DETAILED ACTION
The receipt is acknowledged of applicant’s preliminary amendment and IDS, both filed 05/14/2024.
Claims 1-5 and 10-13 are presented by the preliminary amendment.
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 .
Specification
The title of the invention “Hight-adjustable sprinkler” is not descriptive or even related to the invention by any way. A new title is required that is clearly indicative of the invention to which the claims are directed. For example, the following title is suggested: “Complex ginsenoside composition for reducing dental plaque”.
Information Disclosure Statement
The information disclosure statement filed 05/14/2024 is not signed by applicant or representative in accordance of with CFR 1.33.
The references cited in the PCT international search report by the Korean Office have not been considered. No legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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 1-5, 10-13 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 confusing because the claim recites: “…. composition comprising …. a complex ginsenoside composition containing, relative to 100 parts by weight of the ginsenoside compound K, ginsenoside Rg3 (R+S), ginsenoside F2, ginsenoside Rh2, and ginsenoside Rb1 at least 7 parts or more by weight each”. Is not clear if the claimed amount “relative to 100 parts by weight” is it relative to 100 part of ginsenoside compound K? or if relative to 100 part of the complex ginsenoside as a whole?
Regarding claim 2, the claim recite obtaining red ginseng concentrate from step 1, and obtaining ginsenoside Rb1, Rb2, Rc and Rd from step 2 that not claimed by claim 1, except for Rb1. Step 3 related to the ginsenosides of step 2, and then step 4 recites mixing products of step 1 and step 3 that comprises ginsenosides of step 2. The claim is confusing because the composition obtained from the process of claim 2 does not comprise the ginsenosides claimed by claim 1.
Regarding claims 1 and 3, the claims recite the expressions “or more” and “at least or more”, without an upper limit to the claimed values. The claims do not set forth the metes and bounds of the claimed values.
Regarding claim 5, the claim is confusing because it recites “ginsenoside compound K or complex ginsenoside composition”. The claim is interpreted as the composition comprises either compound K or complex ginsenoside, while the claim depends on claim 1 that interpreted as the composition comprises ginsenoside complex that comprises 5 ingredients one of them is ginsenoside compound K. The claim does not set forth the metes and bounds of the claim.
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 1-5, 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20200019358 (hereinafter KR ‘358, machine translation currently provided).
Applicant Claims
Claim 1 is directed to a composition for reducing dental plaque and inhibiting dental plaque acidification, the composition comprising, as an active ingredient,
a complex ginsenoside composition containing, relative to 100 parts by weight of the ginsenoside compound K, ginsenoside Rg3 (R+S), ginsenoside F2, ginsenoside Rh2, and ginsenoside Rb1 at least 7 parts or more by weight each.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
KR ‘358 teaches composition comprising ginsenosides effective to inhibit growth of dental Streptococcus mutants that cause dental plaques (abstract; ¶¶ 0001-0002). The composition can be liquid, cream or solid (¶ 0018; claims 8-9). The composition comprises compound K, Rh2, Rb1, Rg3, and F2 (¶ 0054). The reference teaches composition comprising complex ginsenosides in the form of toothpaste, mouthwash, food composition, e.g. gum, or oral cleaning composition (¶¶ 0005-0008, 0019-0022). Complex ginsenosides is prepared from red ginseng by a process comprising the steps of extracting ginsenosides from red ginseng using ethanol; concentrating the extract; dissolving the concentrate in water and passing through a column filled with synthetic adsorption resin; using alpha glactosidase; and then desorbed by ethanol to obtain the complex ginsenosides (¶¶ 0011, 0016, 0030, 0037, 0053).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012) &
Finding of Prima Facie Obviousness Rational and Motivation
(MPEP §2142-2143)
While the reference teaches composition comprising the claimed ginsenosides, the reference however, does not teach the claimed amount of each ginsenoside as claimed by claims 1 and 3. However, one having ordinary skill in the art would have determined the amount of each ginsenoside based on severity of the plaque to be reduced. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05. There is no evidence of record as to the criticality of the claimed amounts.
Regarding claims 2 and 4, the claims are directed to a product by process. Product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Since the present composition is substantially identical to the composition disclosed by KR ‘358, the burden is on applicants to show an unobvious difference. “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974); In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In any event, the reference teaches and outlined the claimed steps of the method claimed by claim 2.
Regarding red ginseng claimed by claim 4, it is taught and used by the reference to produce complex ginsenosides composition.
Regarding claim 5 that the composition is liquid, cream or solid, this is taught by the reference.
Regarding composition forms of toothpaste, mouthwash, dietary supplement, and pharmaceutical treatment as claimed by claims 10, 11, 12, and 13, respectively, all the claimed forms are taught by the reference. Oral cleaning composition and dietary supplement taught by the reference, both read on pharmaceutical dental treatment claimed by claim 13.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to provide the claimed composition from the teachings of the reference.
Absent any evidence to the contrary, and based upon the teachings of the prior art, there would have been a reasonable expectation of success in practicing the instantly claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Isis A D Ghali whose telephone number is (571)272-0595. The examiner can normally be reached Monday through Friday, 8:30 AM to 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ISIS A GHALI/Primary Examiner, Art Unit 1611 /I.G./