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 .
In view of the appeal brief filed on 4/3/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below for claim 74.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 74, 85-87 and 89-90 are rejected under 35 U.S.C. 103 as being unpatentable over Zhenghua et al. (CN102870873A) in view of Omenetto et al. (US 2012/0188640 A1). Knight et al. (US 2006/0289327 A1) is relied on as evidence.
Citations to Zhenghua et al. are made with respect to the EPO translation provided with Office Action dated 9/3/2024.
Regarding claim 74, Zhenghua et al. teaches a product comprising a perishable item and a coating, wherein at least a portion of the coating is in contact with at least a portion of the perishable item (paragraph 44), the coating comprising 1.5% by mass silk fibroin (paragraph 42), the perishable item necessarily having a shelf-life, wherein the average shelf-life of the perishable item is extended compared to a reference perishable item that is not coated (paragraphs 47-50 and 53-57). The silk fibroin is extracted from silk as raw material (paragraph 17), where fibroins are understood to be amphiphilic polypeptides as evidenced by Knight et al. (paragraph 6). Additionally, Applicant’s specification recites silk fibroin as the amphiphilic polypeptide.
Zhengua et al. further teaches the fruit is “soaked in the preservatives…for about 30 seconds and then taken out” (paragraph 44), where “silk fibroin is coated on fruits…surface of the fruit is covered with a dense and uniform protective film” (paragraph 17). Therefore, the entire surface of the item is in direct contact with the coating.
Zhenghua et al. does not teach the coating is annealed after drying. It is noted that the limitation is interpreted in view of the specification to impart structure onto the claimed product i.e., increasing crystallinity of the biopolymer (silk fibroin) coating material (paragraphs 95-96).
Omenetto et al. teaches a film that can be affixed to food products (paragraph 69), the film comprising silk fibroin (paragraph 33), where the silk fibroin is dried and then “water annealed” in order to “guarantee reduced solubility in a humid environment without loss of function (paragraph 146). Annealing is used to control the crystallinity of the silk, by regulating water content, to stabilize the device for prolonged operation in wet environments” (paragraph 68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product such that the coating is annealed after drying since the reference teaches a similar silk fibroin coating and wanting to retain water within the coated fruit (paragraphs 17 and 45), where minimizing water loss slows the aging process of the fruit (paragraph 10), since the prior art recognizes annealing dried silk coatings provides advantages with respect to enhanced water resistance, since there is no evidence of record indicating unexpected results associated with the claimed feature, and in order to similarly control crystallinity of the silk, thereby ensuring functionality of the coating is maintained throughout transport and handling, regardless of exposure to moisture and/or humid environments, low aging and facilitate preservation.
Regarding claim 85, Zhenghua et al. teaches a product comprising a perishable item and a coating as stated for claim 74, where the coating in contact with the entire surface of the item reads on “at least a portion”. The same combination is applied to claim 85 and would have been obvious for the same reasons.
Regarding claims 86-87, Zhenghua et al. does not specifically teach the claimed values for water diffusivity and oxygen permeability, respectively.
However, the reference teaches a “dense and uniform protective film…thereby reducing oxygen permeability and water permeability…inhibiting the respiration intensity of the fruit and the evaporation and loss of water…maintaining the freshness of the fruit” (paragraph 17). The reference further teaches loss of water in fruits such as strawberries leads to accelerated aging (paragraph 10), and reducing respiration intensity facilitates extended shelf-life (paragraph 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product to have the claimed values of water diffusivity and oxygen permeability since the reference already contemplates modifying oxygen and water transfer characteristics by coating the surface of the fruit, and since the product of Zhenghua et al. teaches the features of claim 74, where the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as fibroin content, coating thickness/coverage, and desired degree of preservation.
Regarding claim 89, Zhenghua et al. teaches the fibroin is water soluble (paragraph 32).
Regarding claim 90, Zhenghua et al. teaches the coating is obtained by forming a fibroin solution comprising 1% CaCl2 in aqueous solution (paragraph 42), where the CaCl2 is construed to be an additive.
Claim 88 is rejected under 35 U.S.C. 103 as being unpatentable over Zhenghua et al. in view of Omenetto et al. as applied to claim 85 above, and further in view of Morelos et al. (US 5,637,139).
