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 § 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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bonnlȁnder et al (EP 2868208 A1).
In regard to claims 1 and 2, Bonnlȁnder et al discloses a beverage composition comprising fermented acerola. Bonnlȁnder et al discloses fermenting acerola fruit juice with Saccharomyces cerevisiae yeast (Example 1 and 2).
In regard to claim 1, Bonnlȁnder et al does not disclose the weight ratio of the sum of 3-methylbutyl acetate, 2- methylbutyl acetate, isobutyl acetate, 2-phenylethyl acetate and 2-phenylethanol to 2,3- butanedione. In regard to claim 2, Bonnlȁnder et al does not disclose the weight ratio of the sum of 2-phenylethyl acetate and 2-phenylethanol to 2-phenylacetaldehyde. The particular concentration of the recited compounds would depend on the fermentation conditions including fermentation yeast, temperature, time, etc.
Further in regard to the concentration recitations, it is noted that:
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. "[W]here 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) (MPEP 2144.05, II A).
Further in this regard, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the weight ratio of the sum of 3-methylbutyl acetate, 2- methylbutyl acetate, isobutyl acetate, 2-phenylethyl acetate and 2-phenylethanol to 2,3- butanedione and the weight ratio of the sum of 2-phenylethyl acetate and 2-phenylethanol to 2-phenylacetaldehyde, among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Claim 1 has been amended to include the limitation the process claim 8, now cancelled. Claim 1 is directed to the product. In regard to the product by process claims it is noted that “[E]ven 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) (citations omitted) See also MPEP § 2113.
In regard to claim 3, Bonnlȁnder et al discloses removal of ethanol content from juice ([0006], claim 8). Bonnlȁnder et al discloses “[t]he ethanol may be removed by evaporation by state of the art concentration techniques with low thermal input, preferably under vacuum. Suitable are devices such as a rising film plate, kettle-type, centrifugal, falling film, thin layer or circulation evaporator and reverse osmosis” ([0011]). It appears that ethanol is removed to an extent that meets the limitation of below1.2 wt% as recited in claim 3.
In regard to claim 4, Bonnlȁnder et al discloses low-hygroscopic, dried extract of fermented acerola (Abstract, [0006]).
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Leonarski et al (Production of kombucha-like beverage and bacterial cellulose by acerola byproduct as raw material).
In regard to claims 1 and 2, Leonarski et al discloses production of a kombucha-like beverage by fermentation of acerola raw material (Title, page 2 col 1 Introduction section). In regard to the fermentation culture, Leonarski et al discloses fermenting acerola raw material with the starter culture or SCOBY (page 2 col 1 2.2. Kombucha culture and inoculum preparation). Leonarski et al discloses “[t]he main strains identified in the inoculum were: Komagataeibacter rhaeticus, Bacillus megaterium, Bacillus aryabhattai, Bacillus flexus, and Bacillus simplex as bacteria; and Brettanomyces bruxellensis and Zygo saccharomyces bisporus as yeasts” (page 2 col 1 2.2. Kombucha culture and inoculum preparation).
In regard to claim 1, Leonarski et al et al does not disclose the weight ratio of the sum of 3-methylbutyl acetate, 2- methylbutyl acetate, isobutyl acetate, 2-phenylethyl acetate and 2-phenylethanol to 2,3- butanedione. In regard to claim 2, Leonarski et al does not disclose the weight ratio of the sum of 2-phenylethyl acetate and 2-phenylethanol to 2-phenylacetaldehyde. The particular concentration of the recited compounds would depend on the fermentation conditions including fermentation yeast, temperature, time, etc.
Further in regard to the concentration recitations, it is noted that:
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. "[W]here 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) (MPEP 2144.05, II A).
