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 .
Applicant’s election with traverse of Group I, claims 1-11, in the reply filed on 13 July 2026 is acknowledged.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
Claims 12-20 are withdrawn as being directed to a nonelected invention.
Claims 1-11 are presented for examination on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a broccoli extract with enhanced anti-inflammatory compounds obtain by a specific extraction method as disclose in paragraphs [0075-77] of the Specification, does not reasonably provide enablement for any and all extracts of broccoli comprising an enhanced level of anti-inflammatory compounds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
Undue experimentation would be required to practice the invention as claimed due to the quantity of experimentation necessary; limited amount of guidance and limited number of working examples provided in the specification; nature of the invention; state of the prior art; relative skill level of those in the art; predictability or unpredictability in the art; and breadth of the claims. In re Wands, 8USPQ2d 1400, 1404 (Fed. Cir. 1988).
Applicant’s claims are drawn to a broccoli extract comprising an enhanced level of anti-inflammatory compounds, prepared by a method comprising (a) subjecting a broccoli plant to any abiotic stimulus; (b) extracting aerial material of the broccoli plant with any solvent; (c) drying the extract; wherein the concentrated broccoli extract comprises at least 20 weight percent sinapates and at least 30 weight percent flavonoids.
Regarding the extraction solvent used to obtain the claims product with anti-inflammatory properties, it is well known in the art that polarity of solvents plays a key role in determining the final product obtained by an extraction. However, because many phytochemicals remain undiscovered, the skilled artisan has to make his/her best educated guess as to what types of phytochemicals will be successfully extracted with a solvent of a particular polarity. Oftentimes, unless the constituents in a particular natural product extract have been well evaluated and documented in the literature, the skilled artisan must adhere to trial and error protocols in order to quantitatively determine phytochemical constituents present in samples obtained from respective extraction procedures. These procedures are common when, for example, a natural product or part thereof has been documented in the literature as possessing some medicinal quality. The skilled artisan will attempt numerous extraction protocols in an attempt to isolate particular ingredient(s) that have medicinal efficacy. Typically, beginning with the first crude extraction, it is a guess as to whether or not the extract will possess certain phytochemical constituents. For example, unpredictability with regard to natural extracts due to their highly complex nature has been well documented. Revilla et al. (J. Agric. Food Chem. (1998), vol. 46, pp. 4592-4597) showed that the slightest variations in polarity of solvent and reaction time upon grape extraction provided respective products with unique characteristic properties (See tables 1, 2, 4, 5, 6 and 7 in Revilla). In turn, each product would possess varying pharmacological properties based upon their respective methods of extraction. Thus, the functional property of an extract of broccoli as an anti-inflammatory is not considered to be predictable because the type of extraction used to produce the extract would have a significant impact on the chemical characteristics of the extract.
The specification does not provide any specific guidance to show that any and all extracts of the claimed anti-inflammatory functionality. An artisan would have to test every potential extraction technique with the virtually limitless number of solvents as well as every variety of broccoli in order to determine if it is able to inhibit inflammation. This degree of experimentation clearly places an undue burden on the artisan of ordinary skill. The specification only provides testing data that the extract produced by the extraction procedures and variables disclosed in paragraph [0075-77]. Given the wide range of possible resulting extracts that could potentially result from various extraction methods, the presence of a single example of an extract that possesses anti-inflammatory properties provides insufficient guidance to the person to practice the invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116).
The MPEP states that the purpose of the written description requirement is to ensure that the invention had possession, as of the filing date of the application, of the specific subject matter later claimed by him or her. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention.’ Lockwood v. American Airlines, Inc., 107 F. 3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F. 2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, no that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Lockwood, 107 F. 3d at 1572, 41 USPQ2d at 1966.” Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient” MPEP § 2163.
Level of Skill and Knowledge in the Art:
The MPEP indicates:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A), above), reduction to drawings (see i)(B), above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C), above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
What constitutes a “representative number” is an inverse function of the skill and knowledge in the art. Satisfactory disclosure of a “representative number” depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly.
Applicant has provided evidence of a single example of broccoli extract with the claimed enhanced anti-inflammatory compounds. After testing various abiotic stimuli, we developed a 5-day-sprout protocol that deliver increased phenylpropanoids, determined by experimental extraction methods. The optimal extraction was an ethanol-based method, where the broccoli sprouts presented a high ratio of flavonoids and sinapates.
This disclosure is actually a very few number in comparison to the vast number of extracts which could be obtained from beeswax bloom. The reason for this large amount of permutations is because extraction techniques are often coupled in order to obtain a product; for example
1) a water extraction followed by an alcoholic extraction: the product obtained is an extract.
2) a supercritical extraction (CO2 ) followed by an alcoholic and then a non-polar solvent extraction (e.g., chloroform): the product is an extract.
3) a benzene extraction followed by a water extraction and chromatographic separation: the product is an extract.
4) a water/chloroform extraction (e.g., in a seperatory funnel), followed by collection of the water layer, chromatographic separation and crystallization of an isolate: the product is an extract.
5) squeezing the plant to obtain a juice: the product is an extract.
6) dipping the plant in an organic solvent to remove the waxy layer: the product is an extract.
