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 .
This office action is in regard to the application filed on September 9, 2022 and in response to a Request for Continued Examination filed on July 28, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 28, 2025 has been entered.
Status of Application
The amendment filed July 28, 2025 has been entered. Claims 1, 3, 6-15, 22, and 24-30 are currently pending in the application. Claims 2, 4, 5, 16-21, and 23 have been canceled; claims 1, 3, 7, 8, and 27-29 have been amended; claim 30 is new. Claims 1, 3, 6-15, 22, and 24-30 are hereby examined on the merits.
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.
Claim 27 is 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 27, which depends from claim 1, recites that the concentration of the coating agent in the aqueous dispersion is between 30-125 mg/mL, which broadens and overlaps the claimed range of claim 1, 5-90 mg/mL, thereby rendering the claim indefinite. It is unclear which range is intended to be claimed. For the purposes of examination, the range of claim 27 will be interpreted as 30-90 mg/mL.
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 1, 3, 6-15, 22, and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US Patent 4,338,342; cited on PTO-892 dated Sept. 7, 2023) in view of Hoefnagels (EP 1854360; cited on PTO-892 dated Sept. 7, 2023), herein after referred to as Tan and Hoefnagels, respectively.
Regarding claims 1, 3, and 30, Tan discloses a method to reduce the ripening of fruits and vegetables comprising:
preparing an aqueous solution (i.e., a dispersion) (col. 3 lines 46-61; claim 1) comprising 0.2-5% by weight of at least one sucrose ester (i.e., a coating agent) comprising one or more monoesters and diesters (col. 3 lines 12-17), wherein the sucrose ester (i.e., coating agent) is 100 wt.% monosucrose glyceride palmitate (i.e., sucrose monopalmitate) (Example 1);
applying the aqueous dispersion to the surfaces of fruits and/or vegetables; and
drying the aqueous dispersion on the fruits and/or vegetables, wherein the solution forms a coating comprising the sucrose ester on the fruit and/or vegetables, as the solution is also referred to as a coating solution (col. 3 lines 46-61; claim 1).
The claimed range of 5-90 mg/mL, when converted to mg/mg under the assumption that 1mL=1mg, becomes 5mg/1000mg to 90mg/1000mg, or 0.5 wt.% to 9 wt.%. Thus, the claimed range overlaps with the range disclosed by Tan, 0.2-5 wt.%. Where the claimed ranges 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). See MPEP 2144.05.I.
Tan discloses that the coating agent is prepared by melting a sucrose ester in a water bath, mixing the liquid sucrose ester with hot water at 90°C, then mixing with cold water, thereby obtaining the coating dispersion (col. 4, Example I). Tan discloses that the melting point of the sucrose ester is 40-60°C (col. 3 line 32). Based on the range of the melting point, the temperature of the finished dispersion is 79.1-80.3°C, the math to calculate these temperatures is written out below in the “Examiner’s Note.” This range overlaps within the claimed range of 60°C to 80°C. Where the claimed ranges 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).
Further iterations of this calculation were completed in order to take into account a range of water temperatures considered to be “cold water” (1-20°C) and a range of the mass of the sucrose ester present, and subsequent change in the amount of cold water, in Example 1 of Tan (0.025-0.45 kg sucrose ester and 0.55-0.975 L cold water). In Example 1 of Tan, cold water is added to the sucrose ester and hot water mixture at an amount to obtain 5 L of the solution. Since the amount of hot water is fixed at 4 L, a change in the amount of the sucrose ester changes the amount of cold water. Taking all of these variations into account, the lowest temperature is calculated to be 72.46°C (melting point of sucrose ester is 40°C, mass of sucrose ester is 0.025 kg, and temperature of cold water is 1°C) and the highest temperatures are calculated to be 80.85°C (melting point of sucrose ester is 60°C, mass of sucrose ester is 0.5 kg (as in Example 1), and temperature of cold water is 20°C) and 80.35°C (melting point of sucrose ester is 60°C, mass of sucrose ester is 0.45 kg, and temperature of cold water is 20°C). This range, 72.46-80.85°C, still overlaps with the claimed range.
Tan does not disclose that the solution is dried on the surface of the fruit/vegetable under a flow of air.
