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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/27/2026 has been entered.
Status of the Claims
This action is in response to papers filed 01/27/2026 in which claims 5-6, 8-10, 14, 20, 22-23, and 25 were canceled; claims 15-16 were withdrawn; and claims 1, 3, 15, 16, 24, 26, and 27 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-4, 7, 11-13, 17-19, 21, 24, and 26-27 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Specification
The amendments to the specification filed 01/27/2026 is considered non-compliant because it has failed to meet the requirements of 37 CFR 1.121 or 1.4. The amendments are non-compliant because the amendment to the specification should be based on the original disclosure. Applicant is noted that the last two amendments to the specification (filed on 04/10/2025 and 11/12/2025) were NOT entered due to the introduction of new matter. Thus, based on the original disclosure, the added material in paragraph [0066] of “to produce an edible film comprising of said dry de- aerated mixture of cellulose derivatives, water, at least one plasticizer, at least one flavoring agent and at least one food coloring” as recited in the amendment filed 01/27/2026 should have been underlined, as this material was added to the original disclosure.
As for the amendment to paragraph [0068], as discussed above, the last two amendments to the specification (filed on 04/10/2025 and 11/12/2025) were NOT entered due to the introduction of new matter. Thus, there should not be any amendment made to paragraph [0068] as the prior amendments filed 04/10/2025 and 11/12/2025 were NOT entered.
Accordingly, due to the non-compliant issue above, the amendments to the specification filed 01/27/2026 are NOT entered.
New Rejection
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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.
Claims 3 and 27 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 introduce new matter as the claims recite the limitation: “said mukhwas comprising both said digestive aid and a breath freshener.” There is no support in the specification for this limitation.
Claim 27 introduce new matter as the claims recite the limitation: “said mukhwas comprising both a digestive aid and a breath freshener.” There is no support in the specification for this limitation.
Below are disclosures from the specification (based on published application) that pertains to “mukhwas”:
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As shown above, none of paragraphs [0003], [0005], [0002], [0024], [0057], and [0070] from the specification (published application) disclose or provide support for the claimed subject matter of “said mukhwas comprising both said digestive aid and a breath freshener” as recited in claim 3. It is noted that claim 3 recites “mukhwas formed of coconut” then followed by “said mukhwas comprising both said digestive aid and a breath freshener.” There is no support or disclosure anywhere in there specification for the mukhwas formed of coconut to comprise both a digestive aid and a breath freshener.
As shown above, none of paragraphs [0003], [0005], [0002], [0024], [0057], and [0070] from the specification (published application) discloses or provide support for the claimed subject matter of: “said mukhwas comprising both a digestive aid and a breath freshener” as recited in claim 27. There is no support or disclosure anywhere in the specification for the mukhwas to comprise both a digestive aid and a breath freshener.
As disclosed above in paragraphs [0003], [0005], and [0024] of the specification, Mukhwas is defined as functioning/used as a digestive aid and a breath freshener. This is not support for mukhwas formed of coconut to comprise both a digestive aid and a breath freshener or mukhwas to comprise both a digestive aid and a breath freshener, as digestive aid and breath freshener/mouth freshener were both indicated in paragraphs [0022] and [0057] of the specification as separate components from mukhwas. Thus, Applicant does not have possession of the claimed subject matters of “said mukhwas comprising both said digestive aid and a breath freshener” as recited in claim 3 and “said mukhwas comprising both a digestive aid and a breath freshener” as recited in claim 27.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matter of amended claims 3 and 27 at the time of filing of the instant application.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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) 1-2, 4, 7, 11-13, 21 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1).
Regarding claim 1, Pearce teaches a snack that include a layer of edible film, wherein the edible film encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]), thereby the substances such as flavors, breath fresheners are in a wrapping of the edible film, “wrapping” as claimed is synonymous to encapsulate (or encapsulating) of Pearce. Pearce teaches the substances include breath fresheners such as mint (a digestive aid), are encapsulated within the edible film ([0092] and [0103]-[0152]).
Pearce teaches the substances such as breath fresheners include mint or peppermint ([0045], [0105]). As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid.
