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 .
Claims 35-62 are pending in this application.
Claims 50-58 stand withdrawn from further consideration as being directed to a non-elected invention. Claims 35-49 and 59-62 will presently be examined.
Withdrawn grounds of rejection
The outstanding ground of claim 44 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of the amendment to claim 44 filed on 4/3/2026, which deleted claim language related to “preventing” microbial contamination.
The outstanding ground of rejection under 35 U.S.C. 102(a)(1) as being anticipated by Makower (US 2,890,120) is withdrawn in view of the amendment to the claims filed on 4/3/2026, which added a new wherein clause for a short cycle of maximum 3 minutes in independent claim 35.
The outstanding ground of rejection of claims 35-40 and 44-49 under 35 U.S.C. 103 as being unpatentable over Makower (US 2,890,120) is withdrawn in view of the amendment to the claims filed on 4/3/2026, which added a new wherein clause for a short cycle of maximum 3 minutes in independent claim 35. However, Applicant is advised of a new ground of rejection under 35 U.S.C. 103 wherein Makower is applied in view of secondary prior art teachings.
The outstanding ground of nonstatutory double patenting rejection over copending Application No. 18/025,464 is withdrawn in view of Applicant’s argument that the application was abandoned on 4/1/2026. However, said application has a CIP, published as US 20260123585 on 5/7/2026, which application claims are addressed hereinbelow.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 39, 40, 42, and 43 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.
In claim 39, examples are recited (“e.g. a growth hormone”), but examples that follow a broad genus are indefinite because they raise indefiniteness as to whether the examples are merely exemplary or limiting.
In claim 40, “the plant material” lacks antecedent basis. Similarly, in claim 40, “the treated plant material” lacks antecedent basis.
The silver content description in the claims is unclear. For example in claim 42, the silver content is recited as “at least 3.0 mg/kg dry substance in said at least one or more leaves” (emphasis added). Such language is confusing. What constitutes “dry substance” in a leaf? Is it what is dry on an intact leaf? If so, how is that measured? Note that the claims do not state that the leaf or stem has been dried and it is that dried leaf or stem weight that the claim is using as the basis for the denominator. See also claim 43, “at least 10.0 mg/kg dry substance in the stem” (emphasis added).
For these reasons, 39, 40, 42, and 43 are rejected again.
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 35-40, 44-49, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Makower (US 2,890,120) in view of Demir et al. (US 2018/0064124; hereinafter, Demir).
Makower discloses in her Example I a method of treating shredded fresh cabbage by exposing the cabbage to vacuum impregnation in a solution that contains hydrochloric acid, alcohol (ethanol), and sodium alkyl (C12-18) benzene sulfonate, which is an anionic surface active agent. See Example I, columns 3-4. Makower means ethanol by “alcohol” in Example I, as can be understood from column 2, lines 47, wherein alternatives such as propyl alcohol and isopropyl alcohol are referred to as “other solvents.” Makower discloses that vacuum impregnation is well known in the art in other applications and it involves immersing the plant material in a treatment solution, subjecting the system to vacuum, and then releasing the vacuum, which allows the solution to enter the “innermost recesses of the plant tissue” (column 3, lines 58-70).
Subsequent step of washing with water is disclosed (column 4, lines 23-27; column 5, lines 1-20). Step of dehydrating the treated cabbage is disclosed (column 4, lines 30-34; column 5, lines 13-16). Cold storage at about 32-50 °F (0-10 °C) is disclosed (column 4, lines 34-37). Makower does not disclose pulsed electrical field (PEF) treatment. Plant materials are preserved upon being treated by Makower’s method (column 1, lines 21-24, 44-49).
Demir (US 2018/0064124) disclose method of extending shelf life of “any type” of biological soft tissue, e.g., edible plant tissue (paragraphs 1, 41) by introducing one or more cell protective agents in to the extracellular and intracellular space of the biological soft tissue, rinsing, and cold storing (paragraphs 5-9, 36-38; claim 16). Many different types of cell protecting agents are disclosed, including proteins and sugars such as glucose, sucrose, trehalose (paragraph 12). Introduction of the cell protecting agents is obtained by vacuum impregnation (paragraphs 25-28), wherein time of impregnating under vacuum can vary from 30 seconds to 120 minutes and pressure range is “in the range of 100-15 mbar” (paragraph 42).
Independent claim 35: amendatory features filed on 4/3/2026
Makower teaches a method of treating plant materials by vacuum impregnation, which involves (column 3, see lines 60-70):
involves immersing the plant material in the treatment solution and subjecting the system to vacuum to draw air or other gases out of tissue. The vacuum is then released whereby the solution enters into the innermost recesses of the plant tissue. To obtain utmost contact between the solution and the enzymes in the tissue, the vacuum treatment may be repeated several times.
