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 Status
Claims 1-16 are pending.
Claims 1-4, and 9-16 are withdrawn.
Claims 5-8 are examined on the merits herein.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in KR on 24-Jul-2024. It is noted, however, that applicant has not filed a certified copy of the KR10-2024-0097916 application as required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 5-8 in the reply filed on 02-Jul-2024 is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06-Sep-2024 has been considered by the examiner.
Abstract
Aluns japonica should be “Alnus japonica” in the abstract.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
Page 12, “Hirstenone” should be “Hirsutenone”.
Appropriate correction is required.
Claim Objections
Claim 6-8 objected to because of the following informalities:
The structure of chemical formula 1, chemical formula 2, and chemical formula 3 of Claim 6 is blurry, and clear chemical structures are required.
Claim 6 objected to because “periodontal diseases periodontal diseases” should be “periodontal diseases”.
Claim 7 objected to because “periodontal diseases periodontal diseases” should be “periodontal diseases”.
Claim 8 objected to because “periodontal diseases periodontal diseases” should be “periodontal diseases”.
Appropriate correction is required.
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.
Claim 6 recites “the Alnus japonica plant extract comprises any one of the following compounds”. However, claim 5, which claim 6 depends from, already recites “comprising an extract of a plant of genus Ulmus as an active ingredient”. Because claim 6 uses the transitional phrase “comprising” rather than specifying that the plant extract of claim 5 is further limited, the relationship between the components between these components is ambiguous. It is unclear whether the Alnus japonica extract of compounds of chemical formula 1, 2, and 3 represents a further limitation of the Ulmus extract in claim 5, or if they are entire separate, additional plant extract derived compounds added in addition to those already recited in claim 5.
Claim 6 recites the limitation "the Alnus japonica plant extract". There is insufficient antecedent basis for this limitation in the claim. Claim 6, which depends from Claim 5, does not recite a Alnus japonica plant extract.
Claim 7 recites the limitation “the Chemical Formulas 2 and 3”. There is insufficient antecedent basis for this limitation in the claim. Claim 6, which claim 7 depend, recites only the categories of “compounds” and “chemical formula”.
Claim 8, which depends from claim 7, lacks antecedent basis regarding the limitation “the Chemical Formulas 2 and 3”.
Claim Rejections - 35 USC § 102
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.
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US006045800A, Patent: 04-Apr-2000, Filed: 26-Feb-1998).
In regards to claim 5, Kim teaches in Example 1-12 a composition comprising of Ulmus cortex extract at 5 wt% (Col 11-12, Table 6). Kim also teaches that Ulmus cortex has excellent effects on inhibiting the production of the periodontal disease inducing agents and inhibiting the activity of the periodontal tissue decomposing enzyme for periodontal tissues (Col 3, line 14-21). The intended use as a food composition is not given patentable weight.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 5 above, and further in view of Lee et al. (US20100190862A1, Published: 29-Jul-2010, Filed: 19-May-2009).
Kim teaches the periodontal disease prevention and alleviation composition comprising of Ulmus cortex extract as an active ingredient applied to claim 5 discussed above.
In regards to Claim 6-8, Kim teaches the periodontal disease prevention and alleviation composition comprising of Ulmus cortex extract (Col 11-12, Table 6 and Col 3, line 14-21).
However, Kim does not teach an Alnus japonica plant extract, food composition, or the compounds of chemical formulas 1, 2, or 3 of claim 6. Kim does not teach that the compounds of chemical formulas 2 and 3 were obtained through enzymatic digestion of claim 7. Kim does not teach that the composition further comprises elm extract of claim 8. For this reason, Lee is added.
Lee teaches an extract of Alnus japonica (Page 5, paragraphs 92 and 94), and the resultant Oregonin (Chemical formula 1) was then enzymatically digested using Pectinex 5XL, Funguamyl AX, and Pectinex AFP L4 to create Hirsutanonol (Chemical formula 2) and Hirsutenone (Chemical formula 3) (Page 6, paragraph 102). Further, Lee teaches that the composition can be used as a food composition (Page 3, paragraph 42).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the periodontal composition of Kim with the addition of the Alnus japonica extract comprising of Oregonin, Hirsutanonol, and Hirsutenone of Lee for use as a food composition. Both Kim and Lee are directed to plant extract based active ingredients, and a person having ordinary skill in the art would have recognized the Alnus japonica of Lee as a known food compatible botanical active ingredient. Further, Lee teaches that the extract compounds have anti-inflammatory effect (Paragraph 8) and are suitable to formulate into a food composition. Kim’s Ulmus cortex extract continues to provide the composition’s periodontal efficacy, while Lee’s Alnus japonica extract independently contributes additional anti-inflammatory activity as an additional active ingredient in the food product, representing a combination of prior art elements according to their established functions to yield predictable results with a reasonable expectation of success. For the foregoing reasons, claims 5-8 are rendered obvious by the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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