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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application, filed on January 18, 2024. The priority date is July 19, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 19, 2024 is being considered by the examiner. The signed IDS forms are attached with the instant office action.
Drawing
The drawings were received on January 18, 2024. These drawings are acceptable.
The amendment filed on January 18, 2024 is acknowledged.
Status of claims:
Claims 1-11 are cancelled
New Claims 12-20 are being examined on merits.
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 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ushitani et. al. (JP 2009232781 A) in view of Rha et.al. (KR 20190054542 A).
The instant claims are drawn to an integrated process for sequentially extracting products from green tea leaves.
Ushitani et.al. ‘781 teaches, “The green tea extract of the present invention is an extract obtained by extracting green tea leaves using a water-containing organic solvent...the green tea leaf used as a raw material is a green tea leaf from leaves, stems, etc. of Camellia genus (Best Mode [para0003])” as in instant claim 12 step a and 12 step b and 19, instant claim 12, step b recites alkane solvent, which is hexane; Ushitani et.al. ‘781 teaches “In the extraction of the present invention, it is considered that the composition of hexane soluble obtained by the concentration range of the extraction solvent is complicated and diversified, so that the coagulability of the lipophilic component is lowered, and the solvent is removed from the extract (Beast Mode [para. 0013])” as instant claim 12 step c recites wax and reference recites lipophilic component.
Ushitani et. al. ‘781 recites, “The extraction solvent used in the method for producing the green tea extract of the present invention is… solvents such as alcohol ethanol… (Best Mode [para 0008]) as recited in instant claim 12 step e for dipping the leaves in alcohol,; ”The extract obtained in the first and second extraction steps is combined and uniformly mixed,… vaporization with heating… and it is preferable that the heating is not accompanied by extreme heating (Best Mode [para 025]), as recited in instant claim 12 step e.
Ushitani et. al. ‘781 recites, ‘The hexane-soluble component of the green tea extract contains components such as lipids, fat-soluble vitamins, and chlorophyll, and components such as chlorophyll (Best Mode [para 005]), which the instant claim 12 step f recites green colored solution; Furthermore, “Catechin is extracted in an extraction using a water-containing organic solvent (Best Mode [para 0009]).”as in instant claim 12 step i and 15.
The instant claim 12 step l, recites the extracted product caffeine. Although Ushitani does not expressly recite caffeine (as in the instant claims 12 and 18), it is recognized in the art that caffeine is solvent extracted. The caffeine is a component in the green tea which it is extracted by the solvent extraction (as evidenced by the instant disclosure), which the extract of Ushitani appears to be the same or materially sufficiently similar thereto, and would have intrinsically contained caffeine, as caffeine is broadly and reasonably considered as obtained from the green tea source materials, and treated with the same (and/or nearly the same) solvents and separations, so as to have resulted in the same extracted materials, and including those expressly recited and/or as evidenced by instant disclosure appreciating the materials present therein.
The instant claims, however, are distinguished from the cited reference in that the claim further are drawn to providing separation of each product, by treating each extract at various temperatures and filtrations, and hydroextracting (as in instant claims 12 step g, and 12 step k). Ushitani et.al. ‘781 does not recite in a singular preferred embodiment, encompassing the detailed extraction process as in instant claim 12.
Rha et. al. ‘542 teaches in the art the steps for extraction by various methods (para. 0038 – 0056). Furthermore, “the concentrate is adsorbed on a column equipped with an adsorption resin, and is washed with water 2 to 5 times the column volume and eluted with 2 to 5 times of the alcohol to obtain a green tea fraction (para. 0062), as in instant claim 12i.
Additionally, it is known in the art and teachings of Rha et.al. ‘542 that “The tea is a sprout or leaf of Camellia sinensis, solid contents include various organic compounds such as catechin, caffeine, therefore including the 4th product caffeine as instant claim 12 step l.
Generally, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); >see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("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 of percentage ranges is the optimum combination of percentages.");< ** In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Ushitani ‘781 and Rha ‘542 are relied upon for the reasons discussed above and based upon the overall beneficial teaching provided by these reference with respect to extraction of green tea leaves in the manner disclosed therein, the adjustments of particular conventional working conditions (e.g., determining one or more suitable solvents, filtration steps and the hydro extraction, and operations thereof in the ranges in which to provide four extracted products), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
It would have been obvious at the time of the instant invention effective filing to have provided a process configured as instantly claimed, including an extracting of four products (wax, green colored pigment, catechin, and caffeine), because Ushitani ‘781 and Rha ‘542 recite the process of extraction and recovering of each product. Please note that the prior art being directed to green tea extraction and the ‘781 green tea leaves extract, but not reciting each eluted products are deemed to be analogous as one of skill in the art would appreciate the analogous and similar nature among the products, as wax, green colored pigment, catechin, and caffeine; e.g. see MPEP 2141.01(a)). One would have been motivated to have substituted the process and use of temperature, filtration, and resins, because Rha ‘542 teaches the process of extraction of green tea leaves with proper temperature, filtering out ease residual and addition of solvents (as claimed) were known in the art for the same purpose (as green tea leaves extraction) and it is prima facie obvious to combine or substitute among equivalent components taught by the prior art to be useful for the same purpose (see MPEP 2144.06(I and II).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was effective filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685,688 (CCPA 1972).
Relevant Prior Art Not Relied Upon
KR 20190054542 A (2019, machine translation, 9 pages) teaches a method for manufacturing green tea extract and green tea extract therefrom.
Conclusion
No claims are allowed.
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/ALPA NILESH AMIN/Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655