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 .
This office action is in response to preliminary amendment filed on 4/28/25. Claims 29-32, ,38-41 are amended. Claims 6-11,18-28,33-37,42-76 are cancelled and claim 77 is added. Claims 1-5, 12-17,29-32,38-41 and 77 are pending.
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.
Claims 1,3-5, 12-17 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.
In claim 1, the limitation “ a total antioxidant capacity of at least 1500 nM/ul Trolox Equivalent” is vague and indefinite because it’s not clear what is intended. The claim recite the alternative of “ one or more polyphenols or a total antioxidant”. If the polyphenol is not included, it’s not clear what the measurement of antioxidant indicates because none of the ingredients of fructose, glucose, organic acid and water provides antioxidant capacity.
Claim 2 has the same problem as claim 1. Additionally, the limitation of “at least that of natural bee-made clover honey” is vague and indefinite because the total antioxidant of natural bee-made clover honey is not defined. Thus, it’s unclear what amount would be considered as “ at least that of natural bee-made clover honey”.
Claims 3-4 have the same problem as claim 2.
Claim 5 has the same problem as claim 1.
In claim 12, the recitation of “ the non-bee made honey composition” does not have proper antecedent basis because claim 1 recites “ formulation”, not composition.
Claims 13-17 have the same problem as claim 12.
In claim 16, the limitation “ mineral powder” in parentheses is vague and indefinite because it’s unclear what is intended by the parentheses. Feature in parentheses is not considered part of the claim.
Claim 17 has the same problem as claim 16.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5,29-32, 38-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over An et al “ Efficiency of Polyphenol Extraction from Artificial Honey Using C18 Cartridges and Amberlite XAD-2 Resin: A Comparative study” in view of Kannar ( 20220132896) , Stephens ( WO 2010/082844), Carlos et al. “ Role of honey polyphenols in health” and Eisele ( 11744272)
For claim 1, An discloses an artificial honey comprising 38.5% fructose, 31% glucose and water . Phenolic acids and flavornoids are added to achieve 50microgram/mL of each polyphenol standard. The polyphenols added include benzoic, dihydroxybenzoic, gallic, trans-cinnamic and vanillic acid. The flavonoids include naringenin, naringin, quercetin and rutin. Taking quercetin, naringenin as examples of standards ( 50 microgram/mL of quercetin and naringenin equals to .005%). The percent of 2 standards is .01%. The total polyphenol would be greater than .01%. For claims 38-40, the amount of quercetin is .005% which fall within the range of claims 38-39 and overlaps with claim 40. ( see page 2 section 2)
An does not disclose measuring the polyphenols in Catechin equivalents or a total antioxidant capacity, the inclusion of organic acid as in claim 1, the antioxidant capacity as in claims 2-5, the addition of proanthocyanidins and amounts as in claims 29-32, the gluconic organic acid and amount as in claim 41.
Stephens discloses methods of manipulating plants to product honey from the plants with tailored and/or elevated levels of phenolic compounds. Stephens discloses the honey has enhanced activity due to phytochemicals found in particular honey. Antioxidant content was found to be proportional to phenolic content. Stephens discloses that it’s possible to measure a wide range of factors in honey related to honey properties and value. The healing effects or potency are in part thought to be due to the phenolic compounds. The antioxidant activity is determined by the ABTS assay expressed as Trolox Equivalent antioxidant capacity. ( see example 3, pages 3,6-7)
Kannar discloses to measure polyphenol as catechin equivalent. ( see paragraph 0032)
Carlos discusses the role of honey polyphenols in health. Carlos teaches that honey is mainly composed of water and sugar with the remainder being substances such as amino acids, enzymes, flavonoids, phenolic acids, proanthocyanidin, ascorbic acid, citric acid, gluconic acid et.. Polyphenols, especially flavonoids and phenolic acids are known to play an important role as antioxidant. Honey has benefits and therapeutic properties due to the presence of polyphenols. ( see pages 141-144)
Eisele discloses honey compositions. Eisele teaches gluconic acid, other acids are present in honey and honey is mildly acidic having a pH about 3.9 such as from 3.1-6.1. ( see col. 3 lines 22-35)
Claim 1 recites the alternative of one or more polyphenol or antioxidant capacity. An discloses one or more polyphenol. It would have been obvious to one of ordinary skill in the art to use known alternative measuring technique as shown in Kannar to determine the polyphenol content. The claimed amount of .4mM catechin equivalent is equal to at least .0116% w/w. The amount disclosed in An fall within the claimed range. The measurement of polyphenol by its antioxidant capacity is also known as shown in Stephens. It would also have been for one of ordinary skill in the art to measure the antioxidant capacity to determine the functional capacity of the honey as taught in Stephens.
