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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 45-49 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation "the film formed by the film composition for packaging" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 12 depends, does not previously recite “a film”. It is thus unclear to what is being referred as “the film”. For purposes of examination, claim 12 is interpreted as instead reciting “ a film formed by the film composition for packaging” as supported by the instant specification Par. 0013-0014.
Claim 45 recites the limitation “second foodstuff is one or more of a mushroom, sugar, a dry ingredient selected from the group consisting of dried mushrooms, salt/pepper, curry, food colorants, pasta, rice, noodles, millet, buckwheat, flour, oils selected from lemon, hazelnut, almond, and combinations thereof.” Claim 45 thus recites multiple sub-lists such as dry ingredients and oils within the list of materials for the second foodstuff. However, claim 45 does not make clear where one sub list ends. It is thus unclear which listed materials are part of the broad list of materials for the second foodstuff, or are in a specific sub-list. For purposes of examination, claim 45 is interpreted as instead reciting “second foodstuff is selected from the group consisting of a sugar, a dry ingredient selected from the group consisting of dried mushrooms, salt, [[/]]pepper, curry, food colorants, pasta, rice, noodles, millet, buckwheat, and flour;[[,]] oils selected from lemon, hazelnut, almond;[[,]] and combinations thereof.” This is supported by the fact that oils are not dry ingredients and thus the list of dry ingredients must have stopped before the oils were listed.
Claim 46 recites the phrase “functionality, appearance and color of the film composition for packaging is enhanced by incorporation of at least one of an herb…and/or a spice…” in lines 1-4 which is a subjective limitation. A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970), See MPEP 2173.05(b), IV. A film composition having an “enhanced” functionality, appearance, or color is a subjective limitation and the instant specification does not provide an objective measure as to what constitutes an “enhanced” functionality, appearance, or color. For purposes of examination, claim 46 will be considered satisfied if the functionality, appearance, or color of the film composition is affected in any way by the incorporation of the herb and/or spice.
Claim 47, recites the phrase “the film composition further consists of a colorant(s)” in lines 1-2. However, claim 1, from which claim 47 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. It is thus unclear how the film composition can consist of a colorant while also comprising the film forming agent, plasticizer, and first foodstuff. For purposes of examination, claim 47 is interpreted as instead reciting “the film composition further comprises a colorant(s)” as supported by the instant specification Par. 00242.
Claim 48, recites the phrase “the film composition further consists of a flavoring” in lines 1-2. However, claim 1, from which claim 48 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. It is thus unclear how the film composition can consist of a flavoring while also comprising the film forming agent, plasticizer, and first foodstuff. For purposes of examination, claim 48 is interpreted as instead reciting “the film composition further comprises a flavoring” as supported by the instant specification Par. 00242.
Claim 49 recites the phrase “increases the nutritional value” twice, once in line 2 and once in line 11. It is unclear what is meant by increased nutritional value. It is unclear if an increase in nutritional value is an increase in carbs, protein, vitamins, or other property of a foodstuff. It is further unclear if this is meant as a subjective measurement of being “healthier.” A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970), See MPEP 2173.05(b), IV. For purposes of examination, claim 49 will be considered satisfied if any property of the foodstuff of the film composition or packaging increases.
Claim 49, recites the phrase “wherein the edible packaging formed from the film composition for packaging consisting of at least one the powdered first foodstuff(s)” in lines 4-5. However, claim 1, from which claim 49 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. It is thus unclear how the film composition can consist of a the first foodstuff while also comprising the film forming agent and plasticizer. For purposes of examination, claim 49 is interpreted as instead reciting “wherein the edible packaging formed from the film composition for packaging
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 47-49 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 47 recites the phrase “the film composition further consists of a colorant(s)” in lines 1-2. However, claim 1, from which claim 47 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. Claim 47 thus does not include all the limitations of the claim upon which it depends. Claim 47 thus does not include all the limitations of the claim upon which it depends as it requires the film composition to consist of the colorant(s) and thus not include the film forming agent, plasticizer, and first foodstuff.
