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 .
The amendment filed 7/22/2025 has been entered. Claims 1-25 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
Claim Objections
Claims 1, 7, 8, 9, 10, 11, 12, to because of the following informalities: Claim(s) 1, 7, 8, 9, 10, 11, 12, recite a “lemna extract composition” and should properly read a “Lemna extract composition”. Appropriate correction is required.
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.
Claim 3, 5, 6, 18, and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 and 5 recites a powder formulated by “getting rid of the water”. The instant Specification provides support for, e.g. evaporation of water (Page 8, Line 30-Page 9, Line 1) but does not provide details as to which methods are encompassed by “getting rid of the water”. For example, “getting rid of the water” includes removal of water by centrifugation or filtration of solids, but the instant specification does not teach these methods. Therefore, applicant is not considered to have support for “getting rid of the water” to form a powder.
Claims 6 and 20 depend from Claim 5 and are therefore also rejected. Claim 18 depends from Claim 3 and is therefore also rejected.
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 3, 5, 6, 18, and 20 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 3 recites the composition of Claim 2, formulated as a powder by “getting rid of the water”. It is unclear whether the composition of Claim 3 is identical to the composition of Claim 2 (i.e. 2-7.5% water by weight), or whether “the water” of Claim 3 is the water content of Claim 2 (i.e. the composition of Claim 3 is the composition of Claim 2, with water removed).
Claim 5 recites the composition of Claim 4, formulated as a powder by “getting rid of the water”. It is unclear whether the composition of Claim 3 is identical to the composition of Claim 2 (i.e. 45-55.4% water by weight), or whether “the water” of Claim 5 is the water content of Claim 4 (i.e. the composition of Claim 3 is the composition of Claim 2, with water removed).
Claim 5 additionally recites the composition of Claim 4, formulated as a “powder”. It is unclear how the composition of Claim 4, which requires 45-55.4% water, can be formulated as a powder.
Claims 6 and 20 depend from Claim 5 and are therefore also rejected. Claim 18 depends from Claim 3 and is therefore also rejected.
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.
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 1-3, 7- 9, 13-18, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Elituv (US 2015/0216187), taken with evidentiary reference of Xu (“Duckweed (Lemnaceae) for potentially nutritious human food: A review”), DOI:10.1080/87559129.2021.2012800, December 2021)and Vegetronix (https://vegetronix.com/articles/Duckweed).
Regarding Claims 1 and 2, Elituv teaches duckweed, such as a Lemna [0043] species, which has undergone an extraction process [0037]. Note that since Elituv teaches extraction processes, Elituv is considered to teach “extracts” as claimed.
Elituv does not specifically teach the macronutrient content as claimed.
Xu teaches that a Lemna species may have, e.g. 17.5% protein, at least 29.7% carbohydrates (note that fiber is a carbohydrate), and 3.4% fat (Page 5, Table 1, “L. minor”). Note that the macronutrient profiles of Xu are interpreted to mean dry basis, since duckweed is known to contain 92-94% water in its fresh state (see evidentiary reference of Vegetronix, Page 2, “Nutritional Value of Duckweed”).
Elituv additionally teaches that the duckweed may be used at any water content, ranging from fresh to essentially dried [0053].
Therefore, it would have been obvious to have dried duckweed to any moisture content. Note that 1.25 kg of fresh duckweed may be dried to yield 100 grams of essentially dry duckweed (assuming an initial moisture content of 92% and removing 97.7% of water), containing 4% water, 16.8% protein, 28.5% fiber (or carbohydrate), and 3.3% fat. This composition lies within the claimed ranges.
Regarding Claim 3, Elituv teaches a powder of duckweed [0036]. Note that one of ordinary skill would formulate a powder by removing water from a non-powdered, water-containing composition, and therefore the limitation of “by getting rid of the water” is rendered obvious.
Regarding Claims 7-9, Elituv teaches adding the duckweed to dough which is used for food [0102] such as bread [0107]. The duckweed modulates characteristics such as color [0020].
Regarding Claim 13 and 14, Elituv teaches the addition of duckweed to foods as claimed but does not discuss decreasing or enhancing characteristics as claimed. However, given that the prior art is similar to the claimed product, with a similar intended use, composition, and processing, there is an expectation that the product of the prior art have the property of decreasing or enhancing characteristics as claimed.
Regarding Claims 15-18, Elituv teaches that the duckweed extract is used in e.g. bread [0107], which is a food product. Additionally, note that the product of Elituv is interpreted to yield an “enhanced” food product, as claimed, given that Elituv teaches a duckweed extract added to food as claimed.