Further in this regard, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the weight ratio of the sum of 3-methylbutyl acetate, 2- methylbutyl acetate, isobutyl acetate, 2-phenylethyl acetate and 2-phenylethanol to 2,3- butanedione and the weight ratio of the sum of 2-phenylethyl acetate and 2-phenylethanol to 2-phenylacetaldehyde, among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Claim 1 has been amended to include the limitation the process claim 8, now cancelled. Claim 1 is directed to the product. In regard to the product by process claims it is noted that “[E]ven 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) (citations omitted) See also MPEP § 2113.
In regard to claim 3, Leonarski et al discloses the final concentration of ethanol was similar in all samples, approximately 9.5 g/L (0.95 wt%) (Abstract).
Further in regard to the ethanol concentration recitations, it is noted that:
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. "[W]here 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) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claim 4, Leonarski et al discloses a kombucha-like beverage (Title).
Allowable Subject Matter
Claims 6, 9-12 and 15-19 are free of prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6, 9-12 and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-13 of copending Application No. 18/721,401 in view of Pedersen (Kombucha: a Tasty Symbiotic Culture of Bacteria and Yeast) as discussed above.
This is a provisional nonstatutory double patenting rejection.
Claim 6 of the instant Application No. 18/722,711 is directed to a method of preparing a beverage composition comprising fermenting an aqueous acerola extract wherein the fermentation is performed by yeast comprising Pichia yeast, the Pichia yeast being Pichia kluyveri NYSC 5485 (CNCM 1-5525).
Claim 8 of copending Application No. 18/721,401 is directed to a method of preparing a beverage composition comprising;
a. steeping camomile in water to form an aqueous camomile extract and steeped camomile;
b. fermenting the aqueous camomile extract in the presence or absence of the steeped camomile; and
wherein the fermentation is performed by yeast comprising Pichia yeast.
The difference between claims 6-8 of the copending application and claim 6 of the instant application is the nature of herb/plant used for steeping and further fermentation. However, as discussed above, Pedersen discloses preparation of a fermented beverage such as kombucha (page 1). Pedersen discloses adding verbena among other herbs and woods and boiling water to separate containers, “closed with a lid and left to infuse at room temperature with different infusing times for optimal flavour intensity” (Experiments section on page 2). Pedersen discloses that “[t]hese included dried yarrow flowers (1% w/v, 10 min.), juniper wood (5% w/v, 1 hour), dried chamomile (1% w/v, 10 min.), dried lemon verbena (1% w/v, 10 min.), dried woodruff (1% w/v, 10 min.) and dried cèpes (5% w/v, 12 hour). Dried kelp (2.3% w/v, 1 hour) was sealed in a vacuum bag and treated sous vide at 60 °C. To all solutions were added 50 g of sucrose” (Experiments section on page 2). Hence, Pedersen discloses that kombucha could be prepared from various plant material. Hence, it would have been obvious to prepare kombucha from any plant material as suggested by Pedersen including acerola.
The instant claims 9-12 recite the same process limitations as claims 9-13 of the copending Application No. 18/721,401
Claims 9-13 of the copending Application No. 18/721,401 recite the following limitations:
Claim 9. The method of claim 8 wherein the Pichia yeast is Pichia kluyveri.
Claim 10. The method of claim 8 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 11. The method of claim 8 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 12. The method of claim 8 comprising separating the aqueous camomile extract from the steeped camomile after fermentation.
Claim 13. The method of claim 8 wherein the steeped camomile, present during the fermentation of the aqueous camomile extract, is dried together with the aqueous camomile extract after fermentation.
Claim claims 9-12 of the instant Application No. 18/722,711 recite the following limitations:
Claim 9. (previously presented) The method of claim 6 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 10. (previously presented) The method of claim 6 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 11. (previously presented) The method of claim 6 comprising separating the aqueous acerola extract from the steeped acerola after fermentation.
