DETAILED ACTION
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 1-5 and 26-32 are pending.
Applicant’s election of Group I in the reply filed on 06/23/2026 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Claims 26-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/23/2026.
Claims 1-14 are under current examination.
All rejections and objections not reiterated have been withdrawn.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
The claims recite an herbicide composition comprising pomace leachate that has undergone fermentation, wherein the herbicide composition comprises: about 0.3 to about 15.0 percent alcohol (v/v); about 4 to about 19 g/L of titratable acidity; a pH from about 2.0 to about 6.0; about 50 to about 160 mg/L catechin; and about 450 to about 1000 mg/L tannin.
This judicial exception is not integrated into a practical application because the only elements recited in the claim are the judicial exception itself. The claimed composition contains only the pomace leachate, which is an aqueous substance that leaches from the pomace, i.e. the solids that remain after pressing fruit (e.g. grape berries) to remove the juice. The examiner notes that claim 1 has been amended to recite “that has undergone fermentation” in lines 1-2. This is considered product by process language. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art” therefore the claims are interpreted to claim the product of fermenting the pomace leachate, but the claims do not require an active step of fermentation as they are directed towards a composition of matter rather than to a method. Under 35 USC 101, for a product-by-process claim (e.g., a claim to a cloned farm animal produced by a nuclear transfer cloning method), the analysis turns on whether the nature-based product in the claim has markedly different characteristics from its naturally occurring counterpart (see MPEP 2106.04(c)(I)(B). Thus, the steps used to form the product do not alter the analysis, except insomuch as the limit the characteristics/ingredients of composition itself. The claimed invention requires the leachate products of fermentation, which are naturally occurring substances, and it contains water and a mixture of natural products found in the plant source of the pomace. Thus, the claims read on a mixture of naturally occurring substances including substances specifically listed in the claims, catechin and tannin. The leachate is a nature-based product because it is a mixture of naturally occurring substances and therefore it is compared to its closest naturally occurring counterpart, each nature-based component by itself (see MPEP 2106.04(c)(II)(A). In this case, given the broadest reasonable interpretation, the claim reads on the naturally occurring acids that provide the acidic pH and titratable acidity, the ethanol, catechin, and tannin. The claim also embraces but does not require any of the other substances that occur naturally in fruit. As no evidence exists on the record to establish that this mixture possesses markedly different characteristics than each natural product possesses by itself, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as explained above, the only elements recited in the claim are the judicial exception itself and no evidence exists that the combination provides “something more” as required in the analysis for compliance with 35 USC 101 described in MPEP 2106. Dependent claims 2-13 identify the source of the pomace from which the claimed composition is derived (the naturally occurring chardonnay grape), require the addition of a seed extract, which is another mixture of natural products, or specify the concentrations of naturally occurring substances. None of these claims require anything other than the mixture of natural products and are therefore directed to ineligible subject matter under 35 USC 101 for the same reasons described in the foregoing analysis of claim 1. Claim 14 adds the limitation “wherein the herbicide composition further comprises trihydroxy carboxylic acid, alkyl amine alkoxylate, alkyl alkoxylated phosphate amine, urea sulfuric acid, methylated seed oil (MSO), C10-C12 aromatic hydrocarbons, alkyl amine ethoxylate, alcohol ethoxylate phosphate ester, polyacrylic ammonium salt, hydroxy carbonzylic ammonium salt, phosphoric acid ammonium salt, or any combination thereof”. The list of limitations recited in claim 14 also reads on natural products such as the trihydroxy carboxylic acid, shikimic acid (CAS Registry No. 138-59-0). As there is no evidence on the record establishing markedly different characteristics of the combination of naturally occurring substances embraced by claim 14, this claim also reads on patent ineligible subject matter.
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
On page 7, Applicant argues that the claim has been amended to recite “[a] herbicide composition comprising pomace leachate that has undergone fermentation” wherein the herbicide composition comprises about 0.3 to about 15.0 percent alcohol (v/v).
