min et al., [0066]; as required for instant Claims 6 and 7). A total of 480 mg of 92% purity salidroside is obtained (Min et al., [0165]; as required for instant Claim 9).
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.
Claims 5-9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Min et al. (CN 101974045 A, Translation, 12 pages).
The claims and teachings of Min et al. are as of record.
While Min et al. do not explicitly teach that a content level of flavonoids other than salidrosides is determined by HPLC chromatography, they do teach that HPLC is used to measure the content of salidrosides (Min et al., [0066]). It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application that a content level of flavonoids other than salidrosides could be measured using HPLC because salidroside is a flavonoid, therefore a skilled artisan would have a reasonable expectation of success at also measuring the content of other flavonoids.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show a novel or unobvious difference between the claimed method and the method of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972).
Response to Arguments
Applicant's arguments filed 23 July 2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Chou et al. (US 8,119,170) have been considered but are moot because the new ground of rejection does not rely on this reference for any teaching or matter specifically challenged in the argument.
Regarding Min et al., applicant argues that a pH adjustment occurs after extraction, however the pH adjustment occurs when the Rhodiola crenulata material is in a solution with water, ethanol, and an alkali to adjust the pH to 8-10 and then left to sit for 12-48 hours. Plant material sitting in an extraction solution for a period of time is well known in the art to be an extraction, and in addition, the broad “including” phrasing of the claim encompasses additional, unrecited steps. The same steps of extracting Rhodiola crenulata in an aqueous solution of water and ethanol with the pH adjusted to 8-10 using alkali, which encompasses the claimed values, and extracting (e.g., a broad term which encompasses all methods of extraction including allowing plant material to sit in a solvent for a time period), followed by drying to obtain a powdered Rhodiola crenulata extract with a salidroside content of about 90% is taught by the prior art and therefore the instant claims are anticipated by Min et al., as discussed in the rejections above.
Conclusion
No claims are presently allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JENNIFER L CAIN whose telephone number is (703)756-1318. The examiner can normally be reached M-Th 5:00am to 5:00pm EST.
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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655
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