For claim 1, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to add organic acid to the artificial honey disclosed in An because organic acid is known to be present in natural honey as taught in Carlos and Eisele. One skilled in the art would have been motivated to add organic acids to make the artificial honey to resemble natural honey. Paragraphs 0049-0050 of the instant specification discloses organic acid is added and that the final pH of the honey is in the range of 3-6. Eisele discloses that natural honey has a pH of from 3.1-6.1. It would have been obvious to one of ordinary skill in the art to determine amounts of organic acid to add to achieve such pH so that the artificial honey would be closed to natural honey. When the pH is achieved, the amount would be within the claimed range.
For claims 2-5, it would have been obvious to one of ordinary skill in the art to determine the antioxidant capacity of the artificial honey to be comparable or greater to a desirable natural honey to ensure that the artificial honey has the same function or greater than natural honey. Such measurement is known in the art as shown in Stephens.
For claim 41, it would have been obvious to add gluconic acid because it’s an acid known to be present in natural honey as shown in Eisele and Carlos. For claims 29-32, it would have been obvious to add proanthocyanidins to make the artificial honey to resemble natural honey because Carlos shows that proanthocyanidins are present in natural honey. It would have been obvious to determine the amount depending on the extent of antioxidant effect desired. It would have been obvious to one of ordinary skill in the art to make the artificial honey to resemble natural honey in all properties to obtain the most optimum product.
Claim(s) 12-17,77 is/are rejected under 35 U.S.C. 103 as being unpatentable over An in view of Stephens , Kannar, Carlos and Eisele as applied to claims 1-5, 29-32,38-41,77 above, and further in view of Hans ( KR 1021848823).
An does not disclose adding sea buckthorn extract as in claims 12-17 and additional extract as in claim 14.
Han discloses an antioxidant composition comprising sea buckthorn extract. Han teaches that sea buckthorn extract contains vitamins, flavonoids, essential amino acids and fatty acids thereby exhibiting a high antioxidant and anti-inflammatory effect, a female disease prevent effect and diet effect. ( see page 4)
It would have been obvious to one of ordinary skill in the art to add sea buckthorn extract as disclosed in Han to the artificial honey in An to further enhance the nutritive value of the artificial honey. Han teaches that buckthorn extract has high antioxidant and anti-inflammatory effect. An artificial honey will not have all the components of natural honey and thus the benefits of natural honey. Thus, one of ordinary skill in the art would have been motivated to add ingredient that is known to enhance the composition to resemble its natural counterpart. It would have been obvious to one of skilled in the art to determine the amount depending on the extent of health effect desired. Such parameter can be determined through routine experimentation. It would have been obvious to one of ordinary skill in the art to add other extract including clover, jasmine etc.. depending on the flavoring desired. Such addition would have been an obvious matter of choice.
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 1-5,12-17,29-32,38-41, 77 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 145-165 of copending Application No. 19/012569 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to non-bee made honey comprising similar ingredients. The co-pending does not recite antioxidant capacity as in claims 1-5 and the extract as in claim 14. However, the difference is not patentably distinct as the polyphenol of the copending case is at least .4 catechin equivalent as in the instant application. The antioxidant capacity would be expected to be the same. It would have been obvious to add different extract as an obvious matter of taste preference.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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November 29, 2025
/LIEN T TRAN/Primary Examiner, Art Unit 1793