The examiner acknowledges the amendment to the claim, and points out that, given the broadest reasonable interpretation, the claim continues to read on a mixture of naturally occurring substances, specifically, the products of fermentation, the naturally occurring substances derived from grape that are included in the leachate, and the expressly listed substances, alcohol, titratable acidity, catechin, and tannin (and gallic acid and epicatechin or grape seed extract in certain dependent claims). The claim reads on mixtures of only naturally occurring substances (as detailed in the rejection) and does not recite any limitation requiring any element that is not a judicial exception. See further discussion below.
On page 8, Applicant argues that the claimed invention is not directed to a product of nature and therefore does not pass Step 2A, Prong 1 as laid out in MPEP 2106.04(II). Applicant argues that the pomace leachate does not arise in nature but is the result of human steps that chemically transform the collected leachate into a distinct product. Applicant argues that this is not the same composition as freshly-drained pomace runoff nor is it found in nature ready for use as an herbicide. Applicant asserts on page 8 that “a comparison of a multi-component mixture to each individual component is not the correct legal standard but rather the question is whether the mixture as a whole has markedly different characteristics from what occurs naturally”. Applicant argues that there is no evidence that a mixture with the specific combination of pH 2.0-6.0, titratable acidity 4-9 g/L, alcohol 0.3-15% (v/v), catechin 50-160 mg/L, and tannin 450-1000 mg/L occurs in nature without human intervention”. On pages 9 and 10, Applicant argues that the data in the specification establishes that the claimed invention possesses herbicidal properties and that this is a markedly different characteristic from the properties of any individual natural component recited in the claims.
As an initial matter, as explained in the rejection, supra, the fact that a human combined the naturally occurring substances has no bearing on the analysis of a composition for compliance with 35 USC 101. See MPEP 2106.04(b)(II) and Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948) (claims to bacterial mixtures held ineligible as "manifestations of laws of nature" and "phenomena of nature") (emphasis added). Applicant has mischaracterized the legal standard by which the Office judges mixtures of naturally occurring products.
MPEP 2106.04(c)(I)(A): Where the claim is to a nature-based product produced by combining multiple components (e.g., a claim to "a probiotic composition comprising a mixture of Lactobacillus and milk"), the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. For instance, for the probiotic composition example, the mixture of Lactobacillus and milk should be analyzed for markedly different characteristics, rather than the Lactobacillus separately and the milk separately. (Emphasis added.)
MPEP 2106.04(c)(II)(A): When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. For example, assume that applicant claims an inoculant comprising a mixture of bacteria from different species, e.g., some bacteria of species E and some bacteria of species F. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature); Ambry Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (although claimed as a pair, individual primer molecules were compared to corresponding segments of naturally occurring gene sequence). (Emphasis added.)
MPEP 2106.04(c)(II)(C): The final step in the markedly different characteristics analysis is to compare the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed product are markedly different. The courts have emphasized that to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Myriad, 569 U.S. at 580, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, the inventor must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart. (Emphasis added.)
MPEP 2106.04(c)(II)(C): If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by the inventor’s efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.
Clearly, the analysis under 35 USC 101 requires a comparison of the mixture of natural products that is claimed to each natural product in isolation. For clarity, the examiner is not arguing that the claimed mixture of components at the claimed concentrations is naturally occurring, but rather that the mixture, as claimed, reads on a combination of only natural occurring substances, and as such, is not eligible for a patent under 35 USC 101, absent evidence of markedly different characteristics of the mixture because there are no other elements recited in the claims other than the judicial exception, the mixture containing only products of nature. In the instant case, Applicant has argued (page 9 of the remarks) that the claimed invention possesses herbicidal properties and this is sufficient to render the claims eligible for a patent; however, at this point is prosecution, no evidence has been made of record to establish that any herbicidal property is markedly different from the characteristics of each natural product in isolation. For the sake of example, supposing that ethanol (an alcohol) and tannins both possessed herbicidal activity and no other substance in the claimed mixture possesses herbicidal activity, a markedly different characteristic could be established by evidence of a supra-additive herbicidal effect of the two substances; however, if the herbicidal activity of the combination were nothing more than the sum of the activities of each element in isolation, then the mixture would not possess “something more” within the meaning of the guidance provided in MPEP 2106.04. At this point in prosecution, the record fails to establish that the claimed mixture possesses some markedly different characteristic. Applicant’s statement that “this is a markedly different characteristic from the properties of any individual natural component recited in the claims” in reference to herbicidal activity (page 9 of the remarks) and that the composition “possesses herbicidal utility not found in any related naturally occurring substance” (page 10 of the remarks) is merely an assertion, and not the type of evidence required to overcome the rejection under 35 USC 101.