Regarding claim 88, Zhenghua et al. does not teach the coating is encoded with identification information about the perishable item.
Morelos et al. teaches an ink composition for use in printing on food items, especially fruits and vegetables (abstract), where the prior art recognizes that it is often useful to place identifying information on food items, such as PLU codes, in order to ensure the proper price is entered at the retail level (column 1 lines 22-27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Zhenghua et al. to encode identification on the coating since the prior art acknowledges applying identifying information onto perishable items, since there is no evidence of criticality or unexpected results associated with the claimed feature, and therefore to combine prior art elements according to known methods to yield predictable results, and in order to similarly ensure the product is properly categorized as needed e.g., by price, item type, brand, etc.
Claims 91-93 are rejected under 35 U.S.C. 103 as being unpatentable over Zhenghua et al. in view of Omenetto et al. as applied to claim 85 above, and further in view of Clemons (US 2006/0172042 A1).
Regarding claims 91-93, Zhenghua et al. does not teach the coating comprises a flavoring additive, a perfume or fragrance, and a coloring additive, respectively.
Clemons teaches a plant-derived decorative food item (abstract) comprising fruits, vegetables, etc. which are coated with a preservative composition (paragraph 29), where one or more desired coloring, flavoring and/or scenting agents can be added to the coating composition (paragraphs 68 and 70) in order to provide visual enhancement to the product (paragraph 69). Flavoring and/or scenting agents are known in the art, and one skilled in the art can add the flavoring and/or scenting agents to obtain a desired taste or fragrance (paragraphs 87 and 92).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the product of Zhenghua et al. to include the claimed additives since the prior art recognizes such additives for coating edible plant products, since there is no evidence of criticality or unexpected results associated with the claimed features, and in order to obtain a product having desired visual appeal, flavor/taste, and aroma.
Response to Arguments
Prosecution has been reopened due to the after-final amendments to independent claim 74. The product of the claim had not been previously considered with respect to the “coating is annealed after drying” in the independent or any of the dependent claims, and a proper combination of references associated with said limitation (Zhenghua in view of Omenetto) was not previously presented. The instant Office Action provides a new ground of rejection with respect to claim 74.
Applicant cites a reference from the Institute of Medicine and National Research Council Committee to Ensure Safe Food from Production to Consumption (page 11), but has not furnished a copy for the record. While the argument has been considered, Applicant is required to submit a copy of the reference.
Applicant's arguments in the appeal brief filed 4/3/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 6-8 that Omenetto’s references to annealing are directed to the optical reflector and features that convey reflectivity.
This is not persuasive since Omenetto teaches the water annealing process guarantees "reduced solubility in a humid environment without loss of function" (paragraph 146), where crystallinity is controlled by regulating water content during annealing (paragraph 68). This appears to be the same process used by Applicant (paragraphs 95-96). One of ordinary skill in the art would have recognized the advantage of annealing to stabilize the film for prolonged operation in wet environments, where providing moisture resistance to the film of Zhenghua would ensure the integrity of the film is retained even if the fruit is unintentionally exposed to excess moisture (e.g., precipitation, humidity, condensation, etc.) While the "loss of function" relates to the reflective property of Omenetto, the reference nonetheless provides suggestion and motivation for one of ordinary skill in the art to modify the film of Zhenghua to include water annealing for the purpose of imparting water resistance to the film.
Applicant argues on page 8 that Omenetto recites “food chain safety” without suggesting preservation of a perishable item, the references to annealing have no specific connection to the references of food chain safety, and does not suggest annealing an amphiphilic peptide coating on a piece of fruit.
This is not persuasive since the reference explicitly states the silk fibroin film can be affixed to food products (paragraphs 33 and 69) and be used in "food chain safety" (paragraph 3), where one skilled in the art would have recognized the latter necessarily relates to preservation of perishable foods. It is well-known in the art that incorrect transport and storage conditions causes perishable foods to decay and/or facilitate proliferation of pathogens, where said results are also well-known to cause safety issues due to foodborne illnesses. While Omenetto does not explicitly recite annealing to facilitate preservation of a perishable item, Zhenghua already teaches applying silk fibroin (amphiphilic polypeptide) coating to fruits for preservation. Therefore, the prior art suggests to one of ordinary skill in the art that annealing the silk fibroin coating would be desirable in order to prevent undesired or unintentional moisture degradation of the coating, thereby minimizing the risk of incorrect storage conditions and facilitating food chain safety.
