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 .
Claim Objections
Claims 6, 8, 14 and 16 are objected to because of the following informalities:
In claims 6 and 14, the abbreviations for “4-O-caffeoylshikimic acid” and “3-O-caffeoylshikimic acid” are written as “5-CSA”, which appear to be errors and should be “4-CSA” and “3-CSA”, respectively. Appropriate correction is required.
In claims 8 and 16, the component “(E)Catechin-(E)Catechin-(E)Catechin” is repeated twice. Appropriate correction is required.
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 10 and 13-18 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.
Regarding claims 10 and 18, it is unclear what the abbreviations “cn”, “pt”, and “dp” denote in the compounds cn-3-(6”-p-coumaroylglucoside), pt-3-(6”-p-coumaroylglucoside), and dp-3-(6”-p-coumaroylglucoside)
Regarding claim 13, it is unclear what is required in the naturally occurring composition as it recites “a combination of…” and then late recites “or any combination thereof”. Therefore, is only one compound listed required, or two to meet a “combination”, or are all the compounds listed required? For purposes of examination, the examiner is interpreting the claimed language consistent with claim 5.
Claims 14-17 are included as they depend from rejected claim 13.
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 1-6, 8-10, 13-14 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taha et al. (“Date Seed Oil as A Potential Natural Additive to Improve Oxidative Stability of Edible vegetable Oils”, Egypt J. Food Sci. Vol. 47, No. 1, pp. 1-5-113, 2019; made of record by applicant).
Regarding claim 1, Taha discloses a composition for use in a food frying process (Abstract), the composition comprising an edible oil component and a date seed extract (page 106: Mixtures of soybean oil and date seeds oil preparation).
Regarding claims 2-3, Taha teaches that the edible oil component is a plant-based edible oil that is soybean oil (page 106: Mixtures of soybean oil and date seeds oil preparation).
Regarding claims 4-5, Taha teaches that the date seed extract comprises phenolic compounds and fatty acids (i.e. organic acids) (pages 108-109).
Regarding claims 6 and 8-10, as Taha teaches that the date seed extract comprises an organic acid as required by claim 5, the additional components recited are not required as they are listed in the alternative form through the use of “OR any combination thereof”.
Regarding claim 13, Taha discloses a composition for use in a food frying process (Abstract), the composition comprising an edible oil component and a date seed extract (page 106: Mixtures of soybean oil and date seeds oil preparation), wherein the date seed extract comprises phenolic compounds and fatty acids (i.e. organic acids) (pages 108-109).
Regarding claims 14 and 16-18, as Taha teaches that the date seed extract comprises an organic acid as required by claim 13, the additional components recited are not required as they are listed in the alternative form through the use of “OR any combination thereof”.
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 4-10 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Taha et al. (“Date Seed Oil as A Potential Natural Additive to Improve Oxidative Stability of Edible vegetable Oils”, Egypt J. Food Sci. Vol. 47, No. 1, pp. 1-5-113, 2019; made of record by applicant) as applied above, and further in view of John et al. (“Phenolic content, antioxidant and anti-inflammatory activities of seeds and leaves of date palm”, Journal of Food Bioactives, Vol 5, March 2019, pp. 120-130; Retrieved from Internet URL: https://www.sciopen.com/article/10.31665/JFB.2019.5179).
Regarding claims 4-5, as stated above, Taha teaches that the date seed extract comprises phenolic compounds and fatty acids (i.e. organic acids) (pages 108-109).
John further teaches that date seed naturally comprise phenolic acids, flavonoids, flavones, proanthocyanidin, hydroxycinnamate, fatty acids, flavan-3-ol, flavanol and flavones (Abstract; Table 5 page 128).
As John teaches that dates are known to naturally comprise phenolic acids, flavonoids, flavones, proanthocyanidin, hydroxycinnamate, fatty acids, flavan-3-ol, flavanol and flavones (Abstract; Table 5 page 128), it would be expected that the date seed extract of Taha naturally comprise the same compounds.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): 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 his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 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.
