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
Claims 1-5, 8-11, 15-17 and 22-29 filed 02/24/2023 are pending in the application and are hereby examined on the merits.
Claim status
The examiner acknowledged the amendment made to the claims on 11/18/2025.
Claims 1-5, 8-11, 15-17 and 22-29 are pending in the application. Claims 1, 11 and 28 are currently amended. Rest of claims are previously presented. Claims 1-5, 8-11, 15-17 and 22-29 are hereby 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 § 112
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 22-23 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. Claims 22-23 ultimately depend from claim 1 and recite adjusting the pH of the reaction mixture to 5-8, which violates the range of 6-7.8 as recited in claim 1. As such, claims 22-23 fail to include all the limitations of the claim upon which they depend. 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 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.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Wu US Patent Application Publication No. 2013/0115252A (cited in the IDS submitted 02/24/2023, hereinafter referred to as Wu) in view of Tian CN105624198A (cited in the IDS submitted 02/24/2023, English translation relied upon for reference, hereinafter referred to as Tian) and Baranowitz US Patent Application Publication No. 2019/0125724 A1 (hereinafter referred to as Baranowitz).
Regarding claim 28, Wu teaches a method comprising: mixing a genipin-rich material that is obtained from water extracted Huito fruit (e.g., Genipa americana) (para. 0014; 0016; 0019; 0030) with an amino acid (e.g., taurine, histidine, arginine, glutamic acid, glycine, asparagine, serine, alanine, glutamine, etc. 0030), thus forming a reaction mixture wherein the genipin-rich material fruit reacts with the amino acid and produces a blue colorant in the presence of water and oxygen under heating (0030); and adjusting the hue of the blue color by choosing the amino acid, thereby forming a colorant having a desired hue (0030). The genipin-rich material plus water reads on the limitation about the component of Huito of claim 28.
Wu does not teach that the adjusting of the hue of the blue color is done by bubbling oxygen in the reaction mixture during reaction of the component of Huito fruit and the amino acid.
In the same field of endeavor, Tian teaches a method making a blue colorant comprising reacting genipin obtained from enzymatic hydrolysis of geniposide extracted from the Gardenia jasminoides fruit (0013) with an amino acid (e.g., glutamic acid, aspartic acid, histidine, etc. 0014) under the action of an oxidizing agent (e.g., oxygen or compressed air, 0015), in which genipin and the amino acid polymerizes to produce the blue colorant (Abstract; 0013). Tian further teaches adjusting the hue and color value (e.g., brightness) of the blue color through adjusting the amount of oxygen present in the reaction (0012; 0022), for example, Tian further teaches introducing the oxidizing agent into the reaction tank at a flow rate of 50 L-200 L/min (0018).
Baranowitz teaches a method of making a colorant (e.g., a dye) comprising bubbling oxygen into the reaction solution for an adequate period of time (0130).
Both Wu and Tian are directed to making a blue colorant through the reaction of genipin with an amino acid. Both Wu and Baranowitz are directed to making a colorant through a chemical reaction. Further, where Tian teaches introducing oxygen into a reaction tank, Baranowitz teaches that oxygen could be introduced into the reaction system through bubbling.
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 Wu by controlling the amount of air or oxygen through modulating the flow rate the air or oxygen is introduced (e.g., bubbled) into the reaction disclosed by Tian in the reaction so as to form a blue colorant having desired blue hue component and brightness. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that first, the hue and color value (e.g., brightness) of the blue color resulting from genipin and an amino acid can be controlled through adjusting the amount of oxygen present in the reaction, and second, oxygen can be introduced into a reaction through bubbling.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Tian and Baranowitz as applied to claim 28 above, and evidenced by Lee, “ Colorimetric determination of amino acids using genipin from Gardenia jasminoides”, Analytica Chimica Acta, 2003, 480, pp. 267–274 (hereinafter referred to as Lee).
Regarding claim 29, Wu as recited above teaches reacting genipin-rich material with an amino acid such as arginine, glycine, histidine, alanine, lysine, etc. to form a blue colorant. Wu further teaches that wherein the hue of the blue color is adjusted to one of deep blue, violet-blue, bright-blue and greenish blue (0030). Lee evidences that the maximum absorption value for the blue colorant formed by the reaction of genipin with arginine, glycine, histidine, alanine, and lysine is 593 nm, 593 nm, 596 nm, 595 nm and 578 nm, respectively (page 270, left hand column, third para.), which falls within the range of claim 29. Tian further teaches wherein the colorant has a greater color value with increasing the amount of oxygen present during the reaction than the color value without an increase in the amount of oxygen present during the reaction (para (0022) "the larger the aeration, the better, which is conducive to the production of blue pigment. At this stage, R1 will increase slowly, and the value of R2 will also be higher''; para (0012) "the higher the R2 value, the brighter the pigment").
