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 status
The examiner acknowledges the claims filed 09/16/2025.
Claims 1, 5, 8-9, 25-28, 30-34 and 42-46 are pending in the application. Claims 27-28, 30-33 and 42-46 are previously presented. Claims 1, 5, 8-9, 25-26 and 34 are withdrawn on the ground of election by original presentation. Clams 2-4, 6-7, 10-24 and 35-40 are previously cancelled. Claims 27-28, 30-33 and 42-46 are examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 27-28, 30-33 and 42-46 are rejected under 35 U.S.C. 103 as being unpatentable over Kaun US Patent Application Publication No. 2019/0104748 A1 (hereinafter referred to as Kaun) in view of Lederman US Patent No. 9,283,173 (hereinafter referred to as Lederman).
Regarding claims 27-28, 30-33, 42 and 44-46, Kaun teaches a coating composition for a plant matter (e.g., a produce including fruits and vegetables, 00150) comprising a coating agent dissolved in a solvent, wherein the coating composition is applied to the surface of the produce to form a protective coating that is edible, wherein the coating agent comprising one or more of fatty acid, monoglyceride, amine, ester, wax (0008-0012; 0099; 0125; 0150); wherein the example of the monoglyceride is monostearin (e.g., glyceryl stearate) and glyceryl palmitate (0142-0143), wherein the amount of the monoglyceride is at least 90% of the coating agent (0144), and wherein the example for the fatty acid is stearic acid and palmitic acid (0139). Kaun teaches that protective coating should have a thickness of 0.1-10 microns (0150). The protecting coating from of the coating agent as disclosed by Kaun reads on the agricultural barrier film as recited in claim 27.
The amount of monoglyceride and the thickness value of the barrier film as disclosed by Kaun encompass or overlap with the ranges as recited in claims 27, 30 and 42. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
On the limitation that the barrier film does not contain wax: Kaun teaches that wax is an optional ingredient in the coating agent (0011; 0099). To this end, reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component. See MPEP 2123 I.
On the limitation that the barrier film is free of water , Kaun teaches that the coating agent per se is dissolved in a solvent such as water and applied to the surface of the produce which is allowed to dry (0085).
Kaun teaches that the coating agent comprises an amine but is silent regarding the amine being an amino acid selected from the group consisting of H, R, K and O. Kaun is further silent regarding the molar ration of the fatty acid to that of the amino acid being 1:3 to 3:1.
Lederman in the same field of endeavor teaches a coating composition for fruits and vegetables comprising, inter alia, fatty acid, basic amino acid and a surfactant wherein the fatty acid is lauric acid, myristic acid, palmitic acid or stearic acid at an amount of 0.5-30% or narrowly 1-10% (w/w) by weight of the coating composition, wherein the basic amino acid is K, R or H at an amount of 0.5-15% or narrowly 1-6% by weight of the coating composition, and wherein the surfactant is a monoglyceride (e.g., glyceryl hydroxystearate, glyceryl laurate, glyceryl linoleate, glyceryl myristate, glyceryl oleate and glyceryl stearate) (column 7, line 39-48; column 5, line 4-5, 11-15, 24-28, 30-31; 34-38 and 55-58; column 4, line 60-62; column 3, line 63-66).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kaun by applying a basic amino acid such as K, R and H as the amine species in the coating agent of Kaun with reasonable expectation of success, for the reason that prior art has established that each of the aforementioned amino acids is a suitable amine in a produce coating that comprises fatty acid and monoglyceride. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.07.
On the molar ratio of the fatty acid to the basic amino acid: it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have manipulated the amounts of fatty acid and basic amino acid in the coating agent of Kaun such that the coating composition that comprises the coating agent and the solvent comprises 0.5-30% or narrowly 1-10% fatty acid and 0.5-15% or narrowly 1-6% amino acid, given that prior art has established that those amounts of fatty acid and amino acids are suitable in a coating composition for a produce. The molar ratio of fatty acid to the basic amino acid as disclosed by Lederman overlaps with the ratio as recited in the claims, for example a composition comprising 0.5% palmitic acid and 0.5% histidine will have a molar ratio of palmitic acid/histidine at 0.6 (MW of palmitic acid is 256 g/mol and that of histidine is 155 g/mol, thus the molar ratio of the palmitic acid to histidine in the composition is (0.5/256)/(0.5/155) = ~0.6). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claim 43, Lederman teaches that the composition comprises a preservative (column 12, line 28-29). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Kaun by including a preservative in the coating agent of Kaun for preventing spoilage (e.g., as the name “preservative” suggests).
Response to Argument
Applicant's arguments filed 09/16/2025 have been fully considered but they are not persuasive.
Applicant argues on pages 6-9 of the Remarks that one of ordinary skill in the art would not have a reasonable expectation of success in selecting a basic amino acid of Lederman (e.g., H, R or K ) for use in a monoglyceride-based composition of Kaun, for the reason that first, Kaun merely mentions amines and does not mention amino acid thus one would not have understood that amino acid is suitable; and second, the basic amino acid as disclosed by Lederman are suitable for use in a wax-based coating composition
The arguments are considered but found not persuasive because such arguments fail to view the prior art in its entirety. To this end, where Kaun teaches that amines could be used in a coating composition for a produce and Lederman establishes that amines type of H, R or K are suitable amines in a coating composition for a produce, one skilled in the art would have been motivated to use H, R or K in the coating composition of Kaun and have a reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.07. Further, applicant’s assertion that the basic amino acid H, R or K are only suitable for a wax-based coating composition lacks evidentiary support. There is no evidence from prior art that H, R or K will fail in other coating. Again, in its entirety, prior art has established that 1) amines could be used in a coating, and amines subtypes of H, R or K are suitable amines for a coating, thus one skilled in the art would have been motivated to use H, R or K in the coating composition of Kaun and have a reasonable degree of prediction that H, R or K will work.
Further, applicant’s attention is drawn to MPEP 2143.02 II, which states that obviousness does not require absolute predictability.
Additionally, the examiner notes that applicant has not shown any criticality associated with a basic amino acid H, R or K in the coating.
For the reason set forth above, claims 27-28, 30-33 and 42-46 are continuously rejected over Kaun as modified by Lederman.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHANGQING LI/Primary Examiner, Art Unit 1791