Further, it would have been obvious to one of ordinary skill in the art to process the date seed extract so as to ensure the desired compounds are extract in order to provide the antioxidant and anti-inflammatory benefits to the composition of Taha.
Regarding claim 6, John teaches that the hydroxycinnamate can be 5-CSA (Abstract; Table 5 page 128).
Regarding claims 7 and 10, as Taha in view of John teach that the date seed extract comprises hydroxycinnamate, flavan-3-ol, flavanol and flavones as required by claim 5, the organic acid and anthocyanin are not required as they are listed in the alternative form through the use of “OR any combination thereof”.
Regarding claim 8, John teaches that the flavan-3-ol can be catechin (Abstract; Table 5 page 128).
Regarding claim 9, John teaches that the flavanol and flavone can be isorhamnetin hexoside or isorhamentin (Abstract; Table 5 page 128).
Regarding claim 13, as previously stated, Taha discloses a composition for use in a food frying process (Abstract), the composition comprising an edible oil component and a date seed extract, i.e. a naturally occurring composition (page 106: Mixtures of soybean oil and date seeds oil preparation), wherein the date seed extract comprises phenolic compounds and fatty acids (i.e. organic acids) (pages 108-109).
With respect to the naturally occurring composition comprises a combination of the claimed components, John teaches that date seed naturally comprise phenolic acids, flavonoids, flavones, proanthocyanidin, hydroxycinnamate, fatty acids, flavan-3-ol, flavanol and flavones (Abstract; Table 5 page 128).
As John teaches that dates are known to naturally comprise phenolic acids, flavonoids, flavones, proanthocyanidin, hydroxycinnamate, fatty acids, flavan-3-ol, flavanol and flavones (Abstract; Table 5 page 128), it would be expected that the date seed extract of Taha naturally comprise the same compounds.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): 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 his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 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.
Further, it would have been obvious to one of ordinary skill in the art to process the date seed extract so as to ensure the desired compounds are extract in order to provide the antioxidant and anti-inflammatory benefits to the composition of Taha.
Regarding claim 14, John teaches that the hydroxycinnamate can be 5-CSA (Abstract; Table 5 page 128).
Regarding claims 15 and 18, as Taha in view of John teach that the date seed extract comprises hydroxycinnamate, flavan-3-ol, flavanol and flavones as required by claim 5, the organic acid and anthocyanin are not required as they are listed in the alternative form through the use of “OR any combination thereof”.
Regarding claim 16, John teaches that the flavan-3-ol can be catechin (Abstract; Table 5 page 128).
Regarding claim 17, John teaches that the flavanol and flavone can be isorhamnetin hexoside or isorhamentin (Abstract; Table 5 page 128).
Claims 11-12 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Taha et al. (“Date Seed Oil as A Potential Natural Additive to Improve Oxidative Stability of Edible vegetable Oils”, Egypt J. Food Sci. Vol. 47, No. 1, pp. 1-5-113, 2019; made of record by applicant) as applied above.
Regarding claims 11-12, Taha teaches that the date seed extract is present within the composition at levels of 5, 10 and 15% (page 106).
It would have been obvious to one of ordinary skill in the art to vary the concentration of the date seed extract depending on the desired oxidative stability of the vegetable oil.
As stated in MPEP 2144.05: 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)
Therefore, as Taha teaches that the addition of date seed extract to an edible oil promotes oxidative stability during a frying process, it would have been obvious to one of ordinary skill in the art to determine a desired amount of date seed extract to add to the edible oil. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 19, Taha teaches a composition comprising an edible oil and a date seed extract that can be used as a frying medium for food (Abstract, page 110).
While Taha fails to specifically teach a food frying process, Taha teaches a composition that is used as a frying medium and therefore it would have been obvious to further include a food frying process that heats the edible oil and date seed extract of Taha and fries a food product in the heated edible oil.
Regarding claim 20, Taha teaches that the date seed extract is mixed with the edible oil before a step of heating (Abstract; page 106: Mixtures of soybean oil and date seeds oil preparation).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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