Hoefnagels, in the same field of invention, teaches drying a vegetable product, still wet with a solution of sugar esters (preferably sucrose esters), with a flow of hot air ([0030]-[0031]; [0036]-[0037]), thereby forming a coating comprising the coating agent on the agricultural product. Hoefnagels offers the motivation that a flow of air ensures the drying of a completely coated product [0012], as well as that a flow of co-current hot air contacted with the still wet coated product makes the wet solution form a thermally insulating protective layer [0035], thereby avoiding adverse hot air effects [0034]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the drying method of Tan with the hot air flow of Hoefnagels. One would have been motivated to make this modification for the benefit of a completely dry, coated fruit and/or vegetable product with a thermally insulated protective layer.
Neither Tan nor Hoefnagels teach that the air drying’s purpose is to promote the self-assembly of bilayers, however per MPEP 2144.IV., rationale different from applicant’s is permissible.
Additionally, given that Tan in view of Hoefnagels teaches drying the composition under a flow of air, the claimed multiplicity of bilayers is considered to be present. Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.I.
Examiner’s Note:
The math to calculate the final temperature of the coating dispersion is as follows:
Q = mcΔT, and thus, Qlost=Qgain, where Q is heat (J), m is mass (kg), c is specific heat capacity (J/g°C), and ΔT is change in temperature (°C).
cwater = 4182 J/kg°C
csucrose ester = 2475 J/kg°C
Per Example 1 of Tan:
msucrose ester = 0.5 kg (500 grams)
mhot water = 4 kg (4 L)
mcold water = 0.5 kg (amount left to have dispersion be 5 L)
ΔTsucrose ester = 60°C – T (when the melting point is 60°C) or 40°C – T (when the melting point is 40°C), and where T is the final temperature of the dispersion.
ΔThot water = 90°C – T
ΔTcold water = T - 15°C (15°C is the approximate general temperature of what is considered cold water).
To calculate the final temperarure,
Qlost=Qgain, therefore, Qlost, sucrose ester + Qlost, hot water = Qgain, cold water
Inputting the equation for each Q, the equation becomes:
m
s
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Thus for the low melting point of sucrose ester:
0.5
k
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2475
J
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(
40
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For the high melting point of sucrose ester:
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k
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60
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=
80.3
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C
Regarding claim 3, Tan teaches an example emulsion comprising sucrose monopalmitate (i.e., sucrose palmitate) (col. 5 line 39).
Regarding claim 6, Tan teaches that the solution of sucrose esters is further mixed with residual monoglycerides (i.e., fatty acid esters) (claim 1).
Regarding claim 7, Tan teaches that a total concentration of the sucrose ester (i.e., coating agent) in the aqueous dispersion is 0.2-5% by weight (col. 3 lines 12-15). The claimed range, when converted to mg/mg under the assumption that 1mL=1mg, becomes 25mg/1000mg to 75mg/1000mg, or 2.5 wt.% to 7.5 wt.%. Thus, the claimed range overlaps with the range, 0.2-5 wt.%, disclosed by Tan. Where the claimed ranges 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). See MPEP 2144.05.I.
Regarding claim 8, Tan teaches that the aqueous dispersion consists of sucrose esters of higher fatty acids (claim 1), and is additionally mixed with antioxidants, stabilizers, preservatives, or antibiotics (claim 2), as well as natamycin (claim 3), which is an antimicrobial peptide.
Therefore, while the solution contains added stabilizers, the solution is free of added surfactant.
Regarding claim 9, modified Tan teaches the method of drying the dispersion with a flow of air as set forth above with regard to claim 1.
Modified Tan teaches that the hot airflow is at a temperature of at least 60°C and preferably between 70°C and 80°C (a temperature range of 60-80 °C) (Hoefnagels: claim 3), which lies within the claimed range of 50-100 °C.
Regarding claims 10-15, modified Tan does not explicitly teach that a multiplicity of bilayers are formed in the dispersion on the agricultural product.
However, per MPEP 2112.01.I, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Given that the process as taught by modified Tan of applying the coating with the sucrose esters to the surface of agricultural products and then drying with warm air, is substantially identical to the method as claimed in the instant claims, it is expected that the process of modified Tan will also provide the bilayers as instantly claimed. This process is presumed to produce the same results as claimed with regard to the multiplicity of bilayers, open bilayers, lamellar bilayers, closed bilayers, and spherical or cylindrical bilayers of the instant claims 10-15. Therefore, a prima facie case of obviousness exists.
