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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-14, drawn to an herbicide composition comprising pomace leachate, wherein the herbicide composition comprises about 0.0 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.
Group II, claim 15, drawn to a method of making a herbicide, the method comprising pressing fruits, vegetables, or both to generate a pomace; placing the pomace into a pile or container; and collecting the pomace leachate in a storage container; wherein the herbicide produced comprises about 0.0 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.
Group III, claims 26-32, drawn to a method of using a herbicide comprising the herbicide composition of claim 1, the method comprising contacting the herbicide composition to a target ground area in an amount sufficient to function as a herbicide.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of an herbicide composition comprising pomace leachate, wherein the herbicide composition comprises about 0.0 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 technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Whitehead (Course 35. Kellogg Rural Leadership Programme, 2017) as evidenced by Marlborough Wineries (website; available online from at least 2019). 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).
During a telephone voice message left by Megan Gustafson on 02/17/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15 and 26-32 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claims 1-14 are under current examination.
Claim Objections
Applicant is advised that should claim 6 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). The examiner does not consider the phrases “pomace leachate is concentrated” and “herbicide is concentrated” to impose any distinct limitations on the inventions claimed in claim 6 vs. claim 8 because the leachate is the only ingredient expressly recited to be the herbicide in claim 1.
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, wherein the herbicide composition comprises: about 0.0 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 compositions 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 leachate 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.
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).
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 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 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 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.
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).
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 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 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.
Conclusion
No claims are allowed.
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.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617