Claims 1, 2, 3, 4, 5, 8, 9, 10, 15, 16, 17 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wu US Patent Application Publication No. 2013/0115252A (cited in the IDS submitted 02/24/2023, hereinafter referred to as Wu) in view of Tian CN105624198A (cited in the IDS submitted 02/24/2023, English translation relied upon for reference, hereinafter referred to as Tian) and Koga US Patent No. 4,878,921 (hereinafter referred to as Koga).
Regarding claims 1, 2, 8 and 9, Wu teaches a method comprising: mixing a genipin-rich material that is obtained from water extracted Huito fruit (e.g., Genipa americana) (para. 0014; 0016; 0019; 0030) with an amino acid (e.g., taurine, histidine, arginine, glutamic acid, glycine, asparagine, serine, alanine, glutamine, etc. 0030), thus forming a reaction mixture wherein the genipin-rich material fruit reacts with the amino acid and produces a blue colorant in the presence of water and oxygen under heating (0030); and adjusting the hue of the blue color by choosing the amino acid, thereby forming a colorant having a desired hue (0030). The genipin-rich material plus water reads on the limitation about the component of Huito of claim 1 and Huito juice of claim 9.
Wu does not teach that the adjusting of the hue of the blue color is done by adjusting the amount of oxygen present during reaction of the component of Huito fruit and the amino acid.
In the same field of endeavor, Tian teaches a method making a blue colorant comprising reacting genipin obtained from enzymatic hydrolysis of geniposide extracted from the Gardenia jasminoides fruit (0013) with an amino acid (e.g., glutamic acid, aspartic acid, histidine, etc. 0014) under the action of an oxidizing agent (e.g., oxygen or compressed air, 0015), in which genipin and the amino acid polymerizes to produce the blue colorant (Abstract; 0013). Tian further teaches adjusting the hue and color value (e.g., brightness) of the blue color through adjusting the amount of oxygen present in the reaction (0012; 0022).
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 Wu by controlling the amount of air or oxygen as disclosed by Tian in the reaction so as to form a blue colorant having desired blue hue component and brightness.
Wu in view of Tian teaches reacting a genipin-rich material such as Huito juice with an amino acid to produce a blue colorant but is silent regarding adjusting the pH of the reaction mixture. However, Tian teaches that after the enzymatic hydrolysis of geniposide to from genipin and before adding the amino acid, the hydrolysis mixture is adjusted to a pH 8 with NaOH (0032).
Further, Koga in the same field of endeavor teaches a method of making a blue colorant comprising reacting genipin with an amino acid (e.g., taurine), in which the pH of the reaction mixture is adjusted to 4-9 by using NaOH solution using NaOH (claim 1, Example 3), wherein if the reaction is performed at pH 7-9, most preferably at 8, the resulting blue dye composition affords a bluish purple color, and if the reaction is performed at pH 4-7, preferably at 6, the resulting blue dye composition imparts a somewhat dark tone (column 2, line 27-53; ). As such, Koga recognizes that pH of the reaction between genipin and an amino acid determines the hue or color of the blue colorant. Therefore, 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 Wu adjusting the pH of the reaction mixture for example in a range of 4-9 with NaOH solution as disclosed by Koga for desired blue color with reasonable expectation of success, for the reason that prior art has established that and pH of a reaction between genipin and an amino acid determines the hue or color of the resulting blue colorant, and a pH range of 4-9 is suitable for reacting genipin with an amino acid to produce a blue colorant. The pH as disclosed by Koga encompasses the range as recited in claim 1. 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 claims 3-5, Tian teaches that the polymerization reaction between genipin and the amino acid takes place at a predetermined temperature of 70 °C for a determined period of 2 or 5 hours (0033; 0041); Tian further teaches introducing air into the reaction tank at a flow rate of 50 L/min (0033), thus necessarily either the surface area, or both the surface area and the interior of the reaction mixture is/are exposed to or bubbled with air. 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 Wu by adopting the reaction conditions as disclosed by Tian (e.g., air introduction, temperature and period) with reasonable expectation of success, for the reason that prior art has established that the aforementioned conditions are suitable for producing a blue colorant from the reaction of genipin and an amino acid.
Regarding claim 10, the genipin-rich material plus water reads on the limitation about the Huito juice of claim 10.
The limitation about “Huito juice obtained by cutting Huito fruit in half, and pressing a cut half of Huito fruit with a fruit press” is interpreted as a product-by-process description of the material of used in the method of claim 1, given that claim 10 does not positively recite a method of preparing a Huito juice. In the instant case, Wu teaches that in obtaining the genipin-rich material, a Huito fruit (e.g., Genipa americana) is cut into pieces, then milled/blended with water for extraction, wherein the insoluble solids are removed by a method such as regular filtration, centrifugation, press filtration and membrane cartridge filtration (0016; 0022). Therefore, although the process of making the juice is different from the claim, the final Huito juice of Wu appears to be materially indistinguishable from the juice made by cutting the fruit in half followed by pressing, and therefore there is no manipulative difference between using Huito juice of the prior art and using the Huito juice of the claim 10. Therefore, claim 10 is rendered obvious by Wu in view of Tian.