Regarding Claims 24 and 25, Elituv teaches the addition of flavoring agents appropriate for food ingredients [0086], which encompasses aromatic compounds such as vanillin.
Claims 4-6, 10-12, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Elituv taken with evidentiary reference of Xu and Vegetronix as applied to Claim 1, above, in view of Xu and Fasakin (“Nutrient quality of leaf protein concentrates produced from water fern (Azolla Africana Desv) and duckweed (Spirodela polyrrhiza L. Schleiden)”, DOI: 10.1016/S0960-8524(98)00123-0, August 1999).
Regarding Claim 4, 10, and 19, modified Elituv teaches a duckweed for use in human food but does not discuss the nutritional composition as claimed.
Xu teaches that duckweed is suitable as a human food, with protein, carbohydrates, and other nutrients that are required for humans (Abstract). Xu additionally teaches that components of duckweed, e.g. a protein or phytochemicals fractions, are suitable as functional ingredients in human food (Page 6, Paragraph 1).
Xu does not specifically teach the macronutrient contents as claimed.
Fasakin teaches that a fraction of duckweed after protein removal contains, e.g. protein, carbohydrates (fiber + NFE), and lipids in a relative ratio of 1:100:3 (Page 2, Table 2, “Residual Juice Extract”). Note that a composition comprising 0.8% protein, 71.1% carbohydrates (fiber + NFE), and 1.8% fat/lipids has a relative ratio of 1.1:100:3.
Additionally, note that the composition of instant Claim 4 additionally has protein, carbohydrates, and lipids in a relative ratio of 1.8:100:3 (0.9% protein, 50% carbohydrates, 1.25% fat/lipids).
It would have been obvious for one of ordinary skill in the art before the filing date of the claimed invention to utilize any component of duckweed, including a fraction remaining after protein extraction, in a human food as taught by Xu. Additionally, since Fasakin teaches that the residual juice of a duckweed plant contains the nutrient profiles as claimed, it would have been obvious to one of ordinary skill to utilize a duckweed component with the nutrient profiles as claimed. One would have been motivated to make such a modification since Xu teaches that different components of duckweed (that is, components with different nutrient profiles) are suitable for use in foods, and one of ordinary skill would understand that ingredients with different nutrient profiles are suitable for different food uses. Additionally, one of ordinary skill would have been motivated to utilize the entirety of the duckweed plant to prevent waste.
Additionally, note that it would have been obvious to have utilized the remaining fraction after protein extraction for any duckweed genus, including a Lemna duckweed, in a human food as taught by Xu. Additionally, since Fasakin teaches that the residual material of a duckweed plant contains the nutrient profiles as claimed, it would have been obvious to one of ordinary skill to utilize a duckweed component with the nutrient profiles as claimed.
Note that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I. No difference is expected between a composition comprising a protein:carbohydrate ratio of 1.1:100, as disclosed by Fasakin, and a composition comprising 1.8:100 as taught in the Claim. The Applicant’s claimed range is thus obvious over the prior art range.
Additionally, Fasakin does not address the amount of water in the duckweed fraction. However, it would have been obvious to one of ordinary skill to dilute or concentrate a liquid extract as required for use in food, either to impart additional moisture to the extract (and thus the final food product) or to concentrate the effects of the extract. Note that 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. See MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the method disclosed by the prior art by normal optimization procedures known in the art.
Regarding Claims 5 and 6, modified Xu does not address the amount of water in the duckweed fraction. However, it would have been obvious to one of ordinary skill to dilute or concentrate a liquid extract as required for use in food, either to impart additional moisture to the extract (and thus the final food product) or to reduce the volume and concentrate the effects of the extract. Note that 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. See MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the method disclosed by the prior art by normal optimization procedures known in the art.
Regarding Claims 11, 12, and 22, Xu teaches the addition of duckweed to foods such as snacks and nutrition bars (Page 10, Paragraph 1) to modulate the protein content.
Regarding Claims 20 and 21, Xu teaches the addition of duckweed to foods. Additionally, note that the product of Xu is interpreted to yield an “enhanced” food product, as claimed, given that Xu teaches a duckweed extract added to food as claimed.
Regarding Claim 23, Xu teaches the addition of duckweed to foods to modulate the protein content, which is interpreted to meet the limitation of a “characteristic beneficially modulated by the duckweed extract composition”.
Response to Arguments
Applicant’s arguments filed 7/22/025 with respect to claim(s) 1-25 have been fully considered but are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues that the present invention is directed to the Lemna genus of duckweed.
This argument is not convincing. Elituv teaches the use of the Lemna genus of duckweed (see above in regards to Claim 1). Xu additionally discusses the nutritional content of Lemna in regards to food applications.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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