Claim 48, recites the phrase “the film composition further consists of a flavoring” in lines 1-2. However, claim 1, from which claim 48 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. Claim 48 thus does not include all the limitations of the claim upon which it depends as it requires the film composition to consist of the flavoring and thus not include the film forming agent, plasticizer, and first foodstuff.
Claim 49, recites the phrase “wherein the edible packaging formed from the film composition for packaging consisting of at least one the powdered first foodstuff(s)” in lines 4-5. However, claim 1, from which claim 49 depends, states that the film composition comprises a film forming agent, a plasticizer, and a first foodstuff. Claim 49 thus does not include all the limitations of the claim upon which it depends as it requires the film composition to consist of the first foodstuff and thus not include the film forming agent and plasticizer.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 1, 4, 6, 13-15, 17, 19, 21, 23, 25-26, 34, 38, 42, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. (US 5089307 A) (newly cited) in view of Withers (US 20180290811 A1) (previously cited) and Libe et al. (US 20120157581 A1) (previously cited).
Regarding claim 1, Ninomiya teaches a film composition (see film layer) for packaging and delivering a foodstuff comprising a plant-based film forming agent that is a polysaccharide such as carrageenan and a plasticizer (polyhydric alcohol) such as glycerol (Ninomiya, Abstract, Col. 1 Lines 5-9, Col. 2 Lines 25-60, Col. 3 Line 10 – Col. 4 Line 31, and Col. 4 Line 64 – Col. 5 Line 10). Carrageenan satisfies the limitation of a plant-based film forming agent as it is a polysaccharide formed from plants, and is given as an example of a plant-based film forming agent by the instant claim 6. Ninomiya teaches the film composition may only comprise the film forming agent and the plasticizer, teaches the film forming agent is present in an amount of not less than 50 wt.%, and that the film forming agent and plasticizer are present in a weight ratio of 1:1 to 5:1 (Ninomiya, Abstract, Col. 4 Line 16 – Col. 5 Line 26, and Col. 10 Line 11-25). Ninomiya thus teaches the film composition comprises 50-83.3 wt.% film forming agent and 16.7-50 wt.% plasticizer, which lie within the claimed ranges of 35-85 wt.% and 5-60 wt.% respectively and therefore satisfy the claimed ranges, see MPEP 2131.03. Ninomiya does not state that any petrochemicals, non-biodegradable bioplastics, or animal-based materials are required in the film composition and therefore satisfies the limitation of excluding petrochemicals, non-biodegradable bioplastics, and animal-based materials
Ninomiya is silent regarding the film composition comprising 0.1-60 wt.% of at least a first foodstuff based on dry film weight, wherein the first foodstuff is selected from the claimed powders.
Withers teaches a film composition for food packaging comprising a first foodstuff (natural antioxidant), wherein the first foodstuff is a powder of a fruit (Withers, Abstract, Par. 0005-0009, and 0047). Withers teaches the first foodstuff is present in the film composition in an amount of about 0.00001% to 20% by weight (Withers, Par. 0005-0006), which overlaps the claimed range of 0.1-60 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Ninomiya and Withers are analogous art as they both teach film compositions for food packaging. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the foodstuff of Withers to the film composition of Ninomiya. This would allow for the film composition to have antioxidant properties (Withers, Abstract and Par. 0004-0009).
Modified Ninomiya is silent regarding the plasticizer being plant based.
Libe teaches a biodegradable film for packaging comprising a polysaccharide (starch) and a plant-based (vegetable-based) plasticizer that is glycerol (Libe, Abstract, Par. 0001, 0013, 0018, 0040, 0046-0047).
Modified Ninomiya and Libe are analogous art as they both teach films for packaging comprising a polysaccharide and a plasticizer that is glycerol. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used plant-based plasticizer as the plasticizer of modified Ninomiya. This would allow for a biodegradable film (Libe, Par. 0046-0047).