On page 10, Applicant argues that the claimed composition is defined not merely as pomace leachate but as a specific herbicide composition with quantitatively defined chemical parameters including pH, titratable acidity, alcohol content, catechin, and tannin that collectively define a composition with utility as a practical herbicide. Applicant argues that the recitation of these specific chemical parameters tied to the practical function of herbicidal activity provides the meaningful limits required to integrate the subject matter into a practical application.
For clarity, the utility requirement under 35 USC 101 is not in question here. As explained above, the issue underlying the rejection of the claims as reading on patent ineligible subject matter is that the mixture, as claimed, reads on a combination of only natural occurring substances, and as such, is not eligible for a patent under 35 USC 101 because it reads on a judicial exception. Assertions that the herbicidal activity of the claimed mixture is different than the herbicidal activity of any related naturally occurring substance do not meet the burden on Applicant to provide evidence of markedly different characteristics, as explained above.
In addition to establishing markedly different characteristics of a mixture of naturally occurring substances relative to the individual components in isolation, Applicant could overcome a rejection under 35 USC 101 by reciting additional structural limitations in the claim as described in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” If a discussion with the examiner would be helpful, Applicant is invited to schedule an interview, at their convenience.
Claim Rejections - 35 USC § 102
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 1-4, 6-8, 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whitehead (Course 35. Kellogg Rural Leadership Programme, 2017) as evidenced by Marlborough Wineries (website; available online from at least 2019) and Chabreyrie et al. (Journal of Agricultural and Food Chemistry 56:6785-6790; publication year: 2008).
The examiner notes that claim 1 has been amended to recite “that has undergone fermentation” in lines 1-2. This is considered product by process language. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. The examiner also notes that the claims employ the open transitional phrase “comprising”, therefore the invention reads on any composition containing the claimed substances in the claimed amounts and does not preclude the presence of other substances so long as they are compatible with the preamble. Therefore the claims are interpreted to claim the product of fermenting the pomace leachate, additional processing steps to form the claimed product are not precluded, therefore substances present in the fermented product may be absent and other substances may be added, and the claims do not require an active step of fermentation as they are directed towards a composition of matter rather than to a method.
With regard to claims 1 and 2, Whitehead describes the existence of wine marc (i.e. pomace) leachate, i.e. the liquid run off from stored grape marc, in Marlborough NZ prior to the instant effective filing date (page 4). This would have included marc leachate from Chardonnay grape as Chardonnay grape was produced in this region (Marlborough Wineries website, page 8). The instant specification indicates that Chardonnay pomace leachate possesses the claimed compounds, pH, and titratable acidity (see example 1, pages 20-21 and table 1, page 21). With regard to the limitation of instant claim 1 that the composition be an herbicide, the instant specification indicates that Chardonnay pomace leachate is an herbicide (see e.g. examples).
With regard to claims 1 and 7, the examiner considers the preponderance of the evidence to support the conclusion that pomace leachates in existence prior to the filing of the instant application would have had alcohol contents within the claimed range as this would depend upon duration of time the leachate sat, allowing for more or less fermentation of residual sugar, quantity of rain the leachate was exposed to, and amount of residual water in the pomace that ultimately leaches away from the solids.
With regard to claims 3 and 4, the pomace includes seeds and therefore contains a Chardonnay grape seed extract.