Applicant argues on pages 8-10 that there is no motivation to combine Zhenghua and Omenetto and the Office does not provide a sufficient nexus between the annealing features of Omenetto and the coating of Zhenhua. Applicant argues optical reflectors may have advantages with respect to enhanced water resistance that are not relevant or applicable to the technical context of preservation of a perishable item and one of ordinary skill would have required further information to determine relevance to preserving fruit. Applicant argues regulating water content taught by Omenetto is the content within the silk film, which is not the same as a property relating to water transmission across the silk film, wet environments encountered in Omenetto's studies are not contemplated in the context of fruit preservation, and a skilled artisan would not find nexus between regulating water content within a silk film to provide stability in wet environments for the purpose of optical reflectivity and application of fruit preservation, the function disclosed by Omenetto is directed to the reflector film which is unrelated to fruit preservation, and Omenetto identifies a potential shortcoming of water annealing with respect to a relevant optical performance property which is unrelated to fruit preservation.
This is not persuasive for the same reasons stated above. Zhenghua teaches water loss from fruits such as strawberries causes acceleration of the aging process and it is desirable to maintain the storage environment at high humidity (paragraph 10), coating the fruit surface with “a dense and uniform protective film to adjust the stomata of the fruit epidermis, etc., thereby reducing oxygen permeability and water permeability, effectively inhibiting the respiration intensity of the fruit and the evaporation and loss of water…maintaining the freshness of the fruit, delaying the physiological metabolism and aging of the fruit, and at the same time better maintaining the nutritional components of the fruit” (paragraph 17). The reference further teaches “retention of moisture content [in the fruit] is one of the important indicators for determining the preservation effect” (paragraph 45) and the preservation method “can effectively prolong the storage time of fruits” (paragraph 56).
While the annealing process of Omenetto is disclosed to facilitate functionality of the optical reflectors, the reference nonetheless teaches “an annealing step to stabilize the device for prolonged operation in wet environments”. This suggests to one of ordinary skill that annealing provides moisture resistance to the coating in general, and one of ordinary skill would have recognized such resistance to be advantageous for minimizing the risk of premature degradation of the coating of Zhenghua.
Thus, the reference suggests to one of ordinary skill in the art that oxygen and water permeability can be controlled based on the characteristics of the silk fibroin coating, where the particular values would have been obtained via routine experimentation and optimization based on the factors stated for claims 86-87. Further, the reference suggests retaining the coating on the fruit is desirable to ensure moisture retention within the fruit throughout storage. In view of the above suggestions, one of ordinary skill in the art would have recognized that the annealing method of Omenetto would facilitate retention of the coating on the fruit surface, even through unexpectedly high moisture environments (e.g., high humidity, condensation, precipitation, etc.) which would have otherwise caused premature degradation of the coating and respective permeability.
Applicant argues on page 10 that there is no evidence to suggest enhanced water resistance for optical reflectors is a property that is applicable to fruit preservation, Omenetto does not teach or suggest annealing ensures functionality of the coating is maintained when considering the context of fruit preservation, the combination of Zhenghua and Omenetto cannot use “tuning the dissolution time” as motivation for annealing since the combination lacks any silk reflective components, and the combination relies on hindsight.
This is not persuasive since the cited prior art provides all the teachings and suggestions for one of ordinary skill in the art to determine the advantage and motivation for annealing the silk fibroin coating of Zhenghua as stated above. Regarding “tuning the dissolution time”, the motivation has been removed from the obviousness reasoning.
Applicant argues on pages 10-11 that Zhenghua relates to water permeability, not water resistance, and there is no evidence of record to suggest that enhancing a film’s water resistance has any impact on an ability to retain the water present within the fruit.
