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 .
Response to Amendment
Those rejections not repeated in this Office Action have been withdrawn.
Claims 28, 31, 33, 36, 38-39, 43-48, 50-55 and 57-59 are currently pending.
Claim 28 is withdrawn from consideration.
Claims 31, 33, 36, 38-39, 43-48, 50-55 and 57-59 are 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 31, 33, 36, 38, 39, 43, 47, 48, 50-55, 58 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Powers (US 20090053388) in view of Chapman (US 6976493) and Popplewell (US 20040180068) and in further view of Boyd (US 20080014224) or Shefer (US 6063365). Mixon (Natural Scent Extraction) has been relied on as evidence.
Regarding claim 31, it is noted that the claim is directed to a product, and not the method of making the product. In this regard, it is noted that the claimed product comprises a matrix comprising a functional compound that comprises at least one flavor, a solvent, a viscosity regulator and a film former, wherein the film former is less than 2% of the matrix and wherein the film former consists essentially of ethyl cellulose and the matrix has been dosed on and absorbed into an absorbent substrate that comprises paper or textile, wherein the matrix forms is a permeable film on the substrate.
Regarding claim 31, Powers teaches a functional compound comprising mass product, the product comprising a matrix comprising: a functional compound comprising at least one flavor (see at least paragraph 60 - flavorant), a solvent (paragraph 63), a viscosity regulator (see paragraph 56 – viscosity modification) and ethyl cellulose (see paragraph 48 – ethyl cellulose; page 11-12, claim 4) and wherein the matrix is dosed on an absorbent substrate (see paragraph 53 - “deposited into a containment device, which is sufficiently porous…”; see also paragraph 68 - where figures 4-5b teach an absorbing containment device), which can be porous paper or textiles (paragraph 71) and applied to any substrate such as packaging material which can be perforated (paragraph 73 – which also suggests top and bottom sheets being perforated). Powers further teaches porous sachets made of any of a variety of porous materials having the flavor emitting composition filled therein (see paragraph 78-79) and paragraph 60 teaches the flavorant composition deposited directly onto the carrying surface.
Regarding the limitation of “a film former, wherein the film former is less than 2% of the matrix and wherein the film former consisting of ethyl cellulose and wherein the ethyl cellulose is the only film former of the matrix,” Powers teaches that preferred representative stabilizers include hydrocolloids such as gels and gums, cellulose ethers, and sorbents (see paragraph 48). Claims 3-4 on page 11 of Powers teaches that ethyl cellulose can be selected from the group of stabilizers or can be used in combination and therefore suggests a film former that consists of ethyl cellulose.
However, claim 31 differs from Powers in specifically reciting that the film former is less than 2% of the matrix and the film former consists of ethyl cellulose film former and is the only film former of the matrix. Claim 50 differs in specifically reciting that, “the film former is less 1% of the matrix.”
