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 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 12-22 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 12, 17 and 19, the phrases "preferably" and “possibly” (claim 19) render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 14 is indefinite as it recites “wherein the fermented grape marc infusion from which the scoby has been removed is centrifuged or filtered”. Claim 14 depends from claim 12, which never recites that the scoby has been removed. Therefore, it is not clear when the scoby was removed in claim 12. It appears as though claim 14 should depend from claim 13.
Claim 16 recites the limitation "the ethanol solution" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim as “an ethanol solution” was never recited in the solubilizing step.
Claims 13, 15, 18, and 20-22 are included as they depend from rejected claim 12.
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 12-15 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Clancy et al. (US 2021/0301232 A1; Sep. 30, 2021) in view of Ayed et al. (Development of a beverage from red grape juice fermented with the Kombucha consortium, Springer Vol 67, No. 1, page 111-121, November 6, 2016; made of record by applicant).
Regarding claims 12 and 20, Clancy discloses a method for preparing fermented grape marc comprising preparing a grape marc infusion by placing grape marc in contact with water (e.g. hydrating, [0031], [0039], [0051]), placing the grape marc infusion in contact with bacteria and/or yeasts ([0031], [0053]), and fermenting the grape marc infusion ([0053]-0054]).
Clancy further teaches that the fermentation process lasts for 2 to 6 weeks ([0054]), thus overlapping the claimed range of 5 to 35 days. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
While Clancy teaches fermenting with bacteria and/or yeasts, Clancy fails to specifically disclose fermenting with a scoby as claimed.
Ayed teaches a method for preparing a fermented grape juice beverage, wherein the fermentation process uses kombucha consortium, e.g. scoby (pages 112-113). Ayes teaches that kombucha consortium gave the beverage antimicrobial activity against all tested bacteria and provides curative properties (pages 111-112).
As Ayed teaches that it is known in the art to use scoby to ferment a grape product, and Clancy further teaches that the fermentation process can involve both yeast and bacteria ([0053]), it would have been obvious to one of ordinary skill in the art to use a scoby in the fermentation process of Clancy in order to provide the product of Clancy with the same benefits as taught in Ayed, e.g. wherein the product comprises antimicrobial activity against all tested bacteria and provides curative properties (pages 111-112).
Regarding claims 13-14, Clancy further teaches that the scoby is removed after fermentation through filtration or other techniques ([0067]).
Ayed additionally teaches that at the end of fermentation, filtration is performed to remove the scoby (page 113).
Regarding claim 15, Clancy teaches that fermented grape marc is further dewatered to remove excess water ([0067]) and can be processed into powder form depending on the needs of the end-user ([0079]).
While Clancy fails to specifically teach that the fermented grape marc is evaporated or freeze-dried in order to obtain a dry extract, Clancy teaches that the final product can be a powder, which is a dry extract, and therefore it would have been obvious to one of ordinary skill in the art for the dewatering process of Clancy to include evaporation in order to produce the dry powder. It would have been obvious to one of ordinary skill to use any known method for remove water as Clancy already teaches a dewatering step.
Regarding claim 17, Ayed teaches that the scoby comes from a kombucha having 15 days of fermentation (page 113), thus falling within the claimed range of 14 to 20 days.
Clancy further teaches that the grape marc infusion comprises grape marc rehydrated with an amount of water for a sufficient period of time to allow the berries to swell ([0051]). Clancy, however, fails to specifically teach that the grape marc infusion has a concentration of grape marc dry matter per liter of water ranging from 20 to 150 g/L.
It would have been obvious to one of ordinary skill in the art to determine a sufficient concentration as Clancy teaches that a sufficient amount of water is needed to allow the berries to swell and rehydrate. Therefore, depending on the size and amount of grape marc available, it is well within the ordinary skill in the art to determine the appropriate concentration through routine experimentation.
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. frozen"Where 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)
Regarding claim 18, Clancy teaches that the grape marc, when placed in contact with water, is in the form of fresh/dry solid residue ([0038]-[0039]).
Regarding claim 19, Clancy further teaches that the grape marc infusion is prepared by adding grape marc to an amount of water for a sufficient period of time to allow the berries to swell ([0051]). Clancy, however, fails to specifically teach that the grape marc infusion has a concentration of grape marc dry matter per liter of water ranging from 20 to 150 g/L.
It would have been obvious to one of ordinary skill in the art to determine a sufficient concentration as Clancy teaches that a sufficient amount of water is needed to allow the berries to swell and rehydrate. Therefore, depending on the size and amount of grape marc available, it is well within the ordinary skill in the art to determine the appropriate concentration through routine experimentation.
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. "Where 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)
With respect to the water being previously heated to a temperature from 70-90 C, maintaining the temperature of the infusion at a temperature from 70-90 C for 10-20 minutes, filtering the infusion to separate the solids, and cooling the filtered grape marc infusion to a temperature ranging from 20-35 C, Clancy fails to specifically teach such limitations.
However, as Clancy teaches adding grape marc to an amount of water for a sufficient period of time to allow the berries to swell ([0051]), the exact temperature of the water and time for infusing is merely routine experimentation that is an obvious variant over the process of Clancy. As previously stated, 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.
It would have been obvious to one of ordinary skill in the art to vary the temperature of the water and time for infusion in order to allow the marc to rehydrate completely.
It further would have been obvious to filter the infusion to separate from any undesired components before fermentation
It would have been obvious to cool the filtered infusion in order to provide a cooler infusion for fermentation to prevent any undesirable outcomes during the fermentation process.
Regarding claims 21-22, Clancy further teaches that the grape marc obtains according to the method of claim 12 can be used in health supplements (e.g. dietary) and in cosmetics ([0002]), such as topical applications in cosmetics (e.g. dermo cosmetic; [0090]). Clancy teaches that the supplement can be in the form of a solid or a liquid ([0079]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Clancy et al. (US 2021/0301232 A1; Sep. 30, 2021) in view of Ayed et al. (Development of a beverage from red grape juice fermented with the Kombucha consortium, Springer Vol 67, No. 1, page 111-121, November 6, 2016; made of record by applicant) as applied to claim 15 above, and further in view of De Iseppi et al. (Current and further strategies for wine yeast lees valorization, Elsevier, Food Research international, Vol 137, May 27, 2020, 14 pages; made of record by applicant).
Regarding claim 16, Clancy discloses a method for producing a dry extract of fermented grape marc as described above, but fails to further teach solubilizing the dry extract in ethanol, stirring the ethanol solution, filtering the ethanol solution and evaporating the filtered ethanol solution until a dry ethanolic extract is obtained.
Iseppi teaches different processes for treating wine by-products. Iseppi teaches that wine by-products contain compounds that are useful in different applications. Iseppi teaches that such compounds can be extracted using ethanol addition and further freeze- or spray-drying to produce an extract (Section 4.2.3), which corresponds to applicant’s evaporating step.
It would have been obvious to one of ordinary skill in the art to further process the dry extract of Clancy by solubilizing in ethanol and evaporating in order to produce an ethanolic extract having a desired use. It would have been obvious to stir and filter the ethanol solution in order to ensure a homogenous mixture and also removing any unwanted compounds before the evaporation step.
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.
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, Nikki Dees can be reached at (571) 270-3435. 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.
/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
Prosecution Insights