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 .
DETAILED ACTION
Status of the application
2. Claim 1 is pending in this office action.
Claim 1 is rejected.
Obviousness Double Patenting (ODP)
3. The non-statutory 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 time wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may signa terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claim 1 of the current application are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over at least independent claim 1 of USPN 11638440 (prior Application No. 16/489352) and also being unpatentable over at least independent claim 1 of USPN 12256764 (prior Application No. 18/129804).
Although the conflicting independent claim 1 of the present application is not identical to the at least independent claim 1 of USPN 11638440 and also being unpatentable over at least independent claim 1 of USPN 12256764 they are not patentably distinct. The reason is, they share the same invention of powder composition for human consumption.
Therefore, a prima facie case of obviousness exists between the conflicting independent claim 1 of the present application is not identical to the independent claim 1 of USPN 11638440 and also unpatentable over at least independent claim 1 of USPN 12256744 (Prior Application No. 18/129804). 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)).
As discussed above, therefore, claim 1 of the present application are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over at least independent claim 1 of USPN 11638440 (prior Application No. 16/489352) and unpatentable over at least independent claim 1 of USPN 12256764 (prior Application No. 18/129804).
Claim Rejections - 35 USC § 102
5. 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.
6. The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
7. Claim(s) 1 is rejected under 35 U.S.C. 102(a) (1) as being
anticipated by Wurzer et al. (US 2014/0271940).
8. Regarding claim 1, Wurzer et al. discloses a nutritional composition comprising a terpenoid extract (at least in [0011], [0076]) to be used as neutraceuticals (at least in [0010]) and as food product (at least in [0020], [0042], [0046]) and can combine e.g. minerals (at least in [0098], [0099]), flavorings (at least in [0076], [0098]), glycerin (at least in [0076]), terpene/terpenoid compounds (at least in [0076]), amino acids (at least in [0101], [0102]) which anticipates at least four of the claimed components of claim 1.
Conclusion
9. One relevant prior art by Innocenzi et al. (US 2012/0027897 A1) is pertinent to the claim 1, however, it discloses sterol which is closely related to biochemically to terpenes (at least in [0360] : emphasis, so not identical to claimed terpene) and the nutritional composition is the specific nutritional composition which is equivalent to one serving of fruits or vegetables rather than broadly claimed nutritional composition (At least in Abstract).
10. Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner's supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1000.
/BHASKAR MUKHOPADHYAY/
Examiner, Art Unit 1792
Prosecution Insights