Claim 22 is met through the rejection of claim 6 as set forth above with regard to the fatty acid esters. Claim 6 requires the selection of one of one or more fatty acid esters, or one or more fatty acid salts, or a combination thereof; by selecting fatty acid esters to meet claim 6, claim 22 is also considered to be met.
Regarding claims 27 and 28, as best understood with regard to the 112(b) rejection above, Tan teaches preparing the dispersion as set forth above with regard to claim 1, wherein
the sucrose ester comprises sucrose monopalmitate (i.e., sucrose palmitate) (col. 5 line 39); and
the solution composition has a sucrose ester content (i.e., a total concentration of the coating agent ) of 0.2-5% by weight (col. 3 lines 12-15).
The claimed range, when converted to mg/mg under the assumption that 1mL=1mg, becomes 30 mg/1000mg to 90 mg/1000mg, or 3 wt.% to 9 wt.%. Thus, the claimed range overlaps with the range disclosed by Tan. Where the claimed ranges 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).
Regarding claim 29, Tan teaches preparing the dispersion at a temperature of approximately 80°C (Example 1) as set forth above with regard to claim 1, wherein
the sucrose ester comprises sucrose monopalmitate (i.e., sucrose palmitate) (col. 5 line 39); and
the solution composition has a sucrose ester content (i.e., a total concentration of the coating agent ) of 0.2-5% by weight (col. 3 lines 12-15).
The claimed concentration, when converted to mg/mg under the assumption that 1mL=1mg, becomes 50mg/1000mg, or 5 wt.%. Thus, the upper limit taught by Tan meets the claim limitation.
Claims 6 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US Patent 4,338,342; cited on PTO-892 dated Sept. 7, 2023) in view of Hoefnagels (EP 1854360; cited on PTO-892 dated Sept. 7, 2023), as applied to claim 1 above, and as evidenced by Von Brachel et al. (GB 1,188,614), herein after referred to as Von Brachel.
Regarding claims 6 and 26, Tan in view of Hoefnagels teach the method of reducing the ripening rate of an agricultural product as set forth above with regard to claim 1.
Tan also teaches that the sucrose ester of the invention can be prepared by various suitable processes, and cites GB 1,188,614 (Von Brachel) as disclosing a suitable process (col. 2 lines 9-29).
Von Brachel, in the same field of invention, teaches that the final sucrose ester component comprises methyl stearate (i.e., a fatty acid ester that is a methyl ester) (col. 2, Example 1). Therefore, the sucrose ester in the coating agent of Tan comprises a methyl fatty acid ester, as evidenced by Von Brachel.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US Patent 4,338,342; cited on PTO-892 dated Sept. 7, 2023) in view of Hoefnagels (EP 1854360; cited on PTO-892 dated Sept. 7, 2023), as applied to claim 1 above, and further in view of Ukai et al. (US Patent 3,997,674; cited on PTO-892 dated Jan. 25, 2024), herein after referred to as Ukai.
Tan in view of Hoefnagels teach the method of reducing the ripening rate of an agricultural product as set forth above with regard to claim 1.
Regarding claim 24, Tan and Hoefnagels are silent as to that a thickness of the coating is less than 2 microns.
Ukai, in the same field of invention, teaches a coating on agricultural products for the preservation thereof (Abstract), wherein the coating (also referred to as the “membrane”) has a preferred thickness of 3-20 microns (col. 8 lines 28-30). The taught range of 3-20 microns is substantially close to the claimed range of less than 2 microns. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I. A difference of 1 micron is not expected to impart a substantial difference in the final product or methos – the difference between the claimed range and the range taught by Ukai is virtually negligible absent any showing of unexpected results or criticality. As such, the range taught by Ukai renders obvious the claimed ranges.
Ukai offers the motivation that while coating thickness can be adjusted, the thickness taught is suitable for an agricultural product because it provides a coating that results in a maximum rate of drying and successful preservation (col. 9 lines 17-28). Therefore, 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 the coating of Tan at the dried thickness of Ukai. One would have been motivated to make this modification for the benefit of applying a coating thickness that allows for successful preservation of the desired agricultural product.