Regarding claims 15-16, Wu teaches that in obtaining the genipin-rich material, a Huito fruit (e.g., Genipa americana) is cut into pieces, then milled/blended with deionized water for extraction, wherein the where the insoluble solids are removed by a method such as regular filtration, centrifugation, press filtration and membrane cartridge filtration (0016; 0022; 0045-0046). Wu is not explicitly in teaching that the fruit is cut into more than two pieces. However, one of ordinary skill in the art would have been motivated to cut the Huito fruit into any pieces as long as the size of the pieces is convenient for later water extraction.
Regarding claims 17 and 22-23, Wu in view of Tian teaches the method of claim 16, wherein the ratio by weight of cut Huito fruit to deionized water in the fruit-water blend is in the range of 1:0.1 to 1:100 (para. 0045, 866.0 g of peeled fruit...1300 g of deionized (DI) water"; it is understood that this is a weight ratio of about 1:1.5).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Tian and Koga as applied to claim 1 above, and further in view of Horn US Patent Application Publication No. 2021/0292567 A1 (hereinafter referred to as Horn).
Regarding claim 11, Wu in view of Tian and Koga teaches reacting a genipin-rich material such as Huito juice with an amino acid to produce a blue colorant but is silent regarding the weight ratio of the genipin-rich material to the amino acid in the reaction mixture.
Horn in the same field of endeavor teaches a method of making a blue colorant comprising reacting a genipin containing material such as Huito juice with an amino acid such as lysine, alanine, serine, glutamic acid, glycine, etc.,(0021; 0025; 0028; 0029), in which the amino acid is present in an amount of at least 0.25% for example, 0.25-10%, 0.5-4% or 0.75-1.5% by weight of the genipin containing material (0030).
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 Wu by adopting the amount of amino acid by weight of the genipin-rich material as disclosed by Horn with reasonable expectation of success, for the reason that such a ratio or amount is established by prior art to be suitable for making a blue colorant. The ratio as disclosed by Horn overlaps with or falling with the range as recited in the claim. 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).
Claims 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Tian and Koga as applied to claim 1 above, and evidenced by Lee, “ Colorimetric determination of amino acids using genipin from Gardenia jasminoides”, Analytica Chimica Acta, 2003, 480, pp. 267–274 (hereinafter referred to as Lee).
Regarding claims 24-27 and 29, Wu as recited above teaches reacting genipin-rich material with an amino acid such as taurine, arginine, glycine, histidine, alanine, lysine, etc. to form a blue colorant but is silent regarding that the maximum absorbance (e.g., lambda max) of the blue colorant is adjusted to 588 nm violet-blue, 593 nm blue, 581 nm violet, 596 nm blue, 590 nm blue, 595 nm blue, 584 nm violet, 592 nm blue, 578 nm violet, 583 nm violet, and 587 nm violet-blue, 575-615 nm or 575-615 nm. However, Wu teaches that wherein the hue of the blue color is adjusted to one of deep blue, violet-blue, bright-blue and greenish blue (0032). Further, Tian teaches that the maximum absorption wavelength of the obtained blue pigment is about 600nm (0025), therefore, it would have been obvious to one skilled in the art to choose an amino acid, the pH, and/or control the volume of the air/oxygen in the reaction to arrive at the desired hue. As such the lambda max value as recited in claims 24-27 and 29 are merely obvious variant of the prior art. Further, Lee evidences that the maximum absorption value for the blue colorant formed by the reaction of genipin with arginine, glycine, histidine, alanine, and lysine is 593 nm, 593 nm, 596 nm, 595 nm and 578 nm, respectively (page 270, left hand column, third para.), which matches those values as recited in claim 24.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered and the examiner’s response is shown below:
Applicant’s argument on page 5 of the Remarks regarding cited arts failing to teach the pH range of 6-7.8 for the reaction mixture is considered but found moot over the new ground of rejection set forth in the instant office action.
Applicant’ argument on page 5 of the Remarks regarding cited arts failing to teach bubbling oxygen into the reaction mixture is considered but found moot over the new ground of rejection set forth in the instant office action.
For the reasons set forth above, applicant’s argument on page 6 of the Remarks regarding dependent claims 11, 22-23, 24-27 and 29 are not persuasive. Applicant is further invited to review the 35 USC 112(d) rejection of claims 22-23 set forth in the instant office action.
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 CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791