However, Chapman also teaches coatings applied to substrates and which coatings can comprise film forming agents used at 0.5 percent, 1 percent and 2 percent based on the total formulation (i.e. the matrix) (see column 19, lines 1-5) and where the film forming material can be only ethyl cellulose (see column 16, lines 30-31, 36-37) used with an organic solvent such as ethanol (column 17, line 3-6). Chapman teaches that the film forming agent can be used to suspend or disperse ingredients therein, such as flavoring agents (abstract; column 18, lines 21-44; see also column 2, lines 45-49) and where the solvent can dissolve the film former (see column 16, line 60 to column 17, line 21) while also dissolving other functional ingredients with said solvent (see column 18, lines 45-54). Additionally, Popplewell further evidences a matrix that can comprise ethyl cellulose at less than 2% by weight of a matrix (see the abstract, paragraph 8) that also comprise a flavor compound (see paragraph 8) and where the ethyl cellulose and flavor compound are dissolved in an ethanol solvent (paragraph 42 - “ethyl alcohol”; organic flavor chemicals such as essential oils (see paragraph 25) are part and dissolvable in the continuous phase) for providing homogeneity (see paragraph 44 and 95). The matrix can specifically use ethyl cellulose at 0.5-1.5% (paragraph 41) and where the ethyl cellulose can viscosity and body in the composition (paragraph 4) and is also useful for controlling fragrance release (see paragraph 15). Popplewell further teaches that the ethyl cellulose can help to form a firm, hard solid for delivery of flavor and/or fragrance material by influencing diffusion or by maintaining physical integrity (see paragraph 14). At paragraph 45, Popplewell is also teaching that fillers and bulking carriers can result in forming a physical solid. Popplewell is suggesting that ethyl cellulose is the only film former as part of the matrix because at minimum, the composition can contain 0.5-95% of ethyl cellulose and 5-99.5% of an organic fragrance and flavor chemicals (see the abstract and paragraph 8). At paragraph 35, Popplewell further evidences using hydroxypropyl cellulose at 0.5%. Since ethyl cellulose and hydroxypropyl cellulose are taught to be used in the alternative, it would have been obvious to one having ordinary skill in the art that Popplewell is also suggesting 0.5% ethyl cellulose. Popplewell further supports using 0.5% ethyl cellulose at paragraph 36.
Therefore, in view of Chapman and Popplewell, the art has recognized using a film former consisting of ethyl cellulose used in the claimed amounts for the purpose of facilitating forming a film having functional ingredients suspended, dispersed or dissolved into the matrix as well as for controlling the degree of release of the flavor or fragrance.
Since Powers also teaches compositions that result in films as shown in figure 5b for example, to therefore modify Powers and to use less than 2% or 1% ethyl cellulose in the product matrix and with a functional compound and the film former dissolved in a solvent, as taught by Chapman and Popplewell, would have been obvious to one having ordinary skill in the art for the purpose of facilitating forming a film having functional ingredients suspended, dispersed or dissolved into the matrix as well as for controlling the degree of release of the flavor or fragrance. It is noted that Mixon further evidences that it has been known for flavor and fragrance components such as essential oils to dissolve in alcohol (see page 3).
Regarding the limitation of, “wherein the matrix forms a permeable film on the absorbent substrate for decelerating the diffusion rate of the functional compound over an extended period of time as compared to a filmless product” it is noted that Powers teaches that the mass can be laminated or even hot melted onto a surface (see paragraph 60) thus suggesting the mass as a film.
Regarding the film being permeable for decelerating the diffusion rate of the functional compound over an extended period of time as compared to a filmless product, Powers further teaches that the functional compound (i.e. the flavorant/odorant) can readily volatilize from the dosed matrix (see paragraph 48). This is seen to read on the film being a permeable film. It is noted that the claim is not limiting as to what the film is permeable to. Because the film is present on an absorbent, porous substrate that can surround the film (see for example figure 5b, where the matrix is between two porous layers 16 and 18), it is seen that the diffusion rate of the functional compound would have been controlled and decelerated over some period of time since there is an additional obstacle to diffusion, as compared to a filmless product. The claim does not provide any specifically as to the particulars of the filmless product. Also, since the prior art teaches a similar composition dosed on an absorbent paper or textile substrate, as claimed, it would have been reasonable to expect that the prior art matrix would also have decelerated diffusion of the function compound.
Further regarding the permeable film, it is noted that on paragraphs 93-94 and 77, Boyd teaches flavors, etc incorporated into a film that can be dried and where the film can be porous. Paragraph 77 teaches that the film can be porous with pores dispersed throughout the body and open to one another to form continuous paths or channels through the body of the film to permit ingress and egress of solvents and active ingredients (see paragraph 77).
