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 .
Applicant’s amendment and response filed April 28, 2026 has been received and entered.
Claim(s) 1-4 and 6-11 are currently pending.
Election/Restrictions
Applicant's election of Group I, now claims 1-4 and 6-9 in the reply filed on January 09, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 09, 2026.
Claims 1-4 and 6-9 are examined on the merits.
Withdrawn Objections
Applicant’s arguments filed April 28, 2026 have been fully considered. In regards to the objection of claim 2, applicant has amended the claim to correct the word “obtained” to “obtain” and therefore, the objection of claim 2 has been withdrawn.
Withdrawn Rejections
Applicant’s arguments filed April 28, 2026 have been fully considered.
In regards to the rejection under 35 U.S.C. 112(b) for indefiniteness, applicant has elected to cancel claim 5, the claim that was indefinite and applicant has elected to amend claim 4 and therefore, the rejection of claim 4 under 35 U.S.C. 112(b) has been withdrawn.
In regards to the rejection under 35 U.S.C. 102(a)(1) for anticipation, applicant has elected to amend claim 1, in addition, based on the amendments to claim 1 and given that claim(s) 6, 8 and 9 are dependent amongst claim 1, in which, claim(s) 1, 6, 8 and 9 were found to be anticipated, the examiner has withdrawn the rejections of claim(s) 1, 6, 8 and 9 under 35 U.S.C. 102(a)(1).
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.
Claim(s) 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chung (KR 20110029893 A - English translation provided) in view of Lee (KR 101762064 B1 – English translation provided) and Yang et al (Food and Chemical Toxicology, (Year: 2012), vol. 50, issue. 6, pp. 2042-2048).
Regarding claim(s) 1-4 and 6-9, the Chung reference teaches a method of extracting from onions is performed by subcritical extraction using subcritical water (abstract). Chung teaches preparing onion sample (abstract). Chung teaches extraction temperature ranges at 163-167 °C (abstract). Chung teaches that the extraction method may be carried out for 5 minutes to 30 minutes (page 4). Chung teaches that the subcritical extraction method has a pressure of the subcritical water is more preferably 1300 to 1700 psi (page 4). The Chung reference teaches extraction temperature ranges at 163- 167 °C (abstract). The Chung reference teaches that onion varieties are divided into rounded and flat rounded scales, with red, yellow and white scales (page 5). The Chung reference also teaches specifically an orange onion (page 5).
The Chung reference does not explicitly teach the use of an onion bulb (also stated within claim 1 of the present invention). The Chung reference does not explicitly teach HPLC fractionation based on signal intensity (e.g. three fractions - Fraction 1, 2 and 3 as stated within claim 3 of the present invention) and does not teach multiple fractions (e.g. Fraction A-E of the present invention as stated within claim 4 of the present invention) from the onion extract.
The Lee reference teaches the method of preparing red onion which is a feature of the present invention comprises preparing an onion preparation step (S10) for washing off an onion, submerging onion (S20) An onion ripening step (S30) in which the onion is taken out and matured, and an onion drying step (S40) in which the ripened onion is dried (page 4).
Yang et al teaches the HPLC profile of onion (A. cepa) extracts (page 2045, figure 2 (A)).
The method of extraction of an onion (e.g. A. cepa) as taught by Chung can be modified to include Lee’s cleaned whole red onion (that also includes the bulb of the red onion) in lieu of Chung’s onion skin. In addition, Chung’s method can include additional information that the onion extract (as taught by Chung) from Lee’s onion can be subjected to HPLC analysis as taught by Yang et al which can yield multiple fractions that is indicative of different components from the onion extract. One of ordinary skill in the art would know the analytical chemistry technique - HPLC and the principle behind fraction collection. The combination of references show that it was well known in the art prior to the effective filing date of the present invention to use Chung’s method of extraction of an onion and to also conduct HPLC analysis of components present within the extraction of Lee’s red onion in order to meet the claims of the present invention.
Response to Arguments
Applicant’s arguments filed April 28, 2026 have been fully considered, and the arguments regarding the rejection under 35 U.S.C. 103 are found to be non-persuasive.
Beginning on page 6 of applicant arguments, applicant states that “unlike Chung, instead of onion skin, a whole onion bulb is used as the onion sample in the present invention”, applicant goes on to further say “quercetin, the active ingredient of the onion extract in Chung and Yang, is not an ingredient of the onion extract prepared by the claimed method of the present invention”. In addition, applicant goes on to further say towards the bottom of page 6 of applicant arguments: “no quercetin extracted in the onion extraction of the present invention is due to the onion sample used in the present invention, a whole onion bulb instead of onion skin. This result cannot be expected by one of ordinary skill in the art based on the teachings of Chung and Yang”.
Based on examiner’s interpretation of applicant’s arguments, the Chung reference does teach a method of extraction that is similar to the present invention’s method of extraction with the exception that Chung uses an onion skin and Chung focuses on the extraction of quercetin. In addition, the Yang et al reference discusses the HPLC profile of quercetin compounds that were extracted from onions within figure 2 of the reference. However, an additional reference by Lee can remedy a deficiency that Chung has – rather than use an onion skin, one skilled in the art could replace the onion skin with an actual red (e.g. purple) onion that also includes the bulb. Given that the applicant states that quercetin is not an ingredient of the present invention, essentially, applicant believes that the use of the Chung and Yang references are not necessary. Incorporating the Lee reference which teaches a whole onion, one would reasonably expect that the extraction of a whole onion that includes the bulb of an onion would yield a variety of compounds which would also intrinsically include quercetin. Although quercetin is not the main component of interest when one of ordinary skill would conduct the HPLC readings in this case, the result would be the same or similar to what is shown within figure 7 of the specification of the present invention. Based on applicant’s remarks regarding the ingredient – quercetin not being the active ingredient, that does not negate the fact that one skilled in the art wouldn’t have been motivated to exclude the readings of the quercetin compound that would have appeared within the extract of an onion when conducting HPLC. A very important note to applicant’s statement regarding the irrelevance of quercetin, based on the amended claims of the present invention, the claims are directed to a method of extraction from an onion and does not discuss the specific names of components that are found within the HPLC fractions; therefore, applicant’s arguments regarding a specific component from an onion are rendered moot because the claims are directed to a particular extraction method using an onion. Overall, one of ordinary skill within the field of analytical chemistry and in the art would understand that the extraction of onion, especially an onion that contains the onion bulb, would yield a number of components, that does not necessarily mean that all components from the extraction of onion would be recognized – more so the components of interest would be recognized by one skilled within the field. Based on the combination of all three aforementioned references: Chung, Lee and Yang et al, one would reasonably expect to use Chung’s method of extraction with Lee’s red onion in order to achieve the desired extract with further teachings of how the HPLC profile may look like for that of Lee’s onion through using Yang et al’s HPLC results as a reference. In addition, one would reasonably expect that claim(s) 8 and 9 of the present invention does state that purple or yellow onion may be used, so therefore, the combination of the aforementioned references would be sufficient to enable one skilled in the art to make this reasonable combination of references focusing on the method of extraction of an onion, more specifically an onion that contains an onion bulb to obtain particular results especially within a HPLC profile. Thus, the 103 rejection is maintained.
No claims are allowed.
Conclusion
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). 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 Nashara L Moreau whose telephone number is (571)272-5804. The examiner can normally be reached Monday - Thursday, 8 AM - 4 PM ET.
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 U 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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NASHARA L MOREAUExaminer, Art Unit 1655
/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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