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 .
DETAILED ACTION
Status of the Claims
Claims 1-3 and 5-11 are pending in this application.
Claims 1-3 and 5-11 are presently under consideration.
Duplicate claims
Applicant is advised that should claims 1-3 and 9 be found allowable, claims 5-8 and 10-11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
Claims 1, 5 and 8 are drawn to a food composition, comprising a collagen peptide having an average molecular weight of 2,000 or less.
It is noted that “[d]uring examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim” (MPEP 2111.02). In the instant case, the limitations “for suppressing sudden muscle pain”, “for suppressing muscle fatigue during or immediately after exercise”, and “for increasing muscle strength” do not appear to add any further structural differences between the food compositions of claims 1, 5 and 8.
Therefore, claims 5-8 and 10-11 are duplicate of claims 1-3 and 9.
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 1-3 and 5-11 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 1, 5 and 8 recite “..an average molecular weight of 2,000 or less”. Since the unit (e.g. Da, kDa, g/mol) is not defined, the claims are indefinite.
Claims 2-3, 6-7 and 9-11, which depend from claims 1, 5 and 8, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as these claims incorporate by dependency the indefiniteness of claims 1, 5 and 8.
To advance prosecution, claims 1, 5 and 8 have been interpreted as being drawn to “..an average molecular weight of 2,000 Daltons or less”.
Claim Rejections - 35 USC § 102
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 1-3 and 5-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nitta Gelatin Inc (JPWO2014092150A1).
With respect to claims 1, 5 and 8, it is noted that “[d]uring examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim” (MPEP 2111.02). In the instant case, the limitations “for suppressing sudden muscle pain”, “for suppressing muscle fatigue during or immediately after exercise”, and “for increasing muscle strength” do not appear to add any further structural differences between the food compositions of claims 1, 5 and 8.
With respect to claims 1-3 and 5-8, Nitta Gelatin Inc teaches “[t]wo or more peptides selected from the group consisting of Ala-Hyp-Gly, Hyp-Gly-Pro, Leu- Hyp, Glu-Hyp, Gly-Pro-Hyp, Pro-Ala, Hyp-Gly and Pro-Hyp” (claims), thus reading on a composition.
Nitta Gelatin Inc also teaches a food comprising the composition (claims; page 3, 3rd para). Therefore, the composition is a food composition.
It is noted that the molecular weight of Ala-Hyp-Gly is 230 Daltons; and the molecular weight of Gly-Pro-Hyp is 285 Daltons.
With respect to claims 9-11, Nitta Gelatin Inc teaches a food comprising the composition (claims; page 3, 3rd para).
Claims 1, 5 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asami et al. (JP2013227228A).
With respect to claims 1, 5 and 8, it is noted that “[d]uring examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim” (MPEP 2111.02). In the instant case, the limitations “for suppressing sudden muscle pain”, “for suppressing muscle fatigue during or immediately after exercise”, and “for increasing muscle strength” do not appear to add any further structural differences between the food compositions of claims 1, 5 and 8.
Asami et al. teach a food composition comprising a collagen peptide having an average molecular weight of 500-1500 (claims; page 3, 2nd-6th para).
With respect to claims 9-11, Asami et al. teach a food comprising the food composition (page 3, 2nd-6th para).
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.
Claims 1, 5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kashima et al. (JP2021016335A).
With respect to claims 1, 5 and 8, it is noted that “[d]uring examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim” (MPEP 2111.02). In the instant case, the limitations “for suppressing sudden muscle pain”, “for suppressing muscle fatigue during or immediately after exercise”, and “for increasing muscle strength” do not appear to add any further structural differences between the food compositions of claims 1, 5 and 8.
Kashima et al. teach a food composition comprising a collagen peptide having an average molecular weight of 500-6000 (abstract; claims).
A prima facie case of obviousness necessarily exists when the prior art range overlaps or touches a claimed range, such as in the instant rejection (MPEP § 2144.05).
With respect to claims 9-11, Kashima et al. teach a food comprising the food composition (page 4, 5th para).
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Asami et al. (JP2013227228A) in view of Nitta Gelatin Inc (JPWO2014092150A1).
The teachings of Asami et al. with respect to claims 1, 5 and 8-11 have been discussed above.
Asami et al. do not teach the limitations of claims 2-3 (which are duplicate of claims 6-7).
The teachings of Nitta Gelatin Inc have been discussed above.
The MPEP 2144.06 states that “It is prima facie obvious to substitute equivalents known for the same purpose”.
In the instant case, it would have been obvious to use the collagen peptides of the food composition of Nitta Gelatin Inc in the food composition of Asami et al.
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kashima et al. (JP2021016335A) as applied to claims 1, 5 and 8-11 above, and further in view of Nitta Gelatin Inc (JPWO2014092150A1).
The teachings of Kashima et al. with respect to claims 1, 5 and 8-11 have been discussed above.
Kashima et al. do not teach the limitations of claims 2-3 (which are duplicate of claims 6-7).
The teachings of Nitta Gelatin Inc have been discussed above.
The MPEP 2144.06 states that “It is prima facie obvious to substitute equivalents known for the same purpose”.
In the instant case, it would have been obvious to use the collagen peptides of the food composition of Nitta Gelatin Inc in the food composition of Kashima et al.
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/SERGIO COFFA Ph.D./
Primary Examiner
Art Unit 1658
/SERGIO COFFA/Primary Examiner, Art Unit 1658
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