With regard to claims 6, 8, 10-13, which require the composition to have been concentrated or diluted a certain degree, the step of concentrating or diluting is product by process language. MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. As each of claims 6, 8, and 10-13 depends from claim 1, directly or indirectly, and these claims do not add further structural limitations on the ingredients of the claimed herbicide composition, they are considered anticipated for the same reasons as claims 1 and 2. The examiner notes that pomace leachate is aqueous and therefore contains water (i.e. the diluent required by instant claim 11).
With regard to claim 14, Chabreyrie discloses that Chardonnay grape contains the trihydroxy carboxylic acid shikimic acid (i.e. CAS Registry No. 138-59-0; title, abstract) and therefore the pomace leachate from Chardonnay grape is considered to contain at least trace shikimic acid, absent evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
On page 11, Applicant points out the amendment to claim 1 requiring the pomace leachate to have undergone fermentation and the lower limit on quantity of alcohol in amended claim 1. Applicant asserts that Whitehead does not teach an herbicide composition comprising a pomace leachate that has undergone fermentation, nor a composition having 0.3 to 15 % alcohol.
As explained in the rejection above, the amendment requiring the leachate to have undergone fermentation is product by process language. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. The examiner also notes that the claims employ the open transitional phrase “comprising”, therefore the invention reads on any composition containing the claimed substances in the claimed amounts and does not preclude the presence of other substances so long as they are compatible with the preamble. Therefore the claims are interpreted to claim the product of fermenting the pomace leachate, additional processing steps to form the claimed product are not precluded, therefore substances present in the fermented product may be absent and other substances may be added, and the claims do not require an active step of fermentation as they are directed towards a composition of matter rather than to a method. The examiner does not consider the amendments to claim 1 to patentably distinguish over the cited prior art because the claim appears to read on compositions falling entirely within the scope of the claim. Applicant’s assertion to the contrary is not persuasive because it does not address the specific reasoning underlying the anticipation conclusion.
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.
Claims 1-4, 6, 8, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cliff et al. (Journal of Food Quality 35:263-271; publication year: 2012) in view of Sochorova et al. (Molecules 25:3736; publication date: 07/09/2020) as evidenced by Watrelot (Molecules 26, 4923; publication date: 08/14/2021) Mardones et al. (J. Chromatogr A 1085:285-292; publication year: 2005) and ABC Website (Help Your Plant Babies Bloom, online from 2023).
The examiner notes that claim 1 has been amended to recite “that has undergone fermentation” in lines 1-2. This is considered product by process language. According to MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. The examiner also notes that the claims employ the open transitional phrase “comprising”, therefore the invention reads on any composition containing the claimed substances in the claimed amounts and does not preclude the presence of other substances so long as they are compatible with the preamble. Therefore the claims are interpreted to claim the product of fermenting the pomace leachate in any amount in addition to the expressly called out substances and concentrations, additional processing steps to form the claimed product are not precluded, therefore substances present in the fermented product may be absent and other substances may be added, and the claims do not require an active step of fermentation as they are directed towards a composition of matter rather than to a method.
Instant claims 1 and 7 claim a composition comprising pomace leachate and having the specified pH and quantities of alcohol, titratable acidity, catechin, tannin, and claims 5 and 9 also require the specified amounts of gallic acid and epicatechin. Given the broadest reasonable interpretation, the examiner considers the claims to require the specified ingredients; however the source of the claimed ingredients, i.e. the pomace, is no longer present. Therefore the identity of the fruit from which the ingredients were derived does not limit the composition itself and the claim reads on any composition having the specific substances present in the claimed amounts.
Cliff discloses that tannins are routinely added to wine and may be derived from grape seeds extract. Tannins can prevent wine from becoming oxidized (i.e. they behave as antioxidants) and also increase the chemical age of the wine, as well as inhibiting lactase spoilage (page 263-264). Cliff tested the astringency, color, aroma of wine to which grape seed extract had been added and found that each of these important parameters was affected by adding grape seed extract (page 264, and e.g. fig. 1, page 267). Adding grape seed extract to wine as a means to adjust wine properties to reach a target profile was routine practice in the wine industry as of the instant effective filing date.
Cliff does not disclose the pH, alcohol content, titratable acidity, catechin content or tannin content of the wines.
