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 .
The amendment filed 2/10/2026 has been entered. Claims 1-4, 6, 7, 9, 10, 12, 16-26 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Rejections - 35 USC § 112
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 23, 24, 25, and 26 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 23, 25, and 26 recite a step of drying the emulsion (part c), which is optional. However, Claims 23, 25, and 26 depend from Claim 16, which require drying of the emulsion. It is unclear how a composition can be both dried and optionally dried.
Claim 24 recites a step of “preparing a dispersion” (part b) and additionally “drying the emulsion) (part c). There is insufficient antecedent basis for the limitation of “drying the emulsion”, since no emulsion was previously provided. Note that a dispersion and an emulsion are not identical.
Claim 24 additionally recites “the water in the absence of an emulsifier”. There is insufficient antecedent basis for the limitation of “the water in the absence of an emulsifier”, since no emulsifier was previously provided.
Additionally, Claim 24 depends from Claim 25. It is unclear whether Claim 24 is intended to depend from Claim 25, which does not provide antecedent basis for the terms as described above. For the purposes of examination, Claim 24 is interpreted as depending from Claim 23.
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.
Claims 1-4, 6-7, 9-10, 12, 16- 21, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hunter (US 3966986).
Regarding Claim 1, Hunter teaches a beverage comprising flavoring, tea extract, and water (Column 7, Lines 51-56).
Note that since Hunter teaches that the flavoring agents are “incorporated” (Column 7, Line 18) into the beverage, Hunter teaches preparation of a beverage.
Note that c) is optional.
Hunter teaches that the flavoring is “incorporated” (Column 7, Line 18) into the tea, which is the same as dispersing the components. Hunter teaches that a combination of flavoring agents, water, and soluble tea solids is used to prepare the dispersion (Column 7, Lines 45-50).
Regarding Claim 2, Hunter teaches that the flavoring, tea extract, and water are “incorporated” (Column 7, Line 18) into the beverage. Given that the instant Claim teaches that preparing a mixture comprising a functional agent, tea extract, and water forms an emulsion, the teaching of Hunter is interpreted to form an emulsion as claimed.
Regarding Claim 3, Hunter teaches the use of black tea (Column 4, Lines 57-61).
Regarding Claim 4, Hunter teaches that the combination of tea and flavorings is spray dried (Column 7, Lines 50-54).
Regarding Claim 6, Hunter teaches that pure soluble tea solids are prepared in a concentrate with the flavorings, and that the concentrate is 35% solids (Column 7, Lines 45-49). Hunter therefore teaches a tea extract: water ratio of 1:1.9, which lies within the claimed range. Note that absent evidence to the contrary, the “pure soluble tea solids” are interpreted to be provided as a solid. It would have been obvious to have provided the tea solids in powder form for e.g. ease of dissolution.
Regarding Claim 7, Hunter teaches 100 mg of functional agent (i.e. flavoring) to 100 grams of tea extract (Column 7, Lines 47-48), which is .09%. Note that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I. Additionally, where the functional agent is a flavoring, and Hunter teaches adjustment of flavoring according to conventional methods known in the art (Column 7, Lines 17-28), one of ordinary skill would have been able to adjust the amount of flavoring through no more than routine experimentation in order to impart the desired flavor to the resultant composition.
Regarding Claim 9, Hunter teaches an embodiment comprising only tea extract and flavoring (e.g. Columns 7-8, Examples 1-3). Therefore, Hunter is considered to teach a “preparation free of a matrix or carrier material other than the tea extract”, as claimed.
Regarding Claim 10, Hunter teaches a beverage, which is a preparation for nourishment or pleasure.
Regarding Claim 12, Hunter teaches that the dispersion is spray dried (Column 7, Lines 50-51). Note that the effect of spray drying is to produce a powder or agglomerates of powder, as claimed.
Regarding Claim 16, Hunter teaches a combination of flavoring agents, water, and soluble tea solids (Column 7, Lines 45-50). Note that since Hunter teaches a combination of ingredients as claimed, the method of Hunter is interpreted to create an emulsion, as claimed.
Regarding Claim 17, Hunter teaches the use of black tea (Column 4, Lines 57-61).
Regarding Claim 18, Hunter teaches that the mixture is dried via spray drying (Column 7, Lines 50-51).
Regarding Claim 19, Hunter teaches that the flavoring is “incorporated” (Column 7, Line 18) into the tea, which encompasses homogenization. It would have been obvious to have selected homogenization as a method for incorporate flavoring into tea, since homogenization is a common method for preparing beverages comprising multiple phases.
Regarding Claim 20, Hunter teaches that pure soluble tea solids are prepared in a concentrate with the flavorings, and that the concentrate is 35% solids (Column 7, Lines 45-49). Hunter therefore teaches a tea extract: water ratio of 0.53:1, which lies within the claimed range.
Note that absent evidence to the contrary, the “pure soluble tea solids” are interpreted to be provided as a solid. It would have been obvious to have provided the tea solids in powder form for e.g. ease of dissolution.
