DETAILED ACTION
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 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.
Election/Restrictions
Applicant’s election without traverse of the species of extracts (clove extract and immortelle extract), form (gelatine capsule) and product (food supplement) in the reply filed on 31 August 2026 is acknowledged. Claims 10, 15, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9, 11-14, 16-17, 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Independent claim 1 (and dependent claims 2-9, 11-14, 16-17, and 19-20) are directed to a composition comprising a mixture of naturally occurring substances (extracts such as clove tree extract and immortelle extract). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only components listed are the naturally occurring ingredients. There is nothing in the specification to indicate that, when combined, there is any additional functionality beyond that which each substance has individually.
The analysis set forth for evaluating subject matter eligibility under section 101 is discussed in MPEP 2106. Step 1 is to determine if the claim is to a process, machine, manufacture, or a composition of matter. For the instantly recited invention, this is true. The claims are directed to a composition of matter. Thus, the analysis continues to step 2A.
Step 2A consists of two prongs. The first prong of step 2A is if the claim recites an abstract idea, a law of nature, or a natural phenomenon. The claims are directed to naturally occurring substances. Thus, the claims are drawn to products of nature, and the analysis continues to the second prong of step 2A.
The second prong of step 2A is does the claim recite additional elements that integrate the judicial exception into a practical application. The claims are directed to a composition with a combination of naturally occurring extracts, and there are no elements recited as limitations which integrate the combination into a practical application. Thus, as there is nothing else in the claim other than the judicial exception, the analysis continues to step 2B.
Step 2B is does the claim recite additional elements that amount to significantly more than the judicial exception. And the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only components listed are the naturally occurring ingredients. There is no limitation to the claimed invention requiring anything which is not drawn to a judicial exception. And there is nothing in the specification to indicate that this mixture has any additional functionality beyond that which each substance has individually. Thus, the claims are considered to not be drawn to eligible subject matter under 35 USC 101.
Claim Rejections - 35 USC § 112 - Indefiniteness
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.
Claims 2, 4, 8-9, 13-14, and 16-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding the claims, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 8-9, 13-14, and 16-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint regards as the invention.
The claims contain the trademark/trade name VinOseed. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the combination of extracts and, accordingly, the identification/description is indefinite.
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 1-9, 11-14, 16-17, and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Furger et al. (Antioxidants, 2022, vol. 11, page 565).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Furger et al. discloses combinations of extracts and evaluates their antioxidant properties (abstract). One such extract is a 50/50 (%/%) combination of S. aromaticum and H. italicum (table 2). These two extracts are clove extract and Immortelle extract, respectively (table 1). Use as a food supplement is also suggested (paragraph bridging pages 565 and 566). The extracts were used as powders (section 2.2).
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 1-9, 11-14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eilat et al. (PCT Patent Application Publication WO 2007/110871).
Eilat et al. discloses compositions comprising oils used to treat sore throats (abstract). The oils suggested include active treatment oils, such as clove bud oil, immortelle oil, and mixtures thereof (page 10, lines 1-21). Thus, Eilat et al. discloses the elements recited by instant claim 1. However, while Eilat et al. discloses compositions comprising the individual elements recited (the two specific extracts) and together these would provide a composition as instantly claimed, Eilat et al. is not anticipatory insofar as these combinations must be selected from various lists/locations in the reference. It would have been prima facie obvious, however, to make the combination since each component is taught as being useful in making the compositions of the prior art. Since this modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions a prima facie case of obviousness exists. See MPEP 2141.
Instant claims 2-6, 13, and 17 further limit the extracts, and these are addressed by the above cited disclosure.
Instant claims 7-9, 12, and 14 further limit the amounts of the oils present, and the amount suggested by Eilat et al. is between 20 and 80 wt% (page 11, line 22 – page 12, line 2). This amount overlaps the ranges instantly recited. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claims 11, 16, and 19 further limit the form, and Eilat et al. discloses that the composition can be in the form of a syrup (page 8, lines 15-16).
Additional References Cited
The Examiner further cites Berndl et al. (US Patent Application Publication 2004/0013697), but does not rely upon this reference for a rejection. This reference also teaches mixtures of extracts (paragraph [19]), and their use in such formulations such as gelatine capsules (paragraph [118-119]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