There is well-known unpredictability regarding natural product extracts and their e.g., pharmaceutical capabilities. The resulting compositions and thus functional properties of an extraction process are highly dependent on the particular steps of the extraction and the extraction solvent employed
Raskin et al. clearly establish the grave unpredictability of elucidating active ingredients from natural sources:
Multi-component botanical therapeutics also present unique challenges in identifying their active ingredients and in validating their clinical effects. Activity-guided fractionation and reconstitution experiments currently used to characterize compound interferences within a mixture are cumbersome and time consuming…..While chromatographic analysis is often employed to produce biochemical fingerprints used for product comparison…..in the absence of information about the identity of active ingredients, such analysis is hardly reliable, since chromatography provides an incomplete picture of the qualitative and quantitative comparison of a complex extract (p. 3426, col. 2 – p. 3427, col. 1) emphasis added.
There is no known means for predicting the capability of other broccoli extracts, besides the extract specifically described in the Instant disclosure, with regard to [e.g., anti-inflammatory effect]. The skilled artisan could not even relatively predict what other extracts would perform this function. Absent any discussion regarding correlation between structure and function, even the most skilled of artisans would need to guess what other extracts could potentially have the effect(s) listed in the claim(s).
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.
Claims1-11 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 rendered vague and indefinite by the phrase “a concentrated broccoli extract”. It is unclear if this extract is the claimed broccoli extract with enhanced anti-inflammatory compounds. Furthermore, what is actually concentrated in the extract? Concentrated compared to what? The term “concentrated” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under U.S.C. 112, second paragraph, for the reasons set forth above.
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.
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, 3-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ghura et al. (2016) [cited by Applicant in IDS filed 10/4/24] and Olszewska et al. (2020).
Ghura et al. (2016) beneficially tach that a phenylpropanoid extract derived from Arabidopsis thaliana, a plant in the same family as broccoli, reduced inflammatory marker levels associated with APOE4 allele-induced neuroinflammation.
Olszewksa et al. beneficially teach that broccoli sprouts represent a health-promoting food, rich in antioxidant and anti-inflammatory phytochemicals, among which sulfur compounds are most extensively investigated. In this study, the phenolics
of broccoli sprouts were examined for variability during germination and influence on the bioactivity of sprouts. In the sprouts germinated in darkness, 31 compounds were identified by (18 sinapic acid derivatives, 8 glucosinolates, and 5 flavonoids) with sinapoyl components (SADs) prevailing among polyphenols. The total SADs decreased during germination (down to 4.85 mg per g dw in 6-day-sprouts), but the concurrent changes in molecular structures of the leading compounds (sinapine was replaced by sinapate sugar esters and sinapic acid) increased the antioxidant capacity of the sprouts. The glucosinolate-depleted 6-day-sprout extract (34.2 mg SADs per g dw) effectively protected human plasma components against peroxynitrite-induced oxidative damage in vitro (reduced the levels of 3-nitrotyrosine, lipid hydroperoxides and thiobarbituric acid-reactive substances)
and enhanced the non-enzymatic antioxidant status of plasma. It also downregulated the release of pro-inflammatory cytokines (TNF-α, IL-6) from LPS-stimulated human peripheral blood mononuclear cells and increased the production of IL-10, an anti-inflammatory mediator. The relevant activity parameters of sinapic acid indicated that SADs might be linked to the observed effects. The results support the application of broccoli sprouts in oxidative stress- and inflammation-related diseases and the role of SADs as their bioactive components next to glucosinolates.
Broccoli seeds were obtained and before germination, the seeds were rinsed with distilled water to remove surface contamination and then sanitized for 30 min in sodium hypochlorite solution (0.07%, v/v). Afterwards, the seeds were drained, washed with water until they reached neutral pH, and then soaked for 5 h in water, in darkness and at room temperature. After pouring off the soaking water, the imbibed seeds were placed in germination trays and germinated in darkness in a culture room with controlled temperature (25 °C) and water atomized every 12 h. Sprouts were collected in second, fourth and sixth days of germination, freeze-dried straight after collection, and ground using an electric grinder. Samples were stored at −20 °C until further analyses. The seeds and sprout samples were refluxed for 30 min with 30 mL methanol–water mixture, and twice for 15 min with 20 mL of the same solvent. The combined extracts were concentrated under reduced pressure and lyophilized.
Thus it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the instant Application to prepare a broccoli extract with anti-inflammatory compounds by employing the method previously used in Ghura with Arabidopsis thaliana, a plant in the same family as Broccoli, which is known to possess antiinfammatory components. The method by which the claimed broccoli extract is obtained appears to be a general solvent extraction preceded by an abiotic stimulus, which can be anything including light and dark, which would include normal plant growing conditions.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton.").
The adjustment of particular conventional working conditions is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. It is well settled that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also Merck & Co. V. Biocraft Labs. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1847-48 (Fed. Cir. 1989). Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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) (Claimed process which was performed at a temperature between 40oC and 80oC and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100oC and an acid concentration of 10%); See also, Peterson, 315 F.3d at 1330, 65 USPQ 2d at 1382 ("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) (Claimed elastomeric polyurethanes which fell within the broad scope of the references where held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ 2d 1843 (Fed. Cir.), cert denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ 2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ 2d 1362 (Fed. Cir. 1997).
Applicant’s invention appears predicated on an unexpected result- an unpredictable phenomenon , highly dependent upon specific conditions (e.g., those disclosed in paragraphs [0075-0077]), proportions and/or amounts of particular ingredients. Accordingly, the instant claims, where no unexpected results are observed, would have been obvious to one of ordinary skill having the above cited references before him/her.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL G FIEBIG whose telephone number is (571)270-5366. The examiner can normally be reached M-F 8-4.
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/RUSSELL G FIEBIG/ Examiner, Art Unit 1655
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