Pearce further teaches the substance is used in pre-measured amount ([0085]), thereby meeting the claimed “a pre-determined amount of at least one edible composition.” Pearce further teaches the edible film orally soluble and disintegrates quickly upon placement in a mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Abstract; [0004]-[0005], [105], [0121], [0152], and [0175]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can be any desired thickness of from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer) ([0177]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can vary between 5 and 200 micrometers ([0163]). Pearce teaches the edible film is formed by mixing the film-forming ingredients with water to form a hydrated polymer gel; mixing the hydrated polymer gel with flavoring oil until uniform; de-aerating the uniform mixture until air bubbles are removed; casting the uniform mixture on a suitable substrate; and drying the cast mixture to form a film ([0157]-[0170]), thereby meeting the claimed “said edible film comprises a dry de-aerated mixture” as recited in claim 1.
It would have been obvious to one of ordinary skill in the art to optimize the thickness of the edible film of Pearce to a thickness in the range of from 1 to 30 microns, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Pearce indicated that the thickness of the edible film can be optimize to any desired thickness to obtain a thin film so as to encourage rapid dissolution or disintegration, wherein the edible film thickness can be from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer), which is a thickness range that substantially overlaps the claimed thickness of from 1 to 30 microns. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of the edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
However, Pearce does not teach the edible composition is sugar coated and wrapped within said edible film of claim 1.
Regarding the edible composition is sugar coated and wrapped within said edible film of claim 1, Albert teaches an edible product comprising edible composition coated with an sugar shell and said sugar coated edible composition is wrapped within an edible adhesive film (Abstract; [0011]-[0023], [0026]; claims 1-31).
It would have been obvious to one of ordinary skill in the art to coat the edible composition of Pearce with a sugar shell before wrapping the edible composition with an edible film, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Albert provided the guidance do so by teaching that an edible composition can first be coated with a sugar shell before it is encapsulated within edible film so as colorants/glitter can be added to the edible film, and obtain an edible product that has a colorful decorative appearance (Albert: [0011]-[0012], [0017]). Thus, ordinary artisan seeking to produce a colorful decorative edible product would have looked to first coat the edible composition of Pearce with a sugar shell before wrapping with the edible film, and achieve applicant’s claimed invention with reasonable expectation of success.
Regarding claim 2, Pearce teaches the substances such as breath fresheners (a digestive aid), are encapsulated within the edible film ([0092] and [0103]-[0152]).
Regarding claim 4, Pearce teaches the edible film contains flavoring agents, wherein the flavoring agents are selected from natural flavors and artificial flavors ([0005], [0009], [0028], and [0040]-[0046]).
Regarding claim 7, Pearce teaches the edible film contains water, plasticizer, and film forming agent selected from cellulose polymers, cellulose derivatives, polysaccharides, and starches ([0004]-[0057] and [0085]-[0184]).
Regarding claim 11, Pearce teaches the edible film contains from about 10% to 90% by weight of film forming agent, between 0.1% and 5% by weight of plasticizer, about 0.1% to about 30% by weight of flavoring agent, up to about 5% by weight of coloring agent, and a sufficient amount of water ([0004]-[0057] and [0085]-[0184]). It is noted that the weight % amount ranges for film forming agent, plasticizer, flavoring agent, and coloring agent overlap the claimed ranges for film forming agent, plasticizer, flavoring agent, and coloring agent. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of film forming agent, plasticizer, flavoring agent, and coloring agent in an edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 12, Pearce teaches the film forming agent is selected from pullulan, alginate, carboxymethyl cellulose, hydroxypropyl cellulose, and hydroxypropyl methyl cellulose ([0007]-[0018]).
Regarding claim 13, Pearce teaches the plasticizer is selected from triethyl citrate (triacetin), glycerin (glycerol), polyethylene glycol and propylene glycol ([0026]-[0030]).
Regarding claim 21, as discussed above, Pearce teaches the substance is a breath freshener such as mint ([0009], [0028], [0045], [0104]-[0105], [0107], and [0152]), thereby meeting the claimed “digestive aid”. Pearce further teaches the substance is used in pre-measured amount ([0085]).
Regarding claim 26, Pearce teaches the substances to be encapsulated by the edible film includes flavors and breath fresheners ([0009], [0028], [0045], [0104]-[0105], [0107], and [0152]), thereby meeting the generically claimed “a digestive aid” and “a mouth freshener”. As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claim 1 above, and further in view of TNN (“Paan Lovers, here are 5 reasons why this mouth freshener is food for you!” Retrieved from internet. Published date: 17 May 2018, pages 1-4).
