DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9 March 2026, has been entered.
Response to Amendments
Status of Claims
The amendment, filed on 9 March 2026, is acknowledged.
Claim 42 has been amended.
Claims 57-61 have been cancelled.
New claims 62-66 have been added.
Claims 42, 44-55, and 62-66 are pending and under consideration in the instant Office Action.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 57-60 under 35 U.S.C. § 103 is rendered moot in view of Applicant’s cancellation of the claims. The rejection of claims 42 and 44-55 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendment to claim 42 and in favor of the new grounds of rejection below.
New Grounds of Objection
Claim Objections
Claim 63 is objected to for ending the claim with a comma. The comma should be substituted with a period.
Appropriate correction is required.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
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 42, 44-55, and 62-63 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.
Instant claim 42 was amended to recite “wherein the coating composition is non-aqueous”. In the remarks filed on 9 March 2026, Applicant states that support for the amendment can be found throughout the specification and claims, including in para. [0076], [0110], [0129], [0148], [0153], [0158], and [0162]. However, none of the cited para. nor the rest of the specification disclose the phrase “non-aqueous”, nor can support be found elsewhere for excluding water. Therefore, the amendment is considered to introduce new matter and claim 42 is rejected under 35 U.S.C. § 112(a). Claims 44-55 and 62-63 depend from claim 42, incorporate all of its limitations, and are therefore also rejected. Applicant may overcome this rejection by amending claim 42 to remove the new matter or by directing the Office to the support in the original disclosure.
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 42, 44-55, and 62-66 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.
Instant claims 42, 48-49, and 64-66 recite “the wax” in lines 3-4 of claims 42 and 64-66 and in line 1 of claims 48-49. There is insufficient antecedent basis for this limitation in the claims because claims 42, from which claims 48-49 depend, and claims 64-66 recite “at least one wax” in line 1 of each claim. It is unclear if the limitations directed to “the wax” refer to one wax, some number of waxes, or all of the waxes, rendering the claims indefinite. Claims 44-47, 50-55, and 62-63 depend from claim 42, incorporate all of its limitations, and do not resolve the issue of indefiniteness so they too are rejected. Applicant may overcome this rejection by amending the claims to recite “the at least one wax”.
Newly submitted claims 64-65 recite a melting temperature that is “70-100°” in the final line of each claim. The temperature ranges lack a unit designating the temperature scale used for reference, rendering the claims indefinite. Applicant may overcome this rejection by amending the claims to recite “C” or “F”, depending on the temperature scale intended to be used. For the purpose of examination, the ranges will be interpreted as being measured on the Celsius temperature scale, consistent with claims 42 and 44-45.
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.
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 42, 44-55, 62-66 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (U.S. Patent Application Publication No. US 2005/0181019 A1, published on 18 August 2005, cited on the IDS submitted on 19 August 2022, hereafter referred to as Palmer) as evidenced by Harel (U.S. Patent No. 9,445,613 B2, published on 20 September 2016) in view of Debeaufort et al. (Ch. 5, Lipid-based Edible Films and Coatings in Edible Films and Coatings for Food Applications, 1st ed.; Springer, 2009; pg. 135-168., hereafter referred to as Debeaufort).
Palmer teaches the encapsulation of microcapsules of polyunsaturated fatty acids (PUFAs) with “hard fats” (which are used interchangeably with “oils” by Palmer, see para. [0065]) with melting points above 72 °F (22 °C), waxes, “especially higher melting point waxes”, and/or proteins (para. [0060]). Melting points above 22 °C are considered to be solid at room temperature. Examples of proteins that can be used in the encapsulating material include milk proteins, gelatin, which is obtained from hydrolysis of animal collagen and reads on the “hydrolysed protein” of instant claim 54, and vegetable proteins (para. [0088]). Waxes taught to be suitable for use in the encapsulating material include beeswax, carnauba wax, and candellia wax and hard fats suitable for use in the encapsulating material include the plant oils hydrogenated soy bean oil or cotton seed oil and stearic acid (para. [0097]). Palmer also teaches that the coating may comprise a mixture of encapsulating materials (para. [0097]) and that the materials suitable for encapsulation are water insoluble (para. [0087]), which is considered equivalent to the recited composition being “non-aqueous”.
In Example 2, Palmer teaches a coating comprising carnauba wax, paraffin, beeswax, and/or stearic acid. Those components have the following different melting points (as evidenced by U.S. Patent No. 9,445,613 B2):
Carnauba wax – 78-81 °C
Paraffin – 35-36 °C
Beeswax – 60-63 °C
Stearic acid - 71 °C
The above coating is applied in a spray at 212 °F (100 °C), indicating a melting temperature that is just below 100 °C. In Example 3, the coating composition of Example 2 is used on PUFAs and mixed into a nutrition bar. The bar is then subjected to a treatment at 85 °F, which reads on “a pasteurisation temperature” of instant claim 42, and the bar did not show signs of degradation up to 12 weeks. This pasteurisation temperature is lower than the melting point of the coating composition.