Modification of Powers to form the film as a porous film would have been obvious to one having ordinary skill in the art, for including added amounts of the flavoring material, while also allowing for ingress and egress of active ingredients. That is, providing a porous film surface would have allowed for greater release of the flavoring materials. Because of this, it would have been obvious to one having ordinary skill in the art that the diffusion rate would have decelerated over some period of time, because at some point in time, concentration of the flavorant being released from the film decreases over time, thus decelerating diffusion.
It is further noted that Shefer further teaches that it has been conventional when allowing a fragrance to be released from a film, to have that film be a permeable film (see at least, the abstract and figure 1A which teaches fragrance materials permeating through the film at 11a and 12a). Figure 2 of Shefer further teaches a rate of deceleration after a given period of time (see figure 2, item 23c), thus reading on deceleration of the diffusion rate. Therefore, to modify the combination and to use a permeable film would have been obvious to one having ordinary skill in the art, for controlling the degree of release of the flavoring component, such as to decelerate the diffusion rate.
Regarding claims 33 and 52, it is noted that the claim is directed to a product and not the process of making the product. As such, because the combination teaches the mass dosed on a substrate, the particular method by which the mass was dosed on the substrate is not seen to provide a patentable distinction to the product (see MPEP 2113). In any case, it is noted that Powers teaches screen printing, for instance (see paragraph 60).
Regarding claims 53-55, in view of Powers, the combination teaches the substrate can be paper or a paper based textile (see paragraph 71).
Regarding claim 36, 39 and 51, Powers teaches the use of the product with foods (see at least the abstract and paragraph 2) and to thus provide food grade quality substrate, product and mass would have been obvious to one having ordinary skill in the art, for providing safe contact with food surfaces.
Regarding claim 38, the product, as taught by the Powers combination as discussed above, is seen to be “capable of” receiving a protective film for covering the permeable film formed from the mass dosed onto and absorbed into the absorbent substrate and for regulating the release of the functional compound. It is noted that the claim does not recite that the product comprises a protective film, but rather must only be capable of receiving a protective film.
Regarding claim 43, Powers teaches a scent, scent enhancer (see at least, the abstract and paragraph 40-41). Boyd also teaches combinations of flavoring agents (paragraph 75) and thus teaches a flavor enhancer, for instance. On paragraph 63, Boyd also teaches sweetening agents. Modification of Powers to thus include flavoring agents (i.e. flavor enhancers) would thus have been obvious to one having ordinary skill in the art based on the particular type of flavor desired to be released from the composition.
Regarding claims 47-48 because the combination teaches the use of liquid carriers, as well as essential oil flavoring ingredients (i.e. ethereal oils) it is thus noted that the combination is seen to encompass having an aerosol carrier or a spray gas carrier. Boyd teaches carriers (see at least paragraph 15, 55). Because the claims are directed to a product and not the method of making the product, it is seen that the requirement of “spray gas carrier” and “aerosol carrier” only requires the presence of a carrier in the claimed product.
Claims 38, 58 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 31 above, which relies on Powers (US 20090053388) as the primary reference, and in further view of Fotinos (US 20070031463) or in further view of Gelardi (US 20090266837), or in further view of Francis (US 7004398) as evidenced by Plastics Design Library.
Further regarding claim 38, it is noted that Powers teaches that films 16 and 18 can be porous, and thus could be construed as reading on the product further comprises a protective film for regulating the release of the functional compound.
If this was not the case, then Fotinos teaches the use of a breathable layer and a release liner (paragraph 63, 66, 79-82) for controlling the release of volatile essential oils (paragraph 43).
To thus modify Powers, who also teaches volatile essential oils, and to include a permeable, breathable film above the mass comprising the functional flavor would have been obvious to one having ordinary skill in the art for the similar purpose of controlling the release of the volatile aroma.
Additionally, it is noted that Gelardi teaches wrapping films for protecting edible film (see paragraph 56) where the wrapping materials can be materials such as polyethylene or polyvinyl chloride (paragraph 85), which are known to have a degree of permeability, as evidenced by Plastics Design Library.