Regarding the limitations of the film being compostable and the film forming agent and plasticizer being biodegradable, products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. Modified Ninomiya teaches that the film forming agent is carrageenan and the plasticizer is plant-based glycerol, (Ninomiya, Abstract and Col. 5 Lines 1-10; Libe, Par. 0046-0047) which is the same as the instant invention per the instant claims 1 and 6. Modified Ninomiya teaches that the film forming agent and plasticizer are present in an amount that is the same as the instant invention as stated above. Modified Ninomiya teaches that the film is water soluble and edible (Ninomiya, Abstract and Col. 3 Lines 10-20). Modified Ninomiya thus teaches a film that is identical or substantially identical to the instant invention. Therefore, absent objective evidence to the contrary, the film forming agent and plasticizer of modified Ninomiya would exhibit biodegradability and the film composition would be compostable, therefore satisfying the claimed limitations.
Regarding claim 4, modified Ninomiya teaches the film composition is formed to encase a second foodstuff that is a powder (Ninomiya, Abstract and Col. 3 Lines 10-20).
Regarding claim 6, modified Ninomiya teaches the polysaccharide is carrageenan (Ninomiya, Abstract and Col. 4 Lines 16-19).
Regarding claims 13-14 and 19, modified Ninomiya teaches the film composition comprises only the film forming agent, the plasticizer, and the first foodstuff as stated above for claim 1 (Ninomiya, Abstract, Col. 4 Line 16 – Col. 5 Line 26, and Col. 10 Line 11-25; Withers, Par. 0005-0006). Modified Ninomiya teaches the first foodstuff is present in an amount of 0.00001% to 20% by weight (Withers, Par. 0005-0006). Modified Ninomiya teaches the film forming agent and plasticizer are present in a weight ratio of 1:1 to 5:1 (Ninomiya, Col. 4 Line 16 – Col. 5 Line 26). Combined with the amount of first foodstuff, this results in an amount of film forming agent of ~40-83.3 wt.% and an amount of plasticizer of ~13.3-50 wt.%. Modified Ninomiya’s content ranges overlap the claim 13 range of 35-80 wt.%, the claim 14 range of 15-55 wt.%, and claim 19 range of 0.1-55 wt.% respectively and therefore establish prima facie cases of obviousness over the claimed ranges, see MPEP 2144.05, I.
Regarding claim 15, modified Ninomiya teaches the film composition is soluble in a hydro-liquid that is water (Ninomiya, Col. 3 Lines 10-20).
Regarding claim 17, modified Ninomiya teaches the film composition is edible (Ninomiya, Abstract and Col. 3 Lines 10-20).
Regarding claim 21, modified Ninomiya teaches the film composition further contains a coloring agent (food dye) in an amount of less than the film forming agent (Ninomiya, Col. 4 Lines 45-67) and that the film forming agent is present in an amount of 40-83.3 wt.% as stated above for claims 13-14 and 19. Modified Ninomiya therefore teaches the coloring agent is present in an amount of less than 40 wt.%, which overlaps the claimed range of 0.1 to 51 t.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claims 23 and 25, modified Ninomiya teaches the film composition for packaging is formed into a package to encase the second foodstuff (Ninomiya, Abstract and Col. 3 Lines 10-20).
Regarding claim 26, modified Ninomiya teaches the packaging configuration is a package which encases a second foodstuff and thus is formed to comprise one compartment (Ninomiya, Abstract and Col. 3 Lines 10-20).
Regarding claim 34, modified Ninomiya teaches the film composition for packaging is configured to deliver the encased, at least second foodstuff in a form of an orally consumable (edible) package (Ninomiya, Abstract and Col. 3 Lines 10-20).
Regarding claim 38, modified Ninomiya teaches the film composition is formed into a film that has a thickness of 10-100 µm (0.01-0.1 mm) (Ninomiya, Col. 7 Lines 23-38), which lies within the claimed range of 0.01-5 mm and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 42, modified Ninomiya teaches the film composition is formed into a package to encase the second foodstuff that is a vegetable (Ninomiya, Abstract, Col. 3 Lines 10-20).
Regarding claim 45, modified Ninomiya teaches the second foodstuff may be a flavoring and teaches examples wherein the film composition encases a second foodstuff that is a sugar (Ninomiya, Abstract, Col. 3 Lines 10-20 and Col. 9 Line 67 – Col. 10 Line 6).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. in view of Withers and Libe et al. as applied to claim 1 above, further in view of Myers et al. (US 20170112778 A1) (newly cited).