Watrelot discloses red wines all having pH of approximately 3.5 and alcohol content of between 11 and 15% v/v (table 1). The examiner considers the preponderance of the evidence to support the conclusion that wine itself inherently has a pH and titratable acidity within the claimed range. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
With regard to the content of tannin, catechin, epicatechin, and gallic acid required by instant claims 1, 5, 7, and 9, neither reference describes the claimed amounts.
Sochorova teaches that ethanol extracts of grape seeds (section 4.1-4.2, page 13) contain polyphenolic compounds that show antioxidant activity (abstract) and these include gallic acid, catechin, and epicatechin (Figure 6).
Thus, one of ordinary skill would have understood that in addition to the tannins disclosed to be important by Cliff, polyphenols including catechin, epicatechin, and gallic acid can be derived from grape seed and were added to wine in the form of grape extract in order to optimize the desired properties of the wine.
With regard to the amount of tannin, catechin, epicatechin, and gallic acid required by the instant claims, it would have been a matter of routine for one of ordinary skill to also optimize the antioxidant effect of these antioxidants found in the grape seed extract that was routinely added to wine by testing the effective concentration of each antioxidant polyphenol compound. For this reason, the examiner does not consider the ranges in tannin, catechin, epicatechin, and gallic acid to patentably define over the cited prior art.
Thus, noting that the examiner does not consider the source of the pomace or grape seed to provide a patentable distinction over the final claimed product, Cliff and Sochorova render obvious all of the limitations of instant claims 1-4.
With regard to the limitation of instant claim 1, requiring the composition to be an herbicide, as all of the active components are present in the prior art, the examiner considers this property to be an inherent property of wine. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972). Moreover, ABC website indicates that pouring wine on house plants will kill them (see page 3), therefore wine is considered an herbicidal composition.
With regard to claims 6, 8, 10-13, which require the composition to have been concentrated or diluted a certain degree, the step of concentrating or diluting is product by process language. MPEP 2113: product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art”. As each of claims 6, 8, and 10-13 depends from claim 1, directly or indirectly, and these claims do not add further structural limitations on the ingredients of the claimed herbicide composition, they are considered anticipated for the same reasons as claims 1 and 2. The examiner notes that pomace leachate is aqueous and therefore contains water as required by claim 11.
With regard to claim 14, Mardones discloses that wine always contains the trihydroxy carboxylic acid shikimic acid (i.e. CAS Registry No. 138-59-0, page 285).
Claims 5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cliff et al. (Journal of Food Quality 35:263-271; publication year: 2012) in view of Sochorova et al. (Molecules 25:3736; publication date: 07/09/2020) as evidenced by Watrelot (Molecules 26, 4923; publication date: 08/14/2021) and Mardones et al. (J. Chromatogr A 1085:285-292; publication year: 2005) as applied to claims 1-4, 6, 8, and 10-14 above, and further in view of Weiss (US 4681767; issue date: 07/21/1987).
The relevant disclosures of Cliff, Sochorova, Watrelot, Mardones and ABC website render obvious all the limitations of instant claims 5, 7, and 9 as set forth above; however, these references do not teach the range in alcohol content required by claims 5, 7, and 9.
Weiss discloses that alcohol content of wine can be decreased to less than 0.5% v/v (col 7, lines 10-15).
It would have been prima facie obvious to decrease the alcohol content in wine to the ranges disclosed by Weiss. One having ordinary skill in the art would have been motivated to do so in order to appeal to an individual wishing to consume less alcohol while still enjoying the flavor of wine. The skilled artisan would have had reasonable expectation of success because the processes to reduce alcohol content of wine were well known as of the instant effective filing date. The range disclosed by Weiss overlaps with the ranges for alcohol content recited in instant claims 5, 7, and 9.
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
On page 12, Applicant argues that the prior art cited in the rejection (Whitehead) treats pomace leachate as a waste product requiring remediation not as a wine equivalent. On page 12, Applicant argues that Cliff does not describe pomace leachate, or pomace leachate that has undergone fermentation. On page 12, Applicant argues that Sochorova, Watrelot, and Mardones also do not describe pomace leachate or an herbicide or herbicidal use. Applicant argues further on page 13 that no reference cited by the examiner discloses pomace leachate.