The packaged dosage form of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Claim interpretation: in light of the definition of “mukhwas” in the specification (see page 1 of the specification), “mukhwas formed of coconut” as recited in claim 3 is interpreted as mukhwas that is in the form of coconut and functions as both a digestive aid and a breath freshener.
Regarding claim 3, TNN teaches a paan containing coconut powder is used an after-food mouth freshener and has digestive properties (pages 1-2).
It would have been obvious to one of ordinary skill in the art to include the paan containing coconut powder in the snack of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Pearce teaches that any breath fresheners can be used as the substances that are encapsulated by the edible film and Pearce objective to provide a snack that is encapsulated in an edible film (Pearce: [0120]-[0121]). One of ordinary skill in the art would have reasonable expectation of success because the paan containing coconut powder of TNN is a known after-food mouth freshener. Thus, an ordinary artisan would have reasonable expectation of using other known mouth fresheners in the art including the a paan containing coconut powder of TNN so as to provide a resultant snack of Pearce with digestive properties, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claims 1, 7 and 12 above, and further in view of Lee et al (US 2014/0199460 A1).
The packaged dosage form of claims 1, 7 and 12 are discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 17, Lee teaches an edible water-soluble film comprising carboxymethyl cellulose or a salt thereof such as sodium carboxymethylcellulose, wherein the edible water-soluble film is transparent (Abstract; [0017], [0026]-[0035], and [0042]-[0043]).
It would have been obvious to one of ordinary skill in the art to incorporate sodium carboxymethylcellulose as the carboxymethyl cellulose in the edible film of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Lee provided the guidance to do so because teaching that a salt thereof such as sodium carboxymethylcellulose is a suitable carboxymethyl cellulose for use as a material in forming an edible water-soluble film, where carboxymethyl cellulose or a salt thereof such as sodium carboxymethylcellulose can aid in providing a resultant edible film that is transparent. Thus, an ordinary artisan would have looked to known a salt of carboxymethyl cellulose such as sodium carboxymethylcellulose suitable for use in forming an edible film and use said sodium carboxymethylcellulose as the carboxymethyl cellulose in the edible film of Pearce with an reasonable expectation of obtaining an edible film that is transparent, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claim 1 above, and further in view of Edwards et al (US 2015/0250203 A1).
The packaged dosage form of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 18, Edward teaches an edible composition comprising ingestible particles such sesame seeds, wherein the ingestible particles impart flavor to the edible composition (Abstract; {0089], [0096], [0115], [0135], [0241], [0245], [0248], [0250], and [0266]).
It would have been obvious to one of ordinary skill in the art to include sesame seeds as one of the substances in the edible composition of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Edward teaches that sesame seeds can be used an ingredient in an edible composition to improve flavor. One of ordinary skill in the art would have reasonable expectation of success in including sesame seeds as one of the substances in the edible composition of Pearce because flavoring agents are taught in Pearce as part of the edible composition (Pearce: [0120]-[0125]). Thus, ordinary artisan seeking to provide an edible composition with sesame flavor would have looked to including sesame seeds as one of the substances in the edible composition of Pearce, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claim 19, Pearce teaches the substance (edible composition) is in granules form ([0081], [0084], [0093] and [0099]).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Chang (US 2014/0212453 A1) and Albert (US 2004/0033293 A1).
