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 .
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.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1-3 and 5 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joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention has been withdrawn in light of applicant’s amendments made April 8, 2026.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites the same limitations of claim 2 from which it depends, and thus fails to further limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as obvious over Wei et al (AU 2020101855).
Wei et al (Wei) teaches a tableting candy comprising: 0.1-5 parts lactic acid and 0.1-10 parts epigallocatechin gallate (claims 1 and 2).
Regarding the at least one active ingredient as liable to cause browning of the product as recited in claim 1, as Wei teaches of the same active ingredient, i.e. epigallocatechin gallate, the ingredient of Wei would be capable of functioning in the same manner as the ingredient as claimed.
Regarding the at least one active ingredient as from 0.03-5% and the lactic acid as from 0.2-0.3% as recited in claim 1, wherein the active ingredient is from 0.03-5% as recited in claim 1, preferably wherein the active ingredient is epigallocatechin gallate from 0.03-5% as recited in claim 5, as discussed above Wei teaches a tableting candy comprising: 0.1-5 parts lactic acid and 0.1-10 parts epigallocatechin gallate. Wei teaches that the candy comprises 62.91-285.1 additional components (sum of the minimum and maximum of other components recited in claims 1 and 2). As Wei teaches that the candy comprises said additional components and does not require and/or disclose any further ingredients, to form the product of Wei with the claimed and disclosed components of Wei, and without any further ingredients would have been a clear and obvious suggestion of the prior art. Thus, the product of Wei encompasses one with about 0.35% (0.1/290.2) to about 13.7% (10/73.01) epigallocatechin gallate and about 0.03% (0.1/295.2) to about 7.35% (5/68.1) lactic acid which encompasses the claimed ranges. Furthermore, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Response to Arguments
Applicant's arguments filed April 8, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Wei is directed to promoting fat combustion, lowering fat accumulation, and decreasing energy intake and is not directed to color degradation of polyphenols, the argument is not convincing as it is not commensurate in scope with the claims. The claims are drawn to a product which is obvious over the teachings of the prior art. The claims are not drawn to a method of reducing color degradation or stabilizing polyphenols as argued. Additionally, it is noted that the recognizing another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Wei teaches lactic acid as an optional ingredient, and thus the use of it would not have been obvious. This argument is not convincing as a product comprising lactic acid is clearly disclosed in Wei, including at least in the claims and examples.
Applicant argues that as seen in the specification, examples 1 and 2, the use of 0.2-0.3% lactic acid is critical. This argument is not convincing. First it is noted that WO 2011151494, as cited in applicant’s IDS discloses the use of lactic bacteria for preserving the flavanols of food products and preventing browning, and thus the argued result does not appear unexpected. Second, the evidence cannot be fairly evaluated as it is incomplete. Although the disclosed examples give specific compositions, disclose the test conditions, and provide summarized conclusions, no actual evidence, such as color values between the examples are given. Furthermore, the evidence is not convincing as it is significantly more limited than the claimed ranges, and thus it is unclear as to if the argued result would be present throughout the range of product claimed. See for example, Table 2 which requires colorings, sorbitol sucralose, and other ingredients in specific and limited amounts.
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 KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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