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 .
Election/Restrictions
Applicant’s election of Group I, claims 21-29, in the reply filed on June 11, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 30-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.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 21-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon, a mixture of naturally occurring products, without significantly more. The claims recite a composition based on maple sap. The claims further recite the minerals and nutrients in the composition. This judicial exception is not integrated into a practical application because the claims are directed towards a composition alone and do not recite any additional elements that are outside the scope of the nutritional composition of naturally occurring maple syrup. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they merely recite that the composition is based on concentrated maple sap and further the nutritional profile of the composition, which all fall within the scope of naturally occurring maple products as taught by IMSI (International Maple Syrup Institute, “Nutrition and Health Benefits of Pure Maple Syrup, March 2012). Even though the claims recite “concentrated”, such limitation does not change the fact that the composition is a mixture of naturally occurring products where the change in concentration does not provide any function significantly more than the naturally occurring product, especially since the claims do not provide any indication of how much the maple sap has been “concentrated”. The components of the mixture do not perform any functions after concentration that are not provided in the natural state.
Further, the broadest reasonable interpretation (BRI) of the claim is a concentrated maple sap. Thus, the BRI covers the naturally occurring maple sap, which is known in the art to contain polypheonls and the other claimed minerals as taught by IMSI (International Maple Syrup Institute, “Nutrition and Health Benefits of Pure Maple Syrup, March 2012). Because the sap is naturally occurring, it cannot have markedly different characteristics from how it exists in nature, and therefore the claimed mixture (i.e., the sap) is a “product of nature” exception. The combination as claimed occurs in nature (as sap) so there are no additional elements to the claimed combination. Therefore, the claims are to a “product of nature” exception with nothing that adds significantly more.
With respect to the claimed amounts of the components in the claims, the broadest reasonable interpretation (BRI) of the claim is a concentrated maple sap having polyphenols and other claimed minerals in the specified amounts. In this case, there is no indication that mixing the claimed components in the recited amounts changes the structure, function, or other properties of the concentrated maple sap in any marked way. Instead, the concentrated maple sap retains its naturally occurring structure and properties. Thus, the claimed mixture as a whole does not display markedly different characteristics compared to the closest naturally occurring counterpart.
The recitation of specific amounts does not affect the characteristics of maple sap, because it was also well-understood, routine and conventional at the time to mix specific amounts and to vary the amounts of the combination, e.g., to achieve commercially acceptable sweetness levels and provide sweeteners for different purposes. Thus, the specific amounts do not meaningfully limit the claim, and the claim as a whole does not amount to significantly more than each “product of nature” by itself. Further, the examiner notes that the novel bacterial mixture of Funk Brothers, which was held ineligible because each species of bacteria in the mixture (like each component in the texiol mixture) continued to have “the same effect it always had”, i.e., it lacked markedly different characteristics. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948), discussed in Myriad Genetics, 133 S. Ct. at 2117 (explaining that the bacterial mixture of Funk Brothers “was not patent eligible because the patent holder did not alter the bacteria in any way”).
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 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 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over Arihara et al. (JP 4922551 B2; April 25, 2012; already made of record) as evidenced by IMSI (International Maple Syrup Institute, “Nutrition and Health Benefits of Pure Maple Syrup, March 2012, Retrieved from Internet URL:__nutrition_and_health_benefits_of_pure_maple_syrup.pdf (internationalmaplesyrupinstitute.com); already made of record).
Regarding claim 21, Arihara teaches maple syrup (e.g. concentrated maple sap) composition that can be fortified with polyphenols. Arihara teaches that the phenolic fraction can be separated using Super Dark and added to normal maple syrup to enhance and strengthen health promoting components such as anti-obesity and anti-diabetic effects. Arihara goes on to state that the phenolic compound of the present invention can be strengthened by adding the brown fraction to ordinary maple syrup. For example, by adding 1 g of the brown fraction to 500 g of maple syrup Canada No. 1 medium, a maple syrup product in which the phenolic compound of the present invention is enhanced and strengthened can be produced. The addition amount of the phenolic compound of the present invention can be appropriately selected in consideration of taste and the like, but is generally about 0.01 to 20% by weight in maple syrup, preferably 0.1 to 5% by weight (page 3).