Regarding claim 24, Pearce teaches a snack that include a layer of edible film, wherein the edible film encapsulate substances such as flavors, breath fresheners, confectionary food product (Abstract; [0004]-[0178]). Pearce teaches the edible film is formed by mixing the film-forming ingredients with water to form a hydrated polymer gel; mixing the hydrated polymer gel with flavoring oil until uniform; de-aerating the uniform mixture until air bubbles are removed; casting the uniform mixture on a suitable substrate; and drying the cast mixture to form a film ([0157]-[0170]), thereby meeting the claimed “said edible film comprises a dry de-aerated mixture” as recited in claim 24. Pearce teaches the substance is a breath freshener such as mint ([0009], [0028], [0045], [0104]-[0105], [0107], and [0152]), thereby meeting the claimed “digestive aid”. Pearce further teaches the substance is used in pre-measured amount ([0085]). Pearce teaches the edible film orally soluble and disintegrates quickly upon placement in a mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Abstract; [0004]-[0005], [105], [0121], [0152], and [0175]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can be any desired thickness of from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer) ([0177]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can vary between 5 and 200 micrometers ([0163]). The thickness ranges as taught in Pearce overlaps the claimed thickness of from 1 to 30 microns. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of the edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II). Pearce teaches the edible film contains water, plasticizer, and film forming agent selected from cellulose polymers, cellulose derivatives, polysaccharides, and starches (Abstract; [0004]-[0178]). Pearce teaches the edible film contains from about 10% to 90% by weight of film forming agent, between 0.1% and 5% by weight of plasticizer, about 0.1% to about 30% by weight of flavoring agent, up to about 5% by weight of coloring agent, and a sufficient amount of water (Abstract; [0004]-[0178]). It is noted that the weight % amount ranges for film forming agent, plasticizer, flavoring agent, and coloring agent overlap the claimed ranges for film forming agent, plasticizer, flavoring agent, and coloring agent. Thus, as discussed above, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of film forming agent, plasticizer, flavoring agent, and coloring agent in an edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
However, Pearce does not teach the edible composition comprises areca nut and that the edible composition is sugar coated and wrapped within said edible film of claim 24.
Regarding the edible composition comprises areca nut of claim 24, Chang teaches an edible composition (a snack) comprising flavoring ingredients such as betel nut (areca nut) and peppermint, wherein the flavoring ingredients are in powder form (Abstract; [0014], [0036], [0038], [0040], [0043]-[0044]; claims 29 and 31).
It would have been obvious to one of ordinary skill in the art to betel nut (areca nut) as one of the substances in the edible composition of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Chang teaches that betel nut (areca nut) can be used an ingredient in an edible composition to improve flavor, as it is used as a flavoring ingredient. One of ordinary skill in the art would have reasonable expectation of success in including betel nut (areca nut) as one of the substances in the edible composition of Pearce because flavoring agents are taught in Pearce as part of the edible composition (Pearce: [0104]-[0105]). Thus, ordinary artisan seeking to provide an edible composition with areca nut flavor would have looked to including betel nut (areca nut) as one of the substances in the edible composition of Pearce, and achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding the edible composition is sugar coated and wrapped within said edible film of claim 24, Albert teaches an edible product comprising edible composition coated with an sugar shell and said sugar coated edible composition is wrapped within an edible adhesive film (Abstract; [0011]-[0023]; claims 1-31).
It would have been obvious to one of ordinary skill in the art to coat the edible composition of Pearce with a sugar shell before wrapping the edible composition with an edible film, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Albert provided the guidance do so by teaching that an edible composition can first be coated with a sugar shell before it is encapsulated within edible film so as colorants/glitter can be added to the edible film, and obtain an edible product that has a colorful decorative appearance (Albert: [0011]-[0012], [0017]). Thus, ordinary artisan seeking to produce a colorful decorative edible product would have looked to first coat the edible composition of Pearce with a sugar shell before wrapping with the edible film, and achieve applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1).
Claim interpretation: in light of the definition of “mukhwas” in the specification (see page 1 of the specification), “mukhwas” as recited in claim 27 is interpreted as a mouth freshener that functions as both a digestive aid and a breath freshener.
Regarding claim 27, Pearce teaches a snack that include a layer of edible film, wherein the edible film encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]), thereby the substances such as flavors, breath fresheners are in a wrapping of the edible film, “wrapping” as claimed is synonymous to encapsulate (or encapsulating) of Pearce. Pearce teaches the substances include breath fresheners such as mint (a digestive aid), are encapsulated within the edible film ([0092] and [0103]-[0152]).
Pearce teaches the substances such as breath fresheners include mint or peppermint ([0045], [0105]). As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed “mukhwas” and “said mukhwas comprising both a digestive aid and breath freshener.”
Pearce further teaches the substance is used in pre-measured amount ([0085]), thereby meeting the claimed “a pre-determined amount of at least one edible composition.” Pearce further teaches the edible film orally soluble and disintegrates quickly upon placement in a mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Abstract; [0004]-[0005], [105], [0121], [0152], and [0175]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can be any desired thickness of from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer) ([0177]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can vary between 5 and 200 micrometers ([0163]). Pearce teaches the edible film is formed by mixing the film-forming ingredients with water to form a hydrated polymer gel; mixing the hydrated polymer gel with flavoring oil until uniform; de-aerating the uniform mixture until air bubbles are removed; casting the uniform mixture on a suitable substrate; and drying the cast mixture to form a film ([0157]-[0170]), thereby meeting the claimed “said edible film comprises a dry de-aerated mixture” as recited in claim 1.