Regarding Claim 21, Hunter teaches the inclusion of flavoring but does not teach the specific amounts as claimed. However, where Hunter speaks to the effects or flavoring, and describes the addition of flavoring depending on, e.g. losses during processing (Column 7, Lines 17-28), one of ordinary skill would have been able to have adjusted the amount of flavoring to have arrived at the amounts as claimed through no more than routine experimentation.
Additionally, note that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the method disclosed by the prior art by normal optimization procedures known in the art.
Regarding Claims 23, Hunter teaches providing flavoring, tea extract, and water (Column 7, Lines 51-56) for a beverage. Hunter does not teach the use of an emulsifier.
Hunter teaches that the flavoring agents are “incorporated” (Column 7, Line 18) into the beverage.
Given that the instant Claim teaches that preparing a mixture comprising a functional agent, tea extract, and water forms an emulsion, the teaching of Hunter is interpreted to form an emulsion as claimed.
Note that c) is optional.
Regarding Claim 24, Hunter teaches providing flavoring, tea extract, and water (Column 7, Lines 51-56) for a beverage. Hunter does not teach the use of an emulsifier.
Regarding the limitation that the flavoring form an “oil phase”, Hunter teaches the use of flavoring agents known in the art to form an oil (e.g. linalool, Column 8). Note that the claim does not require that the flavoring form a separate oil phase when placed into water.
Hunter teaches that the flavoring agents are “incorporated” (Column 7, Line 18) into the beverage, which encompasses mixing.
Given that the instant Claim teaches that preparing a mixture comprising a functional agent, tea extract, and water forms a dispersion, the teaching of Hunter is interpreted to form a dispersion as claimed.
Note that c) is optional.
Regarding Claim 24, Hunter teaches providing flavoring, tea extract, and water (Column 7, Lines 51-56) for a beverage.
Hunter teaches that the flavoring agents are “incorporated” (Column 7, Line 18) into the beverage, which encompasses mixing.
Given that the instant Claim teaches that preparing a mixture comprising a functional agent, tea extract, and water forms an emulsion, the teaching of Hunter is interpreted to form an emulsion as claimed.
Note that c) is optional.
Regarding Claim 26, regarding the limitation that the flavoring form an “oil phase”, Hunter teaches the use of flavoring agents known in the art to form an oil (e.g. linalool, Column 8). Note that the claim does not require that the flavoring form a separate oil phase when placed into water.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hunter in view of Ren (“Novel food-grade Pickering emulsions stabilized by tea water-insoluble protein nanoparticles from tea residues”, DOI: 10.1016/j.foodhyd.2019.05.015)
Regarding Claim 22, Hunter teaches the dried preparation as claimed but does not discuss the diameter of the particles, or droplets, that comprise the dried emulsion.
Ren teaches an emulsion comprising oil, tea extract, and water (Page 323, “Emulsion preparation”). Ren teaches that the emulsion comprises droplets (Page 325, Figure 1) between 100 nm (0.1 µm) and 1,000 nm (1 µm) in size, as claimed. Ren teaches that the emulsions are stable and avoid droplet coalescence (Page 329, Conclusion). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to prepare the composition of Hunter to comprise the droplet size as taught by Ren. One would have been motivated to make such a modification to prepare a stable emulsion.
Additionally, given that the product of Hunter is similar to the claimed product, with a similar intended use, composition, and processing, there is an expectation that the product of the prior art have the property of particle/droplet diameter as claimed. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I. Note that the instant Claim recites emulsion “comprising” particles, or droplets, of the claimed size(s). Given that the recited dimensions are typical of particle sizes within colloidal suspensions, one of ordinary skill would expect any composition comprising oil, water, and an emulsifier to have particles lying within the claimed range(s), absent evidence to the contrary.
Response to Arguments
Applicant’s arguments filed 2/10/2026 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 102 and 103, Applicant argues that Hunter does not describe preparing a dispersion or emulsion, since Hunter adds amounts of flavoring agents that dissolve into the tea concentrate.
This argument is not convincing. First, Applicant has not claimed amounts of the functional agent, tea extract, or water. Where the prior art provides for a functional agent, tea extract, and water as claimed, and additionally yields a homogeneous mixture, the product of the prior art is interpreted to prepare a dispersion (or emulsion) as claimed. Second, the result of the process of the Claim(s) is a dried (or liquid) tea extract with a distributed flavoring component. The process of Hunter yields a product with the same properties. Note that if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I.
Applicant additionally argues that Ren teaches tea-derived protein nanoparticles, which are not tea extracts.
This argument is not convincing. Ren is not relied upon for its use of tea extracts.
Applicant additionally argues that the data of the instant Specification shows unexpected emulsification behavior of tea extract.
This argument is not convincing. The instant Claims do not require that the tea extract act as an emulsifier. Additionally, the instant Specification provides for an alleged unexpected effect in a limited number of samples and in specific compositions (e.g. Page 24, Table 9). The showings in the Specification are therefore not commensurate in scope with the Claims, which claim any process comprising the mixture of a functional agent, tea extract, and water.
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). 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 DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./
Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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