Regarding claim 12, modified Ninomiya teaches all of the elements of the claimed invention as stated above for claim 1. Modified Ninomiya is silent regarding a film formed by the film composition for packaging further comprising application of an anti-sticky/tacky powder(s), wherein the anti-sticky/tacky powder(s) are applied by a light spray coat and/or dusting on at least one surface of the film formed by the film composition for packaging.
Myers teaches an edible, soluble, film composition comprising a film forming agent (water soluble polymer) that is a polysaccharide (starch) (Myers, Abstract, Par. 0033, and 0063). Myers teaches the film composition forms a film that comprises an anti-stick/tacky powder applied by a light spray coat and/or dusting on at least one surface of the film (Myers, Abstract, Par. 0057 and 0113).
Modified Ninomiya and Myers are analogous art as they both teach edible, soluble film compositions that may be formed into a film. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied an anti-sticky/tacky powder by a light spray coat and/or dusting onto a surface of the film of modified Ninomiya. This would allow for reduced tackiness of the surface, reducing the problem of the film adhering to a user’s mouth or to other units of film (Myers, Abstract and Par. 0113).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. in view of Withers and Libe et al. as applied to claims 1 and 25-26 above, further in view of Shen et al. (US 20080152761 A1) (previously cited).
Regarding claim 27, modified Ninomiya teaches all of the elements of the claimed invention as stated above for claims 1 and 25. Modified Ninomiya teaches a first film compartment has a first solubility (Ninomiya, Abstract and Col. 3 Lines 10-20).
Modified Ninomiya is silent regarding an at least second film compartment having a second solubility.
Shen teaches a soluble, edible film composition for packaging wherein the film composition comprises a polysaccharide (pullulan) and a plasticizer (Shen, Abstract, Par. 0005-0010, 0011, 0014, 0019-0021, and 0031). Shen teaches the film composition is formed into a package which comprises one or more compartments (Shen, Par. 0029, 0038-0040, and 0067-0068 – see “multiple adjacent cavities”).
Modified Ninomiya and Shen are analogous art as they both teach soluble, edible film compositions comprising a polysaccharide and a plasticizer that are formed into a package having a compartment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the packaging configuration of modified Ninomiya to have multiple compartments. This would allow for multiple cavities in the packaging formed from a single operation that can separately encase different items (Ninomiya, Par. 0038-0040 and 0067-0068).
Regarding the limitation of the second compartment having a second solubility, the second compartment is formed from the film composition and the film composition is soluble (Ninomiya, Col. 3 Lines 10-20). Therefore, the second compartment would have a second solubility.
Claims 46 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. in view of Withers and Libe et al. as applied to claim 1 above, further in view of Murata (WO 2011118613 A1; herein English machine translation relied upon for all citations) (previously cited).
Regarding claim 46, modified Ninomiya teaches all of the elements of the claimed invention as stated above for claim 1. Modified Ninomiya is silent regarding the functionality, appearance, and color of the film composition for packaging is enhanced by incorporation of at least one of an herb selected from the group consisting of dill, garlic, indigo, mustard, oregano, tarragon, and turmeric and/or a spice selected from the group consisting of allspice, curry, oregano, pepper, sandalwood, and sesame into the film composition for packaging.
Murata teaches a soluble film for packaging foodstuff wherein the film composition comprises natural flavorings such as turmeric (Murata, Pages 1, 3, and 6-8).
Modified Ninomiya and Murata are analogous art as they both teach soluble films for packaging a foodstuff. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the natural flavorings of Murata into the film composition of modified Murata. This would allow for a film that can impart color and flavor into a foodstuff product (Murata, Page 3).
This would further result in the aesthetic, functionality, appearance, and color of the film being impacted by the incorporation of an herb into the film composition, thus satisfying the claim limitations.
Regarding claim 48, modified Ninomiya teaches the film composition further comprises a flavoring that is an extract of a fruit such as an apple (Murata, Pages 7-8).