This is not persuasive because the question underlying the patentability of the instant claims is not whether pomace leachate and wine are different substances but rather whether the claims read on wine, as described in the rejection. The examiner maintains that, although the claims read on pomace leachate, they also read on wine exactly as explained in the rejection. Moreover, the examiner points out that the claims read “[a]n herbicide composition comprising pomace leachate” (emphasis added) and therefore require the claimed substances in the claimed amounts (as addressed in the rejection above) and any amount of pomace leachate. Given the overlap in chemical composition between wine and the waste product of wine manufacture, and importantly, the infinitesimally small quantity of pomace leachate falling within the scope of the current claim language and the product by process language, the examiner maintains the position that the claims read on wine exactly as explained in the rejection.
On pages 12 and 13, Applicant argues that Watrelot and Mardones do not disclose titratable acidity, catechin content, or herbicide/herbicidal use. On page 13, Applicant argues that not a single reference in the examiner’s rejection discloses an herbicide composition.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Insomuch as the argument that no reference discloses an herbicide composition may be an argument that the examiner has cited non-analogous art, the examiner considers all cited prior art and the instant invention to be in the field of wine/grape viticulture, manufacture, and processing, and therefore sufficiently related to have been properly combined within the meaning of 35 USC 103.
On page 13, Applicant argues that the examiner does not state a motivation to combine the cited references in the obviousness rejection. On page 13, Applicant argues that the examiner has identified no reason why a skilled artisan interested in developing an herbicide from pomace leachate would start from Cliff’s wine-quality optimization study or why the skilled artisan would look to the secondary references. On page 14, Applicant argues the examiner has used impermissible hindsight and that the examiner has relied on the flawed assertion that pomace leachate is equivalent to wine.
For clarity, Cliff discloses wine to which grape seed extract has been added. Adding grape seed extract to wine as a means to adjust wine properties by adjusting concentration of tannins catechin, epicatechin, and gallic acid was routine practice as of the instant effective filing date (see MPEP 2144.05).
Regarding the argument that the examiner has not provided a reason why one looking to formulate an herbicide from pomace leachate would start from Cliff and look to the cited secondary references.
Applicant is reminded that a rationale different from Applicant’s is permissible under 35 USC 103. MPEP 2144 states: The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). In the instant case, the examiner has addressed the obviousness of each limitation recited in the claim and the rejection is therefore proper under 35 USC 103. (See also the examiner’s comments regarding analogous art, above.)
In response to applicant's argument that the prior art does not teach an herbicide, 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. In this case, the claim requires any herbicidal effect, no particular efficacy or target plant is recited in the claims, therefore the wine of the prior art is capable of performing the intended use.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As explained above, the rejection does not rely on the assertion that pomace leachate is equivalent to wine, but rather that the claims read on wine products, exactly as explained above.
Applicant’s comments on page 14 that ABC Website is not prior art but that they recognize the examiner is using the referee as evidence that wine is inherently an herbicide are noted. It is correct that the reference is evidentiary and therefore not required to antedate the effective filing date afforded the claims.
On page 14, Applicant argues that the statement in the ABC Website that wine killed a houseplant is “offhand” and that no actual evidence that wine would kill a houseplant, much less possess herbicidal properties is provided. On page 15, Applicant argues that Cliff’s wine with Sochorova’s grape seed extract would necessarily possess the claimed herbicidal activity against agricultural weeds in a field.
Regarding the validity of the disclosure, prior art is presumed operable (see MPEP 2121).
Regarding the scope of “herbicidal” in the preamble, no degree of efficacy is required nor is the target plant specified, therefore the preamble limits the composition to one that could kill any plant under any circumstances.
In response to applicant's argument on page 15 that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “claimed herbicidal activity against agricultural weeds in field conditions” … and “cytotoxic activity on naturally occurring weed species including malva, henbit [… etc].”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
No claims are 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 KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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