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 applicant’s preliminary amendments filed February 18, 2025.
Claims 1-19 are pending. Claims 1-18 have been amended. Claim 19 is new.
Claim Objections
Claim 17 objected to because of the following informalities: claim 17 should being with a capital letter, “The”. 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.
Claims 1-19 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. Claims 1 and 15 recite a variant and then a list (i)-(iv) but do not indicate the list (i)-(iv) is the choices of the variant. The examiner suggests applicant recite “variant selected from the group of” for clarity. Claims 2-14,16,18 and 19 are also rejected for inheriting the same deficiency. Claim 18, was interpreted to depend from claim 1.
Claim 17 is 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 17 is written as an independent claim which does not depend from another claim. It recites “the batch” which lacks antecedent basis since no batch is listed. For examination purposes the examiner interpreted claim 17 to depend from claim 1.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “prolonged period of time” and the claim also recites “for example 0.1 to 5 days, preferably with agitation” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is unclear if the “for example 0.1 to 5 days” and “preferably with agitation” are required or just preferred optional embodiments. The term “prolonged” in claim 17 is a relative term which renders the claim indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1,2,5-8,10,11 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chung (KR 102266611).
Chung teaches compositions comprising a vegetable tannin extracted from green tea using aqueous ethanol solution to obtain an extract powder which is dissolved in water to provide a composition applied to tanned leather, which meets the claimed limitation of incubating for a prolonged period of time (page 3-4;example 1, example 3). Chung teaches the combining 1 kg green tea with 3L of a mixture of water to ethanol and 1L ethyl acetate wherein the water to ethanol ratio is 3:7 and the extraction is performed at 23°C wherein the extract is dried to a solid powder (example 1). The limitation of tanning agent or retanning agent is simply intended use, the claim is to a composition a vegetable tannin of green tea which is taught by Chung. Further Chung teaches applying this tannin extract to previously tanned leather and the same tannin applied to tanned leather meets the claimed limitation of retanning as the tannin extract inherently provides the retanning properties to leather. Accordingly, the teachings of Chung are sufficient to anticipate the material limitations of the instant claims.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chung (KR 102266611) as evidenced by Choi (KR 20110041815).
Chung is relied upon as set forth above.
Chung does not specify phenolic tanning agents.
Choi provides evidence that the tannins extracted from green tea are polyphenols and therefore meet the claimed limitation of phenolic compound tanning agents (page 3). Accordingly the vegetable tanning extracted by Chung are polyphenol and have tanning properties.
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.
Claims 1-3,5-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chung (KR 102266611).
Chung is relied upon as set forth above.
Chung further teaches green tea tannins are conventionally extracted by supercritical fluid extraction, alcohol extraction and hot water extraction to produce a liquid concentrate (page 4, paragraph 3).
Chung does not specify all the claimed limitations in a single example but one of ordinary skill in the art at the time the invention was made could arrive at the claimed invention by selecting from the teachings of Chung. Chung does not teach the claimed parts and ratios of green tea, water and polar solvent of claims 13 and 14.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Chung by obtaining the green tea extract by using supercritical fluid extraction, hot water extraction as Chung teaches these methods are known in the art as effective means for extracting tanning from green tea. Using known methods which achieve the same extraction of tannin is obvious to achieve the predictable result of obtaining tannins from green tea. Regarding the parts of green tea, water and ethanol (polar solvent) and ratios of these components, it would have been obvious to select these values to arrive at the best possible mixture for maximal extraction of tannin from green tea leaves and seeds. Chung is not limited to the amounts used in the examples and more broadly discloses extracting tannin from green tea with water and alcohol solutions. One of ordinary skill in the art could determine the correct amounts of green tea, water and ethanol to maximize extraction of tannin through routine experimentation as the solvent mixture directly impacts the degree of tannin removal from the green tea.
Regarding adding the tannin extract of the green tea in liquid or solid form to the composition, Chung teaches the extract is a liquid which is dried into a powder and then dissolved in water to form a liquid again for use in the treatment for leather. Using the green tea extract in the form of a liquid or powder to add to the treatment composition is obvious as it is dried into a powder but then recombined with water to make a liquid. If the powder is mixed with water first and then combined with the rest of the components of the compositions, it is added in liquid form.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chung (KR 102266611) as evidenced by Choi (KR 20110041815).
Chung is relied upon as set forth above.
Chung does not specify phenolic tanning agents.
Choi provides evidence that the tannins extracted from green tea are polyphenols and therefore meet the claimed limitation of phenolic compound tanning agents (page 3). Accordingly the vegetable tanning extracted by Chung are polyphenol and have tanning properties.
It would have been obvious to one of ordinary skill in the art at the time the invention was made that the tannin extracts of Chung are phenolic tanning agents as Choi provides evidence that tannin compounds extracted from green tea leaves and seeds are polyphenols.
Claims 1-3,5-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lamacchi (IT 1181473) in view of Chung (KR 102266611).
Lamacchi teaches tanning and retanning hides using vegetable tannin substances (abstract).
Lamacchi does not teach the methods of preparing the extracts.