Alternatively, Francis teaches an edible product (14, 40, 46) which is stored in a wrapper that can be cellophane (see column 3, line 63 to column 4, line 1), which Plastics Design Library evidences has a degree of permeability.
Therefore, to use wrapping materials which are known to be permeable, but for the purpose of protecting the films prior to use would have been obvious to one having ordinary skill in the art.
Regarding the limitation of claim 58 of, “prior to dosing the mass has a viscosity of less than 130000 mPa-s and is capable of absorbing into the absorbent substrate,” and claim 59 which recites that the viscosity prior to dosing is 150000 mPa-s or less, it is noted that as the claim is directed to the product and not the method of making the product, that it is not seen that the particular properties of the product prior to being part of the product would have provided a patentable distinction over the prior art, because the end product as claimed is that the mass forms a film on the absorbent substrate, and the prior art teaches this same concept.
Claims 44-46 are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 31 above, which relies on Powers (US 20090053388) as the primary reference, and in further view Shastry (US 20040086603).
Regarding claim 44-45, the claims differ from Powers in specifically reciting the mass comprising at least one printing substance for assisting with printing on the absorbent, and the particular printing substance, as recited in claim 45.
However, Powers teaches using conventional printing techniques (see paragraph 73 - “conventional coating, printing or imprinting techniques….”).
Nonetheless, Chapman teaches printing the mass onto a paper substrate, as already discussed above, where the mass can further include printing inks (see column 5, lines 19-36), which are solvent based (see column 5, lines 63-65) and are thus seen to be capable of being used for digital printing. Chapman also teaches on column 4, lines 24-25, ink jet printing, which can be construed as a digital printing.
It is further noted that Shastry teaches solvent based edible inks (see at least, the abstract, and paragraph 35, 36) for ink-jet (i.e. digital) printing.
Therefore, modification of Powers to use solvent based inks as the printing ink would thus have been obvious as a matter of engineering and/or design choice, based on conventional types of edible inks used for providing color and images onto a substrate.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 31 above, which relies on Powers (US 20090053388) as the primary reference, and in further view of “Aerosil 200”.
Regarding claim 57, Powers teaches a viscosity regulator, such as silica gel and clays and perlite (see paragraph 48).
If it could have been construed that this was not considered a silicate compound, then it is noted that “Aerosil 200” further teaches fumed silica as a known and conventional anticaking agent, as well as rheology controller for food applications (see page 1). To thus modify Powers who is not limiting regarding the particular type of thickener and viscosity modifier and to thus use fumed silica would have been obvious to one having ordinary skill in the art for the purpose of providing the requisite control to the viscosity and thus thickness of the product.
Response to Arguments
On page 2 of the response, Applicant urges that none of Powers’ 12 examples include the use of ethyl cellulose or any sort of cellulose ether in any amount and only provides general instructions as to amounts of stabilizers for handing and transferring; and all of Powers’ examples incorporate approximately 50% by weight of silica stabilizer to stabilize the flavorant. Therefore, Applicant urges that Powers suggests the use of relatively large amounts of a stabilizer.
It is initially noted that the examples are not seen to teach away from Powers’ broader disclosure (MPEP 2123). Furthermore, Powers does not limit the particular stabilizers that can be used and suggests on pages 11-12, claim 4 that a combination of stabilizers can be used. While the claim recites, that the ethyl cellulose film former is used at least than 2% of the matrix and consists of ethyl cellulose, this also does not exclude the matrix from comprising additional stabilizing components which are not film formers. For example, paragraph 48 of Powers discloses using clays or silica gel, neither of which is a film former. Therefore, Powers teaches that the matrix forms a film (see figure 5, item 20) and is still open to using ethyl cellulose but is not clear on the particular amount of ethyl cellulose that can be used. In this regard, Chapman teaches using 1% ethyl cellulose for successfully suspending or dispersing ingredients such as flavoring agents. Therefore, Chapman provides further motivation to use 1% ethyl cellulose for suspending or dispersing ingredients such as flavorants within the mass; and Popplewell teaches matrix can specifically use ethyl cellulose at 0.5-1.5% (paragraph 41) and where the ethyl cellulose can viscosity and body in the composition (paragraph 4) and is also useful for controlling fragrance release (see paragraph 15) while also helping to form a firm, hard solid for delivery of flavor and/or fragrance material by influencing diffusion or by maintaining physical integrity (see paragraph 14). To modify Powers so as to use 0.1 or 1% ethyl cellulose would thus have been obvious to one having ordinary skill in the art, for the similar purpose of providing the requisite film forming of the composition while also dispersing functional compounds within the mass.
