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 .
This office action was written in response to the Applicants Remarks filed 3/17/26. Claims 1 and 15 are pending and have been examined on the merits. Claims 3-14 and 17-20 have been newly cancelled. Claims 2 and 16 were previously cancelled.
Withdrawn Rejections
The 103(a) rejections of claims 1 and 15 over Peththawadu et al. (WO 2009/112890) in view of Marques BR 201723416 Machine Translation, Xiao et al. CN 105767331 July 2016 Machine Translation, HalpeTea https://web.archive.org/web/20201201154532/https://www.halpetea.com/ceylon-tea-guide.html and Lunder et al. (EP 0110391) have been withdrawn due to the amendments to the claims.
The 112(b) rejection of claim 1 regarding the use of “fermentation” has been withdrawn due to the amendments to the claim.
The 112(b) rejection of claim 1 regarding the use of a Markush has been withdrawn due to the amendments to the claim.
Specification
The disclosure is objected to because of the following informalities: Page 13 of the specification as filed discloses the term “Hazel free”. This appears to be a misspelling of “hassle free”.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 5, claim 1 recites “consisting”. This appears to be a misspelling of “consists”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: in line 2, claim 15 recites “consisting”. The line should be rewritten to recite “consisting of”. 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 1 and 15 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.
Claim 1 is rejected because the amounts of the ingredients in the claims do not equal 100%. Given the low end of the ranges 32% of Vegetable Glycerin, 5% of Ceylon High Grown Black Tea extract, 18% of Ceylon High Grown Coffee extract, 1.5% of Cloves, 1.5% of Cardamom, 4% of Cinnamon, 1% of Nutmeg, 4% of Ginger, 1% of Pepper, 1.5% of Vanilla, 1% of Cocoa Powder, 2% of Vitamin C before the addition of the purified water the total is 72.5%. The claim allows for the inclusion of 10-20% of Purified Water which on the lower end brings the total to 82.5%. This leaves room for other ingredients and the total amounts are further unclear in light of the fact that it appears that Applicants intend to close the claim to additional ingredients although that is unclear as well.
Further, in regards to the high range of the ingredients at 38% of Vegetable Glycerin, 30% of Ceylon High Grown Black Tea extract, 22% of Ceylon High Grown Coffee extract, 2% of Cloves, 2% of Cardamom, 6% of Cinnamon, 2% of Nutmeg, 6% of Ginger, 2% of Pepper, 2% of Vanilla, 2% of Cocoa Powder, 2% of Vitamin C the amounts are more than 100% totaling 116% before the addition of the purified water. This renders the claim indefinite because it is unclear as to what the Applicants intend as the metes and bounds of the intervention. Appropriate correction is required.
Applicants have amended the claim 1 to recite “wherein the purified water is present in an
amount sufficient to make up balance of the composition, wherein all percentages are expressed as weight percentages relative to total composition”. The metes and bounds of the amounts of the ingredients is still unclear. Is the total based on 100%? Appropriate correction is required.
Claim 1 is rejected because the claims recite preparing an extract by diluting. Both the coffee extract and the tea extract are made by diluting. This is contrary to what is accepted in the art as a way of forming an extract. Extracts are usually made by concentrating a substance, removing the majority of water, or solvent or undesired portion. Here the Applicants claim that the extract is formed by diluting black tea and coffee with water. This is incongruous. Further it is not clear what condition the black tea or coffee is in such that it can be diluted and can still form an extract. What is the strength of the initial tea and coffee? Are they in leaf form and bean form followed by the addition of water? The tea and coffee are said to be diluted 1 part tea or coffee and 15 parts water respectively. This is very dilute. Further the process is to forming a beverage concentrate, not a ready to drink beverage. Why or how would one dilute the tea or coffee to form a concentrate?
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “extract” in claim 1 is used by the claim to mean “diluted,” while the accepted meaning is “concentrated.” The term is indefinite because the specification does not clearly redefine the term.
Appropriate correction is required.