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. in view of Withers and Libe et al. and Murata as applied to claim 1 and 46 above, further in view of Schweinfurt et al. (US 20110129506 A1) (newly cited).
Regarding claim 47, modified Ninomiya teaches all of the elements of the claimed invention as stated above for claims 1 and 46. Modified Ninomiya further teaches the film composition comprises a colorant that is a food dye (Ninomiya, Col. 4 Lines 45-64).
Ninomiya is silent regarding the colorant being a vegetable-based and/or a fruit-based dye selected from the group consisting of carrot, red pepper, blueberry, tomato, plum juice, and indigo.
Schweinfurt teaches the use of a colorant in a food product, wherein the colorant comprises a vegetable-based dye from carrots (Schweinfurt, Abstract, Par. 0001-0004, 0011, and 0017-0019).
Modified Ninomiya and Schweinfurt are analogous art as they both teach food dyes for use in food products. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the carrot based food dye of Schweinfurt for the food dye of Ninomiya as it is an art recognized equivalent for the same purpose of a food dye, see MPEP 2144.06. Further, this would allow for coloring of the film composition (Schweinfurt, Par. 0011 and 0017-0019).
Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya et al. in view of Withers and Libe et al. as applied to claim 1 and 17 above, further in view of Kitamura et al. (US 20050233048 A1) (Newly cited).
Regarding claim 49, modified Ninomiya teaches all of the elements of the claimed invention as stated above for claims 1 and 46. Modified Ninomiya teaches the first foodstuff is an antioxidant and thus increases the antioxidant properties of the film composition, satisfying the limitation (Withers, Par. 0005-0009 and 0047). Modified Ninomiya teaches the film composition is formed into an edible packaging further encasing a second foodstuff which further supplements the film composition for packaging comprising the first foodstuff (Ninomiya, Abstract and Col. 3 Lines 10-20). Ninomiya teaches the edible package is consumed (see edible) including the second foodstuff and first foodstuff (Ninomiya, Abstract and Col. 3 Lines 10-20; Withers, Par. 0005-0009 and 0047). The nutritional value of the first foodstuff as an antioxidant would increase the antioxidant properties, thus satisfying the limitation of increasing the nutritional value of the second foodstuff encased by the film composition for packaging.
Modified Ninomiya is silent regarding the second foodstuff being selected from at least one of added vitamins, herbs, and spices.
Kitamura teaches an edible, soluble film composition comprising a film forming agent (Starch) and a plasticizer (Kitamura, Abstract, Par. 0012-0013). Kitamura teaches the film composition forms a packaging structure that encases a second foodstuff that is a spice (Kitamura, Par. 0073-0074).
Modified Ninomiya and Kitamura are analogous art as they both teach edible, soluble film comprising a film forming agent and a plasticizer, wherein the film encases a foodstuff. It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have used spices as the second foodstuff of modified Ninomiya. This would allow for the package and delivery of spices in an edible, soluble film (Kitamura, Par. 0073-0074; Ninomiya, Col. 3 Lines 10-20).
Response to Arguments
Applicant’s remarks and amendments filed 31 July 2025 have been fully considered.
Applicant requests withdrawal of the objections and rejections under 35 USC § 112 set forth in the previous office action.
The rejection under 35 USC § 112 set forth in the previous office action regarding the phrase “increased nutritional value” as the present claim amendments do not remedy the issue.
The other objections and rejections under 35 USC § 112 set forth in the previous office action have been withdrawn due to the present claim amendments.
Regarding arguments directed towards the rejections over prior art, on pages 14-21 of the remarks, Applicant argues that Shen does not teach the newly amended features of claim 1 as Pullulan is not plant based. This is found moot.
The grounds of rejection have been updated above in view of the present claim amendments. The new grounds of rejection to claim 1 no longer rely upon previously cited Shen. Instead, the new grounds of rejection above rely upon newly cited Ninomiya to teach the claimed plant based film forming agent as described above.