It would have been obvious to one of ordinary skill in the art to optimize the thickness of the edible film of Pearce to a thickness in the range of from 1 to 30 microns, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Pearce indicated that the thickness of the edible film can be optimize to any desired thickness to obtain a thin film so as to encourage rapid dissolution or disintegration, wherein the edible film thickness can be from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer), which is a thickness range that substantially overlaps the claimed thickness of from 1 to 30 microns. Thus, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of the edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
However, Pearce does not teach the edible composition is sugar coated and wrapped within said edible film of claim 27.
Regarding the edible composition is sugar coated and wrapped within said edible film of claim 27, Albert teaches an edible product comprising edible composition coated with an sugar shell and said sugar coated edible composition is wrapped within an edible adhesive film (Abstract; [0011]-[0023]; claims 1-31).
It would have been obvious to one of ordinary skill in the art to coat the edible composition of Pearce with a sugar shell before wrapping the edible composition with an edible film, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Albert provided the guidance do so by teaching that an edible composition can first be coated with a sugar shell before it is encapsulated within edible film so as colorants/glitter can be added to the edible film, and obtain an edible product that has a colorful decorative appearance (Albert: [0011]-[0012], [0017]). Thus, ordinary artisan seeking to produce a colorful decorative edible product would have looked to first coat the edible composition of Pearce with a sugar shell before wrapping with the edible film, and achieve applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues that Pearce does not disclose that the edible film composition comprises a digestive aid. Applicant alleged that Mint as disclosed in Pearce is not a digestive aid and a breath freshener is not a digestive aid. (Remarks, pages 12-14).
In response, the Examiner disagrees. As previously discussed, it is first maintained that The claimed “digestive aid” is generic. Thus, under broadest reasonable interpretation (BRI) consistent with the specification, breath freshener (in other words, mouth freshener) as taught by Pearce reads on the generically claimed “digestive aid.” As discussed in the standing 103 rejection, Pearce teaches breath freshener such as mint (see 103 rejection, page 12 of this office action). The specification on page 1, particularly defines “mouth freshener” under “Definitions” as synonymous to “digestive aid.” Furthermore, page 4 under “Detailed Description” of the specification describes “digestive aids” as “mouth fresheners.” Accordingly, under BRI consistent with the specification, it is maintained that the teaching of breath freshener such as mint of Pearce meets the generically claimed “digestive aid.”
Furthermore, as discussed above in the pending 103 rejection, it was evidenced by Birketvedt, mint or peppermint of Pearce is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid. Accordingly, Birketvedt further supports the Examiner’s position that breath freshener such as mint of Pearce meets the generically claimed “digestive aid.”
Applicant argues that Fig. 2 of Albert does not show that the confectionary is wrapped in the edible film, thereby alleges that Albert does not teach a sugar-coated edible component wrapped within an edible film as in claims 1, 24 and 27. (Remarks, pages 15-17).
In response, the Examiner disagrees. As previously discussed, it is maintained that at least, per the description of Fig. 2 in paragraph [0026] of Albert, the center of the confectionary (the edible composition) is surrounded (coated) by a sugar shell and surrounding the sugar shell is a layer of edible adhesive (edible film) to which glitter are affixed thereon. This description in Fig. 2 in paragraph [0026] of Albert is consistent with the overall disclosure from Albert, including particularly claims 1-31 of Albert. Thus, contrary to Applicant’s allegations, the Fig. 2 does show that the confectionary is sugar coated and wrapped within an edible film, as well as, the entire disclosure from Albert including the claims, do teach and suggest an edible composition is sugar coated and wrapped within an edible film, as required by claims 1, 24 and 27.
As a result, for at least the reasons discussed above, claims 1-4, 7, 11-13, 17-19, 21, 24, and 26-27 remain rejected as being obvious and unpatentable over the combined teachings of the cited prior arts in the pending 103 rejections as set forth in this office action.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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