Chung is relied upon as set forth above. Chung further teaches green tea tannins are conventionally extracted by supercritical fluid extraction, alcohol extraction and hot water extraction to produce a liquid concentrate (page 4, paragraph 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Lamacchi by using the vegetable tannins prepared in Chung as Lamacchi teaches the effectiveness of using vegetable tannins in tanning and retanning steps and Chung teaches the preparation of vegetable tannin from green tea which are effective in increasing glossiness of leather, sterilization and cleaning performance. Using a vegetable tannin effective in leather treatment in known tanning and re-tanning steps inviting the inclusion of vegetable tannins is obvious to one of ordinary skill in the art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lamacchi (IT 1181473) in view of Chung (KR 102266611) as evidenced by Choi (KR 20110041815).
Lamacchi and Chung are relied upon as set forth above.
Lamacchi and Chung do not specify phenolic tanning agents.
Choi provides evidence that the tannins extracted from green tea are polyphenols and therefore meet the claimed limitation of phenolic compound tanning agents (page 3). Accordingly the vegetable tanning extracted by Chung are polyphenol and have tanning properties.
It would have been obvious to one of ordinary skill in the art at the time the invention was made that the tannin extracts of Chung are phenolic tanning agents as Choi provides evidence that tannin compounds extracted from green tea leaves and seeds are polyphenols.
Claims 1-3 and 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chung (KR 102266611) in view of Hashizume (JP 20050160348) as evidenced by Wulandari (Separation of Tannins and Caffeine in Black Tea Using Modified Microwave-Assisted Extraction and High-Performance Liquid Chromatography. International Journal of Technology 15(6) 2024-2037 (2024)).
Chung is relied upon as set forth above.
Chung does not teach carbon dioxide supercritical fluids.
Hashizume teaches that tannins such as catechins are effectively extracted from green tea by using supercritical carbon dioxide mixed with ethanol and water (abstract). Wulandari provides evidence that catechins are tannins (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Chung by extracting the tannins from green tea using supercritical carbon dioxide mixed with ethanol (polar solvent) as Hashizuma teaches this is an effective way to extract catechins (a tannin) from green tea and Chung invites the inclusion of supercritical fluid extraction of tannins from green tea.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chung (KR 102266611) in view of Hashizume (JP 20050160348) as evidenced by Wulandari (Separation of Tannins and Caffeine in Black Tea Using Modified Microwave-Assisted Extraction and High-Performance Liquid Chromatography. International Journal of Technology 15(6) 2024-2037 (2024)) and as evidenced by Choi (KR 20110041815).
Chung, Hashizume and Wulandari are relied upon as set forth above.
Chung, Hashizume and Wulandari do not specify phenolic tanning agents.
Choi provides evidence that the tannins extracted from green tea are polyphenols and therefore meet the claimed limitation of phenolic compound tanning agents (page 3). Accordingly the vegetable tanning extracted by Chung are polyphenol and have tanning properties.
It would have been obvious to one of ordinary skill in the art at the time the invention was made that the tannin extracts of Chung are phenolic tanning agents as Choi provides evidence that tannin compounds extracted from green tea leaves and seeds are polyphenols.
Claims 1-3 and 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lamacchi (IT 1181473) in view of Chung (KR 102266611) and further in view of Hashizume (JP 20050160348) as evidenced by Wulandari (Separation of Tannins and Caffeine in Black Tea Using Modified Microwave-Assisted Extraction and High-Performance Liquid Chromatography. International Journal of Technology 15(6) 2024-2037 (2024)).
Lamacchi and Chung are relied upon as set forth above.
Lamacchi and Chung do not teach carbon dioxide supercritical fluids.
Hashizume teaches that tannins such as catechins are effectively extracted from green tea by using supercritical carbon dioxide mixed with ethanol and water (abstract). Wulandari provides evidence that catechins are tannins (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Lamacchi and Chung by extracting the tannins from green tea using supercritical carbon dioxide mixed with ethanol (polar solvent) as Hashizuma teaches this is an effective way to extract catechins (a tannin) from green tea and Chung invites the inclusion of supercritical fluid extraction of tannins from green tea.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lamacchi (IT 1181473) in view of Chung (KR 102266611) and further in view of Hashizume (JP 20050160348) as evidenced by Wulandari (Separation of Tannins and Caffeine in Black Tea Using Modified Microwave-Assisted Extraction and High-Performance Liquid Chromatography. International Journal of Technology 15(6) 2024-2037 (2024)) and as evidenced by Choi (KR 20110041815).
Lamacchi, Chung, Hashizume and Wulandari are relied upon as set forth above.
Lamacchi, Chung, Hashizume and Wulandari do not specify phenolic tanning agents.
Choi provides evidence that the tannins extracted from green tea are polyphenols and therefore meet the claimed limitation of phenolic compound tanning agents (page 3). Accordingly the vegetable tanning extracted by Chung are polyphenol and have tanning properties.
It would have been obvious to one of ordinary skill in the art at the time the invention was made that the tannin extracts of Chung are phenolic tanning agents as Choi provides evidence that tannin compounds extracted from green tea leaves and seeds are polyphenols.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