Palmer additionally teaches in Example 2 that the applied coating mixture contains “30 g of carnauba wax and 10 g of paraffin” (para. [0166]). The weight composition is 75% carnauba wax and 25% paraffin, weight compositions that are within the ranges disclosed in instant claim 46 and near the ranges disclosed in instant claim 47. Palmer discloses in Example 2 that stearic acid can be used, which is considered an oil by Palmer and the Applicant, as stated in para. [0132] of the instant spec. Finally, Palmer teaches that coconut oil is a vegetable fat suitable for use in their comestible composition (para. [0102] and Example 1), but does not teach the use of the oil in their coating.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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). In the above decisions, “the prior art taught carbon monoxide concentrations of ‘about 1-5%’ while the claim was limited to ‘more than 5%.’ The court held that ‘about 1-5%’ allowed for concentrations slightly above 5% thus the ranges overlapped.” With respect to ranges or amounts that do not overlap but are merely close, courts held that a prima facie case of obviousness also exists. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In MPEP § 2144.05.II.A., it is further stated that “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” Courts have supported this statement in several decisions, including In re Hoeschele where the Court of Customs and Patent Appeals wrote “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (406 F.2d 1403, 160 USPQ 809 (CCPA 1969)). More recently, the Supreme Court wrote “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007)).
These guidelines apply to the mass compositions disclosed by Palmer in Example 2. As stated above, Palmer discloses that stearic acid, an oil, may be substituted for paraffin resulting in a mixture that is 75% carnauba wax and 25% stearic acid, which falls within the range disclosed in instant claim 46. Each component is 5% from the range disclosed in instant claim 47 and in the absence of unexpected results from a composition comprising 70% wax and 30% oil as opposed to 75% wax and 25% oil, one of ordinary skill in the art would be able to optimize the ratio of carnauba wax and stearic acid and the claimed range is determined obvious in view of Palmer. See MPEP § 716.02(d) and In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Palmer does not teach coconut oil to be used in the coating of an edible product nor the coating mixture to be homogenised. These deficiencies are offset by the teachings of Debeaufort.
Debeaufort teaches an overview of edible films and coatings for food applications and details the characteristics, composition, and production of the films and coatings (Title and pg. 135-136, Introduction). Edible barriers are taught to have been “developed specifically for limiting moisture migration within foods” as a method of preventing food spoilage and the components comprising the barriers are taught to vary based on the intended application (pg. 137-138, 5.2.1 Lipid-Based Edible Films). Among a list of hydrophobic substances useful as film formers are vegetable native oils and fats, including coconut oil, and the natural vegetable and animal waxes from carnauba and bees (pg. 138, Table 5.1).
Debeaufort further teaches that “lipids can be combined with hydrocolloids, such as proteins” to take advantage of each component’s functional properties (pg. 139, 5.2.2 Composite Edible Films). In Fig. 5.3, the blending of lipids and macromolecules is taught to improve the mechanical properties of composite films. When blending multiple components in a film, Debeaufort notes that a more homogenous distribution is more efficient for controlling water transfer and that “a barrier coating can be efficient only if it forms a homogenous and continuous layer on the entire surface of the food product to be protected” (pg. 153-154, 5.4.4.1 Role of Preparation Technique).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention of Palmer to use coconut oil in the coating composition and to homogenize the composition prior to coating a substrate in view of the teachings of Debeaufort because the use of a technique to improve similar products in the same manner to impart known benefits produces predictable results. Palmer teaches an edible coating composition comprising at least one wax, which may be beeswax and/or carnauba wax, and at least one oil, which may be stearic acid, in amounts that render obvious the quantities recited in instant claims 46-47, with a melting temperature that is near 100 °C as recited in instant claims 42, 44-45, and 64-66, and proteins which may be milk proteins, vegetable proteins, or the hydrolyzed protein collagen. In addition, Palmer teaches that the coating composition may comprise a mixture of components and that coconut oil is appropriate to use in the substrate to be coated.
In view of the teachings of Debeaufort, one of ordinary skill would be motivated to use coconut oil in the coating composition of Palmer because Debeaufort teaches the oil to be suitable for use in forming a protective film on foods and that different components are more suitable than others in varied applications. The ordinary artisan would desire an optimal protective coating composition to protect substrates and would find it obvious to use coconut oil, which Palmer has taught as suitable for ingestion in their product, in the coating composition to arrive at an optimal coating for their intended application. The ordinary artisan would be further motivated to homogenize their coating composition prior to application because Debeaufort teaches that blending of lipids and macromolecules can improve the mechanical properties of composite films and that coatings can be efficient in protecting substrates only if they are homogenous. Palmer teaches that components in their coating composition can be mixed, but does not teach that they should be homogenized. A person of ordinary skill would desire their coating composition to be efficient and have improved mechanical properties and would therefore be motivated to homogenize the composition. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 42, 44-55, and 62-66 in view of the teachings of Palmer and Debeaufort.
Response to Arguments
The Applicant’s arguments, filed on 9 March 2026, have been fully considered but are not persuasive.
Applicant argues from para. 1-3 of pg. 7 that the Simonnet reference teaches an aqueous composition that is not comestible as required by amended claim 42 and new claim 62. The Simonnet reference is no longer used in the new grounds of rejection presented above and the arguments are therefore considered moot.
In the penultimate para. of pg. 7, Applicant argues that their composition has achieved “several unexpected benefits”. Guidelines on determining whether results are expected or unexpected are provided in MPEP § 716.02. To demonstrate that results are unexpected and significant, the Applicant has the responsibility of presenting evidence that establishes “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims”. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). Applicant has not presented evidence that their results are unexpected and unobvious or of both statistical and practical significance, has not compared their invention with the closest prior art, and has not presented evidence demonstrating the criticality of the claimed ranges commensurate in scope with the instant claims. Therefore, the allegation of several unexpected benefits is not found to be persuasive.
In the sections titled “Claim 62”, “Claim 63”, “Claims 64 and 65”, and “Claim 66” spanning pg. 7-10 Applicant argues against the Simonnet, Kinjuit, and Wang references. The Simonnet, Kinjuit, and Wang references are no longer used in the new grounds of rejection presented above and the arguments are therefore considered moot.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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