Secondly, on pages 21-33 of the remarks, Applicant argues that the natural antioxidant of Withers does not satisfy the broadest reasonable interpretation of the claimed first foodstuff. This is not found persuasive for the following reasons:
Withers teaches a film composition for food packaging comprising a natural antioxidant (Withers, Abstract, Par. 0005-0009, and 0047). Withers teaches the natural antioxidant is extracted or derived from a plant material, wherein the plant material is a fruit (Withers, Par. 0005-0009 and 0063-0065). Withers teaches the extracted or derived plant material is incorporated into the film composition in the form of a powder (Withers, Par. 0047 and 0059). Withers thus teaches incorporating a powder of a fruit into a film composition for food packaging. Fruit is a foodstuff and therefore a powder of a fruit satisfies the claimed limitation of a foodstuff. This is further shown as the instant claim 1 lists options of the first foodstuff which includes a powder of a fruit.
Regarding Applicant’s assertation that a “natural antioxidant” or preservative would never be interpreted as a foodstuff, as stated above Withers’ natural antioxidant is a powder of a fruit, which is a foodstuff. While the fruit powder may have antioxidant or preservative properties, a foodstuff does not exclude food materials (Such as powder of a fruit) that have antioxidant properties.
In view of the above, Withers teaches including a powder of a fruit in a film composition for food packaging, which satisfies the claimed first foodstuff, and Applicant’s argument is unpersuasive.
Thirdly, on pages 21-33, Applicant argues that Withers does not teach a compostable film composition comprising biodegradable, plant based film forming agents and plasticizers. This is not found persuasive for the following reason:
Note that while Withers does not disclose all the features of the present claimed invention, Withers is used as a secondary reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the other applied prior art establishes a prima facie case of obviousness over the presently claimed invention. Withers teaches that it is well known and well within the ability of one of ordinary skill in the art to include a powder of a fruit into a film composition for food packaging as stated in the grounds of rejection above. Meanwhile, the primary reference, newly cited Ninomiya, and previously cited Libe are utilized to render obvious a compostable film composition comprising a biodegradable, plant based film forming agent and a biodegradable, plant based plasticizer. Therefore, Ninomiya in view of Libe and Withers render obvious the instant claim 1 and Applicant’s argument is unpersuasive.
Fourthly, on pages 34-35 of the remarks, Applicant argues that Verrall does not teach the instant claim 12. This is found moot.
The grounds of rejection have been updated above in view of the present claim amendments. The new grounds of rejection to claim 12 no longer rely upon previously cited Verrall. Instead, the new grounds of rejection rely upon newly cited Myers to teach the limitations of newly amended claim 12.
Fifthly, on pages 36-38 of the remarks, Applicant argues that Barkalow does not teach a film for packaging and delivering a foodstuff and thus Shen in view of Barkalow does not teach the instant claim 21. This is found moot.
Due to the present claim amendments, the grounds of rejection have been updated above. In the grounds of rejection above, newly cited primary reference Ninomiya is utilized to teach the instant claim 21.
However, to the extent that Applicant’s arguments in regards to Barkalow could be applied to any rejection above, it is noted that while Barkalow does not disclose all the features of the present claimed invention, Barkalow was used as a secondary reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the other applied prior art establishes a prima facie case of obviousness over the presently claimed invention. Barkalow teaches that it is well known and well within the ability of one of ordinary skill in the art to include a nutritional supplement and/or coloring agent into a film composition for food packaging as stated in the previous grounds of rejection.
Sixthly, on pages 38-40 of the remarks, Applicant argues that Murata does not render obvious claims 46-49 as Murata is non-analogous art as Murata does not teach a stand-alone film composition that comprises a plasticizer. This is not found persuasive for the following reason:
In response to applicant's argument that Murata is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Murata is in the same field of the inventor’s endeavor as Murata teaches soluble film for packaging foodstuff wherein the film composition comprises natural flavorings (Murata, Pages 1, 3, and 6-8). Murata’s base sheet is used for food packaging and is interpreted as the claimed “film”. While Murata is silent regarding a plasticizer, it is noted that Murata is still analogous to the claimed invention as Murata teaches a soluble film for packaging foodstuff as stated above. Therefore, Murata is analogous art and Applicant’s argument is unpersuasive.
