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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-9, and 15 in the reply filed on 7/9/26 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/9/26.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 8, 9, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 8, and 13 of copending Application No. 17/962,208 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, and 5 of the instant 18/634,343 recites similar limitations as recited in claims 1-3, of copending application 17/962,208; claim 3 of the instant 18/643,343 recites the same limitation and claim 4 of copending application 17/962,208; claim 4 of the instant 18/643,343 recites the same limitation and claim 5 of copending application 17/962,208; claim 8 of the instant 18/643,343 recites the same limitation and claim 7 of copending application 17/962,208; claim 9 of the instant 18/643,343 recites the same limitation and claim 8 of copending application 17/962,208; claim 15 of the instant 18/643,343 recites the same limitation and claim 13 of copending application 17/962,208.
The applications differ where the instant claim 1 recites (d) 0-40 mg of onion protein; and wherein the combination of (a) to (d) constitutes 50-95 wt.% of the dry matter in the composition. However, claim 2 of copending recites a water content of 0-50% which overlaps with a dry matter content of 50 to 95%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8, 9, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15, and 17 of copending 17/962,215 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of the instant 18/634,343 recites similar limitations as recited in claims 9-11, of copending application 17/962,215; claim 3 of the instant 18/643,343 recites the same limitation and claim 12 of copending application 17/962,215; claim 4 of the instant 18/643,343 recites the same limitation and claim 13 of copending application 17/962,215; claim 8 of the instant 18/643,343 recites the same limitation and claim 14 of copending application 17/962,215; claim 9 of the instant 18/643,343 recites the same limitation and claim 15 of copending application 17/962,215; claim 15 of the instant 18/643,343 recites the same limitation and claim 17 of copending application 17/962,215.
The applications differ where claim 1 of the instant 18/634,343 recites (d) 0-40 mg of onion protein; and wherein the combination of (a) to (d) constitutes 50-95 wt.% of the dry matter in the composition. However, claim 11 of copending 17/962,215 recites a water content of 0-50% which is overlapping with a dry matter content of 50 to 95%. Claim 10 of 17/962,215 recites the specific amounts of lactic acid, propionic acid, and propionic acid where these limitations are found later in claims 3-5 of the instant application 18/634,343.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 1-7, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst et al. (WO 2018/106109).
Regarding Claims 1-7: Hilhorst discloses fermented composition made from vegetables including onion [pg. 8, lines 14-21]. Hilhorst discloses acids in the composition including lactic acid, acetic acid, propionic acid at 7-80% [pg. 5, lines 11-24; pg. 12, lines 13-16]. Hilhorst discloses malic acid, citric, succinic, and pyruvic acid and that they can be present at least .5%, at least 1%, at least 2% [pg. 11, lines 3-25]. Hilhorst discloses saccharides including fructose, sucrose, or glucose at least .5%, at least 1%, at least 2% [pg. 11, lines 19-25]. Hillhorst discloses a dry matter content of 7 to 100% [pg. 12, lines 8-13]. Hilhorst discloses cultured vegetable extracts containing at least 0.5% protein [pg. 10, lines 10-14].
Hilhorst expresses the amounts of organic acids in percentages and does not explicitly disclose 75-800 mg acid equivalent of propionic acid, or lactic acid, or acetic acid. However, given the fermented composition being provided in 1,000 mg quantities having a dry matter content of 50%, the propionic acid would have been provided at 75 mg propionic acid when its supplied at 15%; the lactic acid would have been present at 200 mg when supplied at 40%; the acetic acid would have been present at 120 mg when present at 24%.
Hilhorst expresses the amounts citric acid, malic acid, succinic, and pyruvic acid and that they can be present at least .5%, at least 1%, at least 2% but does not explicitly disclose 2-200mg citric acid, malic acid, tartaric acid, oxalic acid, pyruvic acid. However, given the fermented composition being provided at 1000 mg quantities and having a dry matter content of 50%, the citric acid would have been provided at 2.5 mg when its supplied at 0.5%, and the malic acid would been present at 2.5mg when provided at 0.5%.