This is not persuasive since the modification is not made to adjust the water permeability of Zhenghua, which already indicates the coating facilitates moisture retention within the fruit as explained above. Rather, the coating is modified to include annealing in order to provide resistance to moisture from the environment, which could lead to premature dissolution or degradation of the coating. Such resistance would ensure against undesired and/or unexpected changes to the water retention property of the coating.
Applicant argues Examiner does not provide evidentiary support for food chain safety necessarily relating to preservation of perishable foods, a search for the phrase “food chain safety” does not support Examiner’s statement, a skilled artisan would not meaningfully relate food chain safety to preservation of foods, the systems of food chain safety do not provide meaningfully enhanced protection, and there is no nexus between the teaching of Zhenghua and the food chain safety articulated in Omenetto.
This is not persuasive since the prior art recognizes food safety issues associated with the food supply chain, where it is desirable to find effective ways to ensure safer food as evidenced by Food Safety NPL (pages 1-2). Methods for preventing recalls include optimizing product quality i.e., preservation, and minimizing foodborne hazards across production and the supply chain (page 3 “Role of Technology”). Therefore, one of ordinary skill would have recognized the “food chain safety” of Omenetto would necessarily relate to preservation of perishable foods.
Applicant argues on page 12 that it would have been more apparent to one of ordinary skill to use reflectors as holographic codes to serve as labels affixed to the food products as opposed to preservation, and the Office’s position that food chain safety necessarily relates to preservation of perishable foods is unsustainable.
This is not persuasive since the prior art combination does not rely on the argued reflective or holographic features. Rather, the coating of Zhenghua is annealed to provide enhanced water resistance as explained above. Further, when given its broadest reasonable interpretation, the limitation “food chain safety” encompasses ensuring safety of the food through the supply chain and to the consumer as evidenced by Food Safety NPL.
Applicant argues on page 12 the annealed coatings are unexpectedly superior to non-annealed coatings at retaining fruit weight, and cites figures 8-9 as showing a significant change in oxygen diffusion coefficient and oxygen permeability with annealing, as well as improved firmness with increased water-annealing treatment length.
This is not persuasive since the prior art teaches and provides motivation to anneal silk fibroin as explained above. One of ordinary skill in the art would have expected the annealed silk fibroin of the prior art combination to provide similar properties to those argued, particularly since a compound and its properties are inseparable, see In re Papesch, 137 USPQ 43 (CCPA 1963).
Additionally, it is not immediately clear from the data if certain features of the annealed film are critical to obtain the argued results (e.g., type of annealing, degree of crystallinity, annealing duration, thickness, etc.) as disclosed throughout the specification (e.g., paragraphs 120 and 131), or if any annealed film produces the argued results. Claim 1 as currently drafted does not recite any of the above-mentioned features and only recites that the coating is "annealed after drying", see also MPEP 716.02 (d). Examiner notes that Applicant acknowledges annealing of silk fibroin was known (paragraph 98).
Applicant argues on page 13 that the inherency of a teaching is not necessarily related to whether it produces unexpected results or not, and the data supports an unexpected result across the claimed invention relating to annealing after drying, where there is no statistical difference between the different times of water annealing (degree of crystallinity).
This is not persuasive since modified Zhenghua teaches an annealed silk fibroin coating for the advantages explained above. The annealed coating would have necessarily included some degree of crystallinity, and therefore the annealed coating of the prior art combination appears to be the same as that of the claimed coating. One of ordinary skill would have reasonably expected the silk fibroin coating of Zhenghua, exposed to the same annealing process, to result in a coating having similar water diffusivity and oxygen permeability coefficient.
Applicant cites paragraph 135 of the specification, stating no statistical difference was found for different times of water annealing (degree of crystallinity), and therefore appears to argue that any degree of annealing is sufficient to obtain the argued results. Since the prior art combination teaches an annealed silk fibroin coating as stated above, there appears to be no difference between the prior art coating and the claimed coating. The evidence of record is unclear with respect to criticality for the disclosed ranges (e.g., degree of crystallinity). Absent evidence of criticality, one of ordinary skill in the art would have reasonably expected the annealed coating of the prior art combination to provide the same results as that of Applicant’s annealed coating.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571)-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.K/Examiner, Art Unit 1792
Prosecution Insights