Claim 12. The method of claim 6 wherein the steeped acerola, present during the fermentation of the aqueous acerola extract, is dried together with the aqueous acerola extract after fermentation.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/721,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to a beverage composition comprising fermented plant extract wherein the weight ratio of the sum of 3-methylbutyl acetate, 2- methylbutyl acetate, isobutyl acetate, 2-phenylethyl acetate and 2-phenylethanol to 2,3- butanedione is greater than 50.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 6, 9-12, 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-13 of copending Application No. 18/721,391 in view of Pedersen (Kombucha: a Tasty Symbiotic Culture of Bacteria and Yeast) as discussed above.
This is a provisional nonstatutory double patenting rejection.
Claim 6, 7 and 8 of copending Application No. 18/721,391 are directed to a method of preparing a beverage composition comprising;
a. steeping tea in water to form an aqueous tea extract and steeped tea;
b. fermenting the aqueous tea extract in the presence or absence of the steeped tea; and
wherein the fermentation is performed by yeast comprising Pichia yeast.
Claim 7. The method of claim 6 wherein the Pichia yeast is Pichia kluyveri.
Claim 8 The method of claim 7 wherein the Pichia yeast is Pichia kluyveri NYSC 5485 (CNCM I-5525).
Claim 6 of the instant application is directed to a method of preparing a beverage composition comprising fermenting an aqueous acerola extract wherein the fermentation is performed by yeast comprising Pichia yeast, the Pichia yeast being Pichia kluyveri NYSC 5485 (CNCM 1-5525).
The difference between claims 6 of the instant application and claim 6-8 of the copending Application No. 18/721,391 is the nature of herb/plant used for steeping and further fermentation. However, as discussed above, Pedersen discloses preparation of a fermented beverage such as kombucha (page 1). Pedersen discloses adding various herbs, woods and boiling water to separate containers, “closed with a lid and left to infuse at room temperature with different infusing times for optimal flavour intensity” (Experiments section on page 2). Pedersen discloses that “[t]hese included dried yarrow flowers (1% w/v, 10 min.), juniper wood (5% w/v, 1 hour), dried chamomile (1% w/v, 10 min.), dried lemon verbena (1% w/v, 10 min.), dried woodruff (1% w/v, 10 min.) and dried cèpes (5% w/v, 12 hour). Dried kelp (2.3% w/v, 1 hour) was sealed in a vacuum bag and treated sous vide at 60 °C. To all solutions were added 50 g of sucrose” (Experiments section on page 2). Hence, Pedersen discloses that kombucha could be prepared from various plant material. Hence, it would have been obvious to prepare kombucha from any plant material as suggested by Pedersen including acerola.
The instant claims 7-13 recite the same process limitations as claims 9-12 of the copending Application No. 18/722,711.
Claim 7-13 of copending Application No. 18/721,391recite the following limitations:
Claim 7. The method of claim 6 wherein the Pichia yeast is Pichia kluyveri.
Claim 8. The method of claim 7 wherein the Pichia yeast is Pichia kluyveri NYSC 5485.
Claim 9. The method of claim 6 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 10. The method of claim 6 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 11. The method of claim 6 wherein the fermentation is performed in the absence of acetic acid bacteria.
Claim 12. The method of any one of claims 6 to 11 claim 6 comprising separating the aqueous tea extract from the steeped tea after fermentation.
Claim 13. The method of claim 6 wherein the steeped tea, present during the fermentation of the aqueous tea extract, is dried together with the aqueous tea extract after fermentation.
Claim claims 9-12 of the instant recite the following limitations:
Claim 9. (previously presented) The method of claim 6 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 10. (previously presented) The method of claim 6 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 11. (previously presented) The method of claim 6 comprising separating the aqueous acerola extract from the steeped acerola after fermentation.
Claim 12. The method of claim 6 wherein the steeped acerola, present during the fermentation of the aqueous acerola extract, is dried together with the aqueous acerola extract after fermentation.
Claims 6, 9-12 and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-12 of copending Application No. 18/721,384 in view of Pedersen (Kombucha: a Tasty Symbiotic Culture of Bacteria and Yeast) as discussed above.
This is a provisional nonstatutory double patenting rejection.