While Arihara teaches maple syrup fortified with polyphenols, Arihara fails to specifically teach a polyphenol content of around 0.8 to 10 mg per g of saccharose.
IMSI teaches that maple syrup inherently has a polyphenol content of 4 mg per 60 ml serving minimum or an average of 6.6 mg per 60 ml (page 9 and 38 of 233) and a saccharose content, which is known in the art as sucrose (IMSI teaches that maple syrup is majority sucrose (page 23 and 95 of 233)). Therefore, the maple syrup of Arihara would inherently have polyphenols and saccharose.
As Arihara teaches fortifying maple syrup with polyphenols, wherein the addition amount of the phenolic compound can be appropriately selected in consideration of taste and the like, it would have been obvious to one of ordinary skill in the art to vary the amount of polyphenols added to the maple syrup to arrive at a desired content per g of saccharose. Arihara teaches that the phenolic fraction can be separated using Super Dark and added to normal maple syrup to enhance and strengthen health promoting components such as anti-obesity and anti-diabetic effects. Therefore, depending on the desired dietary considerations balanced with flavor, it would have been obvious to vary the amount of added polyphenol to arrive at a desired polyphenol content per g of saccharose.
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. "[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)
IMSI further teaches that maple syrup inherently has a phosphorus content, magnesium content, an iron content, and a manganese content (page 23 and 95). IMSI teaches that maple syrup inherently has a phosphorus content of ranging from 1 to 7 mg (page 95, 98 and 101 of 233). IMSI teaches that maple syrup inherently has a magnesium content ranging from 10 to 38 mg/L (page 23 of 233). IMSI teaches that maple syrup inherently has an iron content ranging from 0.49 mg to 4.08 mg (page 95 of 233). IMSI teaches that maple syrup inherently has a manganese content ranging from 0.939 mg to 7.825 mg (page 95 of 233).
Therefore, the maple syrup of Arihara would also inherently possess those same nutrients.
With respect to the amount of each nutrient per g of saccharose, based upon the teachings described above, wherein Arihara teaches that normal maple syrup can be fortified with nutrients to enhance and strengthen health promoting components such as anti-obesity and anti-diabetic effects, it would have been obvious to one of ordinary skill in the art to vary the amount of each nutrient in the maple syrup through fortification depending on the dietary considerations balanced with flavor to arrive at a desired content per g saccharose.
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. "[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)
IMSI additionally teaches that maple syrup inherently has an antioxidant activity (page 10 and 19 of 233). Therefore, the maple syrup of Arihara would inherently have an antioxidant activity.
With respect to the exact amount, based upon the teachings described above wherein Arihara teaches that normal maple syrup can be fortified with nutrients to enhance and strengthen health promoting components such as anti-obesity and anti-diabetic effects, it would have been obvious to one of ordinary skill in the art to vary the amount of antioxidant activity in the maple syrup through fortification depending on the dietary considerations balanced with flavor to arrive at a desired amount.
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. "[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)
Regarding claims 22-26, Arihara teaches that the composition is in liquid form, specifically maple syrup form.
IMSI further teaches that the composition can be in liquid form, solid form, maple syrup form, maple butter form, or maple sugar form (page 54 of 233) and therefore it would have been obvious to one of ordinary skill in the art to have the composition of Arihara in a solid, maple butter or sugar form depending on the desired use of the product.
Regarding claims 27-29, IMSI teaches that maple syrup inherently has an antioxidant activity (page 10 and 19 of 233). Therefore, the maple syrup of Arihara would inherently have an antioxidant activity.
With respect to the exact amount, based upon the teachings described above wherein Arihara teaches that normal maple syrup can be fortified with nutrients to enhance and strengthen health promoting components such as anti-obesity and anti-diabetic effects, it would have been obvious to one of ordinary skill in the art to vary the amount of antioxidant activity in the maple syrup through fortification depending on the dietary considerations balanced with flavor to arrive at a desired amount.
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. "[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)
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.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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