Regarding Claim 1, it is further rejected as indefinite because the Applicants claim centrifugation but then refer to centrifuging as continuous stirring and mixing of ingredients to avoid coagulation.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “centrifuging” in claim 1 is used by the claim to mean “continuous stirring and mixing of ingredients to avoid coagulation” while the accepted meaning is “a mechanical technique that uses centrifugal force to separate components of mixture based on their size and density”. Taulbee et al. “Centrifugation” Encyclopedia of Separation Science 2000 pages 17-40. Stirring mixes a solution while centrifugation separates. The term is indefinite because the specification does not clearly redefine the term.
Appropriate correction is required.
Claim 1 is rejected because it is not clear what Applicants mean by “removing left out of the Ceylon…” in line 22 of claim 1. Appropriate correction is required.
Claim 15 is rejected because the amounts of the ingredients in the claims do not equal 100%. Given the low end of the ranges 32% of Vegetable Glycerin, 5% of Ceylon High Grown Black Tea extract, 18% of Ceylon High Grown Coffee extract, 1.5% of Cloves, 1.5% of Cardamom, 4% of Cinnamon, 1% of Nutmeg, 4% of Ginger, 1% of Pepper, 1.5% of Vanilla, 1% of Cocoa Powder, 2% of Vitamin C before the addition of the purified water the total is 72.5%. The claim allows for the inclusion of 10-20% of Purified Water which on the lower end brings the total to 82.5%. This leaves room for other ingredients and the total amounts are further unclear in light of the fact that it appears that Applicants intend to close the claim to additional ingredients although that is unclear as well.
Further, in regards to the high range of the ingredients at 38% of Vegetable Glycerin, 30% of Ceylon High Grown Black Tea extract, 22% of Ceylon High Grown Coffee extract, 2% of Cloves, 2% of Cardamom, 6% of Cinnamon, 2% of Nutmeg, 6% of Ginger, 2% of Pepper, 2% of Vanilla, 2% of Cocoa Powder, 2% of Vitamin C the amounts are more than 100% totaling 116% before the addition of the purified water. This renders the claim indefinite because it is unclear as to what the Applicants intend as the metes and bounds of the intervention. Appropriate correction is required.
Applicants have amended the claim 15 to recite “wherein the purified water is present in an
amount sufficient to make up balance of the composition, wherein all percentages are expressed as weight percentages relative to total composition”. The metes and bounds of the amounts of the ingredients is still unclear. Is the total based on 100%? Appropriate correction is required.
Claim 15 is rejected because the claims recite preparing an extract by diluting. Both the coffee extract and the tea extract are made by diluting. This is contrary to what is accepted in the art as a way of forming an extract. Extracts are usually made by concentrating a substance, removing the majority of water, or solvent or undesired portion. Here the Applicants claim that the extract is formed by diluting black tea and coffee with water. This is incongruous. Further it is not clear what condition the black tea or coffee is in such that it can be diluted and can still form an extract. What is the strength of the initial tea and coffee? Are they in leaf form and bean form followed by the addition of water? The tea and coffee are said to be diluted 1 part tea or coffee and 15 parts water respectively. This is very dilute. Further the process is to forming a beverage concentrate, not a ready to drink beverage. Why or how would one dilute the tea or coffee to form a concentrate?
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “extract” in claim 1 is used by the claim to mean “diluted,” while the accepted meaning is “concentrated.” The term is indefinite because the specification does not clearly redefine the term.
Appropriate correction is required.
Response to Arguments
The 103(a) rejections of claims 1 and 15 over Peththawadu et al. (WO 2009/112890) in view of Marques BR 201723416 Machine Translation, Xiao et al. CN 105767331 July 2016 Machine Translation, HalpeTea https://web.archive.org/web/20201201154532/https://www.halpetea.com/ceylon-tea-guide.html and Lunder et al. (EP 0110391) have been withdrawn due to the amendments to the claims.
The 112(b) rejection of claim 1 regarding the use of “fermentation” has been withdrawn due to the amendments to the claim.
The 112(b) rejection of claim 1 regarding the use of a Markush has been withdrawn due to the amendments to the claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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