Seventhly, on pages 42-45 of the remarks, Applicant argues that Shen in view of Withers and Murata do not teach the inclusion of an unprocessed herb or spice selected from the claim 46 list and the impact of the herb or spice on the functionality, appearance, and color of the film composition. This is not found persuasive for the following reasons:
To note, the grounds of rejection above have been updated in view of the present claim amendments. Furthermore, the limitation of the functionality, appearance, and color of the film composition being “enhanced” has been rejected under 35 USC § 112 above as it is unclear what exactly constitutes an “enhanced” functionality, appearance, and color of a film composition. Therefore, claim 46 is considered satisfied if the incorporation of the claimed herb or spice is affected in any way.
Regarding Applicant’s argument towards Withers in regard to claim 46, it is noted that Withers teaches the claimed first foodstuff as stated above. Furthermore, Withers is not relied upon to render obvious the claimed herb or spice of claim 46. Instead, Murata is utilized to render obvious the claimed herb or spice.
Regarding Murata, Murata teaches a soluble film for packaging foodstuff wherein the film composition comprises natural flavorings such as turmeric (Murata, Pages 1, 3, and 6-8). Turmeric satisfies the limitation of the claimed herb as turmeric is listed as an acceptable herb in the instant claim 46. Regarding the functionality, appearance, and color of the film composition being impacted, it is noted that incorporating a natural flavoring affects the flavor and thus affects the functionality of the film composition. Furthermore, including a new material in the film composition, such as turmeric, would naturally affect the appearance and color to at least some extent, therefore satisfying the claimed limitation. In response to applicant's argument that the prior art does not specifically discuss the effect on the functionality, appearance, and color of the film composition, 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).
Regarding Applicant’s argument towards “unprocessed” herbs and spices, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the herbs and/or spices being unprocessed) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, Murata renders obvious the claimed herb of the instant claim 46 and Applicant’s argument is unpersuasive.
Eighthly, on pages 45-50 of the remarks, Applicant argues that Murata does not teach the colorant of claim 47. This is found moot:
The grounds of rejection above have been updated due to the present claim amendments. Due to the present claim amendments, previously cited Murata is no longer relied upon to teach the claimed colorant of claim 47. Instead, newly cited Schweinfurt is utilized to render obvious the claimed colorant.
Ninthly, on pages 50-51 of the remarks, Applicant argues the prior art of record does not teach the specific extracts of claim 48. This is not found persuasive for the following reason:
Murata teaches a film composition that includes a natural flavoring that may be the extract of an apple (Murata, Pages 6-8). Murata therefore satisfies the limitation of comprising a flavoring that is an extract of an apple. Regarding Applicant’s argument that the prior art does not teach each of the listed extracts, it is noted that the features upon which applicant relies (i.e., the film composition comprising each extract) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claims require that the flavoring is selected from the group consisting of the listed extracts and thus only requires one of the extracts be present. Therefore, Murata renders obvious the claimed flavoring of the instant claim 48 and Applicant’s argument is unpersuasive.
Tenthly, on pages 51-52 of the remarks, Applicant argues that the prior art of record does not teach the inclusion of the claimed added vitamins, herbs, and spices to increase nutritional value. This is not found persuasive for the following reasons:
To note, the grounds of rejection have been updated in view of the present claim amendments. In the new grounds of rejection above, newly cited Kitamura is utilized to render obvious the second foodstuff being an added vitamin, herb, or spice.
Regarding Applicant’s arguments towards “increasing nutritional value”, it is noted that this term is indefinite and has been rejected under 35 USC § 112 above as it is unclear exactly what is required to meet the limitation of increased nutritional value. Therefore, the limitation of “increasing nutritional value” is satisfies if any property of the film composition of foodstuff. It is noted that both the first foodstuff and second foodstuff would both add any nutritional value they have to the overall film composition and packaging structure and therefore satisfy the limitation of increased nutritional value. In response to applicant's argument that the prior art does not specifically discuss “increasing nutritional value”, 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).
Therefore, the prior art of record renders obvious the claimed first foodstuff and second foodstuff of added vitamins, herbs, or spices, and Applicant’s argument is unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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