In view of the amendment to the claims, Applicant’s remarks on pages 2-3 with respect to Boyd have been considered and are persuasive. Therefore, the Boyd reference has not been relied on in this Office Action to teach the film former as claimed.
In view of the amendment to the claims, Applicant’s remarks on pages 3-4 with respect to Schiraldi have been considered and are persuasive.
Therefore, the Schiraldi reference has been withdrawn.
On pages 4-5 of the response, Applicant urges that Chapman’s film forming agents are combined with solvents that result in liquid coatings and not stabilized flavorants having a solid or semi-solid state as taught by Powers. Thus, Applicant urges that Chapman does not teach or suggest a film forming agent that adequately stabilizes a flavorant to a non-liquid form as required by Powers and as such there is no motivation to combine the teachings of Chapman with that of Powers because Chapman’s low ethyl cellulose content would result in liquid coatings instead of solid or semi-solid state coatings and therefore would not work for the intended purposes of stabilizing the flavorants of Powers. Applicant urges that there is no disclosure or suggestion in Chapman that the use of ethyl cellulose as the sole film former incorporated at amounts of less than 2% would stabilize a composition.
These urgings are not sufficient to overcome the rejection because the claims do not exclude the matrix from comprising additional elements that can still function to stabilize the flavorants of Powers while further including only ethyl cellulose as a film forming agent. As discussed above, Powers teaches components used to stabilize and which components are not film formers (see paragraph 48). Furthermore, while column 18, lines 45-50 of Chapman teaches that that the coating formulation typically has a liquid form, Chapman teaches that the formulation is applied to textiles such as paper by printing onto the paper (see column 21, lines 44-65) and Chapman also teaches the liquid of the coating formulation can be removed by evaporation techniques thus leaving a coating layer thereon (see column 5, line 63 to column 6, line 19). Therefore, Chapman is not seen to only read on a liquid layer. It is further noted that Applicant’s specification at paragraph 16 as published also discloses that the solvent is evaporated away. Chapman’s disclosure also encompasses and suggests using ethyl cellulose as the sole film former because on column 19, lines 1-5, as a preference, Chapman teaches using 1% of a film forming agent and on column 16, line 30, 31 and 37 and column 17, lines 3-6, Chapman equally teaches a non-aqueous solvent such as ethanol used for a film forming agent such as ethyl cellulose.
On pages 6-7 of the response, Applicant urges that Popplewell uses heat to achieve dissolution of ethyl cellulose and does not teach using added solvents, not including triglycerides, flavor and fragrance materials which necessitates the use of heat for dissolution of ethyl cellulose. Applicant further urges that Popplewell is therefore in contrast to Powers who teaches away from using heat because stabilization has been defined by Powers to mean that a liquid flavorant is immobilized or otherwise converted into a solid or semi-solid form without the use of heat or other processes that would change or degrade the flavorant. Thus Applicant urges that would not combine Popplewell’s teachings with that of Powers.