Also, Makower places cabbage in a vessel “with means by which the vessel could be evacuated,” adds said solution, wherein the vessel is evacuated, and after a vacuum has been established, the vacuum is “broken by allowing air to enter the system” and atmospheric pressure is restored See column 4, lines 60-76. Thus, Makower teaches at least three phrases, a pressure falling step, a pressure holding step to draw air or other gases out of plant tissue, and a pressure rising step, whereby the vacuum is “released” and the solution containing sodium alkyl (C12-18) benzene sulfonate, an anionic surface active agent, enters the plant tissue.
Claimed features of a minimum pressure range of 50-500 mbar and “wherein the method is performed during one or more short cycles of applying vacuum impregnation where each short cycle is performed during maximum of 3 minutes” are not explicitly disclosed by Makower. However, Demir teaches time of impregnating under vacuum can vary from 30 seconds to 120 minutes and pressure range is “in the range of 1000-15 mbar” (paragraph 42). It would have been obvious to the ordinary skilled artisan to vary the cycle time of “applying vacuum impregnation” to 3 minutes or less and at 50-500 mbar depending on the level of preservation required for the plant tissue.
Remaining dependent claims would have been obvious to the ordinary skilled artisan because Makower teaches a method of treating plant materials by vacuum impregnation of an aqueous solution comprising HCl, ethanol, and an anionic surfactant, wherein PEF treatment is not performed. Several specific claims are discussed below for further explanation.
Amended claim 38 requires a minimum pressure range of 60-300 mbar. Demir’s teaching is suggestive of this pressure range because Demir teaches 15-1000 mbar.
Claims 39 and 44 read on the aqueous impregnation solution to contain one or more ingredients, which include “antimicrobial” or “antiseptic agent.” Makower’s aqueous solution contains HCl and ethanol (the “alcohol” in Example I), both of which possess antimicrobial or antiseptic functionality.
Regarding claim 45, Makower does not explicitly exemplify a washing step comprising immersing the treated biological material into water “to wash sugars from the surface of the treated biological materials.” Although Makower does not specifically disclose immersion in the washing step, Makower teaches washing with water for removal of salt (column 4, lines 23-25). Immersion for removal of salt would have been an obvious washing step. As for “to wash sugars from the surface of the treated biological material,” it is noted that there is no prior application of sugar in claim 45 or its base claim 35. Thus, any sugar that could be present would be necessarily washed by washing with water as disclosed by Makower.
Claim 46 requires “partial” impregnation. The term “partial” is a rather broad one in the context of vacuum impregnation, which reads on anything less than complete impregnation, 99.99% impregnation, for example. Such level of impregnation would have been obvious to the ordinary skilled artisan.
Claim 47 requires “a resting period is applied subsequent to the vacuum or pressure impregnation.” Makower discloses steps of washing with water and dehydrating, which are readable on claimed “resting period.”
Regarding claim 48, Makower does not explicitly exemplify storing the biological material in a controlled storing environment. However, Makower discloses cold storage at about 0-10 °C, so the embodiment of claim 48 would have been obvious.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Response to arguments
Applicant’s arguments filed on 4/3/2026, to the extent that they are applicable to this new ground of rejection, have been considered but were deemed unpersuasive.
Applicant argues that “Makower does not provide any teachings or suggestions regarding using a surfactant and short time impregnation, much less any teachings or suggestions regarding the technical advantage of combining use of a surfactant and short time impregnation.” However, Makower’s Example I clearly teaches the use of a surfactant as a component of an aqueous impregnation solution. Although the “total time for the impregnation treatment was 10 minutes” (emphasis added) (column 4, see lines 70-65), the process of Example I consisted of 3 cycles, which means each cycle was approximately 3.3 minutes. In view of Demir’s teaching of 30 seconds to 120 minutes, a short cycle of 3 minutes or less would have been obvious to the ordinary skilled artisan.
For these reasons, Applicant’s arguments are unpersuasive, and claims 35-40, 44-49, and 61 are rejected.
Claims 35-36, 38-49, and 59-62 are rejected under 35 U.S.C. 103 as obvious over WO 2020/1227981 in view of Demir (US 2018/0064124) and Kofranek et al. (hereinafter, Kofranek).