Regarding claim 25, Tan and Hoefnagels are silent as to that the thickness of the coating is less than 5 microns and that a grain size of the coating is 2-100 nm.
Ukai teaches a coating on agricultural products for the preservation thereof (Abstract), wherein the coating (also referred to as the “membrane”) has a preferred thickness of 3-20 microns (col. 8 lines 28-30) and a particle size (i.e., grain size) of 0.1-10 microns (100-10,000 nm) (col. 7 lines38-39). These thickness and particle size ranges taught by Ukai overlaps with the claimed respective ranges of under 5 microns and 2-100 nm, and where the claimed ranges 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).
Ukai offers the motivation that the while coating thickness can be adjusted, the thickness taught is suitable for an agricultural product because it provides a coating that results in a maximum rate of drying and successful preservation (col. 9 lines 17-28). Ukai offers the additional motivation that coatings with the taught particle sizes exhibit maximum preservations effects (col. 7 lines 31-39). Therefore, 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 the coating of Tan at the dried thickness and particle size of Ukai. One would have been motivated to make this modification for the benefit of applying a coating thickness with a coating particle size that allows for successful and maximum preservation of the desired agricultural product.
Response to Arguments
Applicant's arguments filed July 28, 2025 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the Examiner for the following reasons.
Applicant argues that the temperatures of the solution of Tan calculated in the office action using equation Q = mcΔT cannot be relied upon due to uncertainty in the results caused by multiple assumptions. The assumptions include a closed system and the temperature of cold water. Additionally, applicant argues that example 1 of Tan does not teach a concentration as claimed nor applying the dispersion at an elevated temperature (remarks, p. 5-7).
This argument is not persuasive. While Example 1 of Tan specifically teaches a 125 g/L dispersion of the sucrose ester, Tan also does teach a wider acceptable range of the sucrose ester, as set forth above in the rejection.
The assumptions made in the calculations are reasonable; “cold water” is generally considered to be water below 15°C and the vessel used in Example 1 of Tan is in a hot water bath (i.e., jacket) at 100°C, which is a greater temperature than any of the temperatures used in the example, so it is reasonable to assume that minimal heat would be lost to the surroundings. Where applicant argues that the range of melting points was drawn only from Tan’s description of suitable ester mixtures, this is not a persuasive argument as the ester mixture used in an example of Tan would be a suitable mixture possessing the preferred melting point, as Tan is teaching a preferred embodiment. Nevertheless, additional calculations were made to take into account a range of cold water temperatures and a range of sucrose ester concentrations, as mentioned in the rejection above. As an example, changing only the cold water temperature range to a low of 1°C and a high of 20°C, while still taking into account the high and low melting points, the final temperatures are 77.64, 79.62, 78.87, and 80.85°C, which are not much different than those previously calculated and are also overlapping with the claimed range. The additional calculations included those that only changed the mass of the sucrose ester and those that changed both the mass of the sucrose ester and the cold water temperatures. The lowest temperature calculated was 72.46°C and the highest was 80.85°C, the range of which overlaps with the claimed range and is substantially close to the upper limit.
Even if these calculations were not taken into consideration, and the temperatures relied upon were only those that were explicitly recited by Tan, Tan still teaches preparing the dispersion at a maximum temperature of 90°C (Example 1), which is sufficiently close to the upper limit of the claimed range. Moreover, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.II.A.
Regarding applicant’s argument that Tan does not teach applying the dispersion at an elevated temperature, this is not persuasive as the instant claim also does not require that the dispersion is applied at an elevated temperature. The claim recites “preparing an aqueous dispersion…at a[n elevated] temperature…; applying the aqueous dispersion to a surface of the agricultural product.” Thus, the claims only require that the dispersion is prepared at an elevated temperature, which is what Tan also teaches.
Applicant argues that the instant invention provides unexpected results, specifically that sucrose ester dispersions prepared at elevated temperatures yield significantly increased gloss as compared to sucrose ester dispersions prepared at lower temperatures (remarks, p. 7-8).
This argument is not persuasive. Applicant has not shown sufficient evidence that these results are in fact unexpected and significant. Particularly, applicant has not shown that the method taught by the prior art would not also yield these results, which is required to overcome the rejection and prove unexpected results.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these claims are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791