These urgings are not seen to be sufficient to overcome the rejection the arguments are directed to the method of making the product and not the product itself. That is, the claims are directed to the product and not the method of making the product and as such, the determination of nonobviousness and patentability lies in the product itself and not the method of producing. Additionally, at paragraph 14 Popplewell teaches that in some cases the dissolution is with the addition of heat. Furthermore at paragraph 49, Popplewell suggests that heat “may” be applied “as needed” and therefore is not suggesting that heat must be applied. At paragraph 42, Popplewell teaches using ethyl alcohol and therefore is suggesting a solvent that would dissolve the film former. Even further, it is noted that Powers in combination with Chapman already teach the combination of a solvent such as an alcohol together with ethyl cellulose and where the composition is a film, and therefore suggests dissolution of the functional compound and the film former. Also, it is noted that the claims do not exclude the inclusion of triglycerides and flavor and fragrance materials.
On pages 7-8 of the response, Applicant urges that Popplewell requires 5-10% cellulosic material to render the material suitable for techniques suited to fluid materials and preferably about 12-60% cellulosic material for non-fluid material techniques. Applicant further urges that Popplewell discloses liquid compositions having cellulosic polymer of from about 0.5-10 weight percent such that a person skilled in the art would conclude that incorporating cellulosic polymers such as ethyl cellulose at less than 2% by weight would result in a liquid, non-stabilized composition and not the stabilized flavorants as desired by Powers. Applicant thus urges that Popplewell therefore does not teach or suggest using less than 10% ethyl cellulose that could adequately stabilize a flavorant to a non-liquid form as required by Powers and a person of ordinary skill in the art would conclude that incorporating less than 2% ethyl cellulose would not produce the stabilized solid or semi-solid state as required by Powers and would therefore incorporate significantly more ethyl cellulose than set forth in the claims.
These arguments are not persuasive because paragraph 51 of Popplewell is not teaching away from using amounts below 10%, especially in light of the abstract also clearly teaching that the composition can comprise 0.5% of an organically cellulosic material such as ethyl cellulose together with 99.5% of organic fragrance chemicals, both of which are dissolved in a solvent; and in light of paragraphs 14, 15 and 45 which teach firm products can be produced by further including fillers and bulk carriers. Popplewell’s teaching of 5-10% cellulosic material is disclosed to be a preference and does not teach away from Popplewell’s broader disclosure. Additionally, as discussed above, the combination does not teach away from Powers using another stabilizer that is not a film former, while also using ethyl cellulose as taught by Chapman and Popplewell, for the purpose of facilitating forming a film having functional ingredients suspended, dispersed or dissolved into the matrix as well as for controlling the degree of release of the flavor or fragrance.
Further on page 8 of the response, Applicant urges that the use of less than 2% ethyl cellulose film former in the matrix provided a stable lasting film, which is clear, UV stable or non-yellowing, highly temperature resistant, economical and safe to use while also providing particularly beneficial means of dosing and releasing a functional compound.
These urgings are not sufficient to overcome the rejections as presented in this Office Action, because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is further noted that the specification does not provide sufficient specificity or data with respect degrees of clarity, UV stability, non-yellowing and temperature resistance. It is additionally noted that the claim is directed to the product and not the method of making the product, such that silk screen and textile printing would not appear impart patentability to claims directed to the product.
The remainder of Applicant’s arguments on pages 8-9 reiterate those presented above and are not persuasive for the reasons discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Adams (US 4784163) discloses a functional ingredient in combination with a carrier and a binder, such as ethyl cellulose used at 2% as the only film former (see column 4, line 67 to column 5, line 36).
Eliav (US 20100291278) discloses fixation agents added at 0.1-3% of a composition according to the required changes in rheology (see paragraph 30); and at paragraph 19, rheology modifiers include cellulose ethers such as ethylcellulose.
Mosko (US 7781375) discloses using ethyl cellulose at 0.35% by weight as part of a film composition (see the abstract) and where the remaining components can be a functional particle and a non-cellulosic component such as glues, which are therefore not film formers (see the abstract and column 5, lines 35-42).
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.
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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