Hillhorst expresses the amounts of saccharides and proteins as discussed above. However, because the amounts of protein and saccharides start at 0mg, the limitations are not required in order to meet the claim limitations.
Regarding the limitation where a)-d) are present at 50 to 95% of the dry matter composition, given the presence of lactic acid at 200 mg, propionic acid at 75 mg, and acetic acid at 120 mg, malic aid at 2.5 mg and citric acid at 2.5 mg, this gives a total of 400 mg and based on 1000 mg composition at 50% dry matter gives a percentage of 80% of the dry matter in the composition.
Regarding the ranges for dry matter content, organic acid, malic and citric acids, and the combination of a)-d), although Hilhorst does not explicitly disclose one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the ranges taught by Hilhorst overlap the instantly claimed ranges and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 15: Hilhorst discloses as discussed above in claim 1. Hilhorst discloses including a fermented vegetable/onion product in meat [claim 13].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst et al. (WO 2018/106109) in view of as applied to claim 1 above and in further view of Choi KR 100998529 Machine Translation December 2010.
Regarding Claim 8: Hilhorst as modified discloses as discussed above in claim 1. Hilhorst expresses the amounts citric acid, malic acid, succinic, and pyruvic acid and that they can be present at least .5%, at least 1%, at least 2% but does not explicitly disclose 2-200mg citric acid, malic acid, tartaric acid, oxalic acid, pyruvic acid. However, given the fermented composition being provided at 1000 mg quantities and having a dry matter content of 50%, the citric acid would have been provided at 2.5 mg when its supplied at 0.5%, and the malic acid would been present at 2.5mg when provided at 0.5%.
Hilhorst does not disclose gallic acid at 1-150mg.
Choi discloses onion juices containing gallic acid at 21 and 78 mg/g [pg. 11] and Saccharomyces fermented onion juice containing gallic acid at 58 mg or 99.1 mg/g [pg. 11]. Choi discloses that onion juice and fermented onion juice have health benefits [pg. 2].
At effective filing date of the invention, it would have been obvious to one of ordinary skill in the art that the fermented onion of Hilhorst would have contained an amount of gallic acid since Choi discloses that onion juice contains 21-78 mg/g and Saccharomyces fermented onion juice contains amounts of gallic acid including 58 mg-99.1 mg/g. Because Hilhorst discloses fermented onion and since Choi discloses the presence of gallic acid in onions both fermented and unfermented it would have been obvious to one of ordinary skill in the art that the fermented onion of Hilhorst would have contained gallic acid in amounts at least encompassing the amounts disclosed in Choi.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hilhorst et al. (WO 2018/106109) as applied to claim 1 above and in further view of Hundt (US 2021/0176994).
Regarding Claim 9: Hilhorst discloses as discussed above in claim 1. Hilhorst discloses lactic acid, [pg. 9, lines 3-18 ]. Hilhorst does not explicitly disclose wherein the composition comprises cellular material from lactic acid producing bacteria and/or propionic acid producing bacteria and/or acetic acid producing bacteria.
Hundt discloses a fermented onion extract [0019; 0020; 0050]. Hundt discloses that the fermented extract contains fermentate which includes a cellular mass [0036]. Hundt discloses that the fermentate also contains lactic acid, propionic acid, and acetic acid [0036]. Hundt discloses fermenting with Lactic acid bacteria, acetic acid bacteria, or propionic acid bacteria [0012; 0017].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to that the composition of Hilhorst would have contained cellular mass material as in Hundt since Hilhorst uses a lactic acid bacteria to ferment onion as in Hundt. Further since Hilhorst does not require a purification step and discloses the step as optional it would have been obvious that the fermented product of Hilhorst would have contained cellular material.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park et al. KR 20100106743 October 2010 discloses a fermented onion and that the onion was fermented by lactic acid bacteria [abstract; pg. 4 Tech Solution]. Park discloses that the fermented onion has nutritional value [pg. 8, 1st paragraph].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/Felicia C Turner/Primary Examiner, Art Unit 1793
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