Claim 6, 7 and 8 of copending Application No. 18/721,384 are directed to a method of preparing a beverage composition comprising;
a. steeping verbena in water to form an aqueous verbena extract and steeped verbena;
b. fermenting the aqueous verbena extract in the presence or absence of the steeped verbena; and
wherein the fermentation is performed by yeast comprising Pichia yeast.
Claim 7. The method of claim 6 wherein the Pichia yeast is Pichia kluyveri.
Claim 8 The method of claim 7 wherein the Pichia yeast is Pichia kluyveri NYSC 5485 (CNCM I-5525).
Claim 6 of the instant Application is directed to a method of preparing a beverage composition comprising fermenting an aqueous acerola extract wherein the fermentation is performed by yeast comprising Pichia yeast, the Pichia yeast being Pichia kluyveri NYSC 5485 (CNCM 1-5525).
The difference between claims 6 of the instant application and claim 6-8 of the copending Application No. 18/721,384 is the nature of herb/plant used for steeping and further fermentation. However, as discussed above, Pedersen discloses preparation of a fermented beverage such as kombucha (page 1). Pedersen discloses adding verbena among other herbs and woods and boiling water to separate containers, “closed with a lid and left to infuse at room temperature with different infusing times for optimal flavour intensity” (Experiments section on page 2). Pedersen discloses that “[t]hese included dried yarrow flowers (1% w/v, 10 min.), juniper wood (5% w/v, 1 hour), dried chamomile (1% w/v, 10 min.), dried lemon verbena (1% w/v, 10 min.), dried woodruff (1% w/v, 10 min.) and dried cèpes (5% w/v, 12 hour). Dried kelp (2.3% w/v, 1 hour) was sealed in a vacuum bag and treated sous vide at 60 °C. To all solutions were added 50 g of sucrose” (Experiments section on page 2). Hence, Pedersen discloses that kombucha could be prepared from various plant material. Hence, it would have been obvious to prepare kombucha from any plant material as suggested by Pedersen including acerola.
The instant claims 6, 9-12 and 15-19 recite the same process limitations as claims 7-12 of the copending Application No. 18/721,384
Claims 9-12 of the copending Application No. 18/721,384 recite:
Claim 9. The method of claim 6 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 10. The method of claim 6 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 11. The method of claim 6 comprising separating the aqueous verbena extract from the steeped verbena after fermentation.
Claim 12. The method of claim 6 wherein the steeped verbena, present during the fermentation of the aqueous verbena extract, is dried together with the aqueous verbena extract after fermentation.
Claim 9-12 of the instant application recite the following limitations:
Claim 9. (previously presented) The method of claim 6 wherein the Pichia yeast comprises a genetic sequence having a global nucleotide identity of at least 98% to the combination of SEQ IDs NO:1-12.
Claim 10. (previously presented) The method of claim 6 wherein the fermentation is performed in the absence of Saccharomyces cerevisiae.
Claim 11. (previously presented) The method of claim 6 comprising separating the aqueous acerola extract from the steeped acerola after fermentation.
Claim 12. The method of claim 6 wherein the steeped acerola, present during the fermentation of the aqueous acerola extract, is dried together with the aqueous acerola extract after fermentation.
Response to Arguments
Applicant’s arguments, see the Reply to the Non-Final Office action mailed 04/29/2026, filed 07/22/2026 with respect to claims 6-12 have been fully considered and are persuasive. The rejection of claim(s) 6-12 under 35 U.S.C. 103 as being unpatentable over Bonnlȁnder et al (EP 2868208 A1) in view of Fan et al (US 10,405,565 B2) has been withdrawn. Claims 6, 9-12 and 15-19 are free of prior art.
In response to Applicant’s argument regarding claims 1-4, it is noted that claim 1 has been amended to include the limitation the process claim 8, now cancelled. Claim 1 is directed to the product. In regard to the product by process claims it is noted that “[E]ven 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) (citations omitted) See also MPEP § 2113.
Conclusion
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