WO 2020/122798 discloses treating plant material comprising the following steps (see claims 1-3, 6, 20):
- exposing plant material such as one or more of sprouts, cuttings, or cut flowers to vacuum impregnation in an aqueous solution that can contain various additives such as gamma-aminobutyric acid (GABA), 1-MCP, amino acids, silver nitrate;
- applying pulsed electrical field (PEF) treatment to the plant material in the aqueous solution before, simultaneously, or after vacuum impregnation;
- drying the plant material for removing water/moisture before packing the treated plant material;
- further comprising an active step for controlling microbial contamination of the aqueous solution by adding one or more antimicrobial agents, e.g., fungicides, bactericides, to the aqueous solutions (page 4, lines 3-7);
WO 2020/122798 further discloses partial impregnation (claim 5). Partial impregnation means that “not all of the air fraction is removed from the plant tissue, i.e. just some part of the air inside of the plant material is replaced with solution” (page 4, lines 29-32). The aqueous solution can be recirculated and reused (claim 8); and the aqueous solution can contain sugars such as glucose, trehalose, sucrose, or fructose, folic acid, plant hormones, antiseptic, carbohydrates, minerals, pesticides, and mixtures thereof (page 4, lines 8-23; page 5, lines 15-20), or “any type of agent” that can treat or affect the plant/flower tissue” (page 5, lines 21-22). After PEF treatment, cuttings of Pelargonium plants are washed in tap water having a temperature between 4-10 °C and then placed on a net to rest (page 8, lines 30-33). Resting period subsequent to PEF treatment and vacuum impregnation is thus disclosed (page 8, lines 16-33; claims 10-12). Resting period involves putting the plant material on a net material to remove water from surfaces of the plant material (claim 13). Resting period ensures that the plant material regains structure stability when coming from a wet environment before being dried actively (sentence bridging pages 6-7). Storing the plant material in a controlled environment, including at a temperature of 4-10 °C (claims 15-16), at humidity above 50% (claim 17), and incorporating the plant material into one or more packages with modified atmosphere (claim 18). Treating only a part of a plant material, such as only a part of a cutting, a part of a stem, only a flower, as well as treating entire plant material is disclosed (page 2, lines 9-16; page 5, lines 1-3). Variations in steps are disclosed (page 4, lines 24-25), including variations in steps of vacuum impregnation (page 2, lines 31-32). Prolonged shelf life is disclosed (page 3, lines 17-18; page 7, lines 17-19).
Demir (US 2018/0064124) discloses a method of extending shelf life of “any type” of biological soft tissue, e.g., edible plant tissue (paragraphs 1, 41) by introducing cell protective agents in to the extracellular and intracellular space of the biological soft tissue, rinsing, and cold storing (paragraphs 5-9, 36-38; claim 16). Many different types of cell protecting agents are disclosed, including proteins and sugars such as glucose, sucrose, trehalose (paragraph 12). Introduction of the cell protecting agents is obtained by vacuum impregnation (paragraphs 25-28), wherein time of impregnating under vacuum can vary from 30 seconds to 120 minutes and pressure range is “in the range of 100-15 mbar” (paragraph 42).
Kofranek discloses the benefits of impregnating cut flowers with a solution silver nitrate in providing longevity (see the entire article). Concentrations of 20-35 ppm, 1,000 ppm, and 1,200 ppm silver nitrate for cut flowers are disclosed (page 199-202). Addition of sucrose treatment further improved longevity (abstract; pages 200-202).
WO 2020/122798 does not explicitly disclose an aqueous impregnation solution comprising at least one surfactant. However, WO 2020/122798 teaches that the aqueous solution can contain many different types of substances such as carbohydrates, hormones, antiseptics, minerals, pesticides, any agent that can treat or affect plant/flower tissue thereof, including folic acid (page 4, lines 14-21). Folic acid dissociates in aqueous solution to folate, which is an amphiphilic substance having a hydrophobic aromatic moiety and the hydrophilic glutamate tail. This structure would have surface active properties. Moreover, because WO 2020/122798 teaches, “[f]act is that any type of agents which may be introduced, can treat or affect the plant/flower tissue may be added,” including “both soluble and insoluble agents” (page 4, lines 20-25), it would have been obvious to the ordinary skilled artisan that a surfactant such as an anionic surfactant would be beneficial to formulate and mix the various ingredients that can be present in the aqueous solution to be impregnated under vacuum.
Amended claim 35 recites at least three phases of vacuum impregnation: pressure falling step, pressure holding step, and pressure rising step. Although these steps are not explicitly spelled out in WO 2020/122798, it would have been obvious to the ordinary skilled artisan that vacuum impregnation necessarily includes these steps. For example, in the Example disclosed on pages 8-9 of WO 2020/122798, cuttings of geraniums are placed in a vacuum chamber where pressure is gradually decreased, and then the cuttings were removed from the vacuum chamber. Clearly, such steps would include a pressure falling step, pressure holding step, and repressurizing step.
Amended claim 35 further requires a minimum pressure range of 50-500 mbar and “wherein the method is performed during one or more short cycles of applying vacuum impregnation where each short cycle is performed during maximum of 3 minutes.” Demir teaches time of impregnating under vacuum can vary from 30 seconds to 120 minutes and pressure range is “in the range of 1000-15 mbar” (paragraph 42). It would have been obvious to the ordinary skilled artisan to adjust the cycle time of “applying vacuum impregnation” to 3 minutes or less and at 50-500 mbar depending on the level of preservation required for the plant tissue because WO 2020/122798 teaches “partial impregnation may be preferable in some cases” (page 4, lines 32-33). Short cycle of applying vacuum impregnation as claimed would have been expected to obtain partial impregnation.
Claims 42, 43, 59, and 60 (silver nitrate) recite silver in the impregnation solution and silver content in leaves or stem. WO 2020/122798 does not disclose specific silver content in a leaf or stem. However, instant specification discloses that a naturally occurring cut flower leaves contain 2.79 mg/kg dry matter (page 11), which is 0.000279 wt% of silver or 2.79 ppm silver, and the method of treating cut flowers by WO 2020/122798 is the same or similar to the method used by the instant invention (specification page 3, lines 4-5; page 5, lines 10-14; page 9, lines 21-22). Thus, it would have been obvious to the ordinary skilled artisan to treat cut flowers with vacuum impregnation of aqueous solution of silver nitrate, as taught by WO 2020/122798 and further suggested by Kofranek (e.g., 20-35 ppm silver nitrate for cut flower) .
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Response to arguments
Applicant’s arguments filed on 4/3/2026 have been given due consideration but they were deemed unpersuasive for the following reasons.
Applicant agues that the cited references “none of the cited references relate to a method involving short cycle vacuum impregnation treatment” and “none of the cited references teach or suggest the relevance of using a surfactant in the impregnation treatment, much less the technical advantage of combining using a surfactant and short time impregnation.” However, Applicant’s specification states that “different types of surfactants may be used” (page 6, see lines 2-30). Folic acid as taught by WO 2020/122798 possesses surfactant properties because of its amphiphilic structure, and it is anionic in aqueous solutions. Additionally, WO 2020/122798 teaches the use of soluble as well as insoluble agents in the aqueous impregnation solution, which would have suggested surface active agents for formulation purposes. Because “partial impregnation may be preferable in some cases” (WO 2020/122798, page 4, lines 32-33), short cycle of applying vacuum impregnation as claimed would have been expected to obtain partial impregnation.
For these reasons, Applicant’s arguments are deemed unpersuasive, and claims 35-36, 38-49, and 59-62 must be rejected again.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 35-49 and 59-62 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/427,958 (reference application, published as US 2026/0123585 on 5/7/2026) in view of Kofranek. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims of the reference application substantially overlap with those of the instant application. The reference application claims the following:
- arranging one or more cut flowers in an impregnation solution which comprises at least one silver containing substance (claim 1), which impregnation solution can further contain at least one surfactant such as an anionic surfactant (claims 7-8), a least one sugar such as glucose, trehalose, fructose, vitamin, mineral, antioxidant, growth hormone, antimicrobial (claims 10-11);
- applying vacuum impregnation or pressure impregnation (claim 12) in a minimum pressure range of 60-300 mbar for a cycle time of at least 5 seconds or preferably 5 seconds to 1 minute (claim 13);
- at least a portion of the stem of cut flowers are immersed in the impregnation solution, but the flower bud is free from impregnation solution (claim 9);
- cut flowers are subjected to a cooling step at 5-10 °C after vacuum impregnation (claim 14-15); and
- the cut flower has leaf sliver content of at least 3.0 mg/kg dry substance, as measured up to 7 days after measurement or up to 14 days after measurement (claims 1-4) and stem silver content of at least 10 mg/kg dry substance in the stem (claim 6).
It is noted that the claims of the reference application do not require PEF treatment.
Kofranek discloses the benefits of impregnating cut flowers with a solution silver nitrate in providing longevity (see the entire article). Concentrations of 20-35 ppm, 1,000 ppm, and 1,200 ppm silver nitrate for cut flowers are disclosed (pages 199-202). Addition of sucrose treatment further improved longevity (abstract; pages 200-202).
The reference application claims do not explicitly disclose silver nitrate as the silver containing substance. However, silver nitrate is suggested by its known use for impregnation of cut flowers for improved longevity.
The reference application claims do not explicitly disclose a washing step by immersing the treated biological material into water to wash sugars from the surface of the treated biological material. However, sucrose + silver nitrate is suggested by Kofranek, and a washing step is suggested for the benefit of recovering silver and sugar that did not impregnate the treated biological material.
Therefore, the ordinary skilled artisan would have recognized the instant claimed invention as an obvious variation of the invention set forth in the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
For the foregoing reasons, all claims are rejected again. No claim is allowed.
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 JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 See the IDS of 4/6/2023, foreign patent citation no. B8.
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