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 .
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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 04/15/2026 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 04/15/2026.
Claims 1-5, 8-11, 15-17 and 22-29 are pending in the application. Claims 1, 22 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 § 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 Baranowitz US Patent Application Publication No. 2019/0125724 A1 (hereinafter referred to as Baranowitz).
Regarding claim 28, Wu teaches a method comprising: mixing a component of Huito fruit (e.g., a genipin-rich material that is obtained from water extracted Huito fruit, 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 reacts with the amino acid and produces a blue colorant in the presence of oxygen under heating (0030); and adjusting the hue of the blue colorant by choosing the amino acid, thereby forming a colorant having a desired hue (0030). Specifically, Wu teaches reacting the genipin-rich material with threonine, isoleucine or histidine at a temperature of 80 °C for 2 hours to produce a blue colorant having a max wavelength of 592.2-600 nm (0061).
Wu teaches that the reaction is conducted in the presence of oxygen but is silent regarding bubbling oxygen in the reaction.
Baranowitz teaches a method of making a colorant (e.g., pigment) comprising bubbling oxygen into the reaction solution for an adequate period of time (0130).
Both Wu and Baranowitz are directed to making a colorant through a chemical reaction in the presence of oxygen.
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 bubbling oxygen into the reaction mixture that comprises the component of Huito fruit and the amino acid with reasonable expectation of success, for the reason that prior art has established that in a reaction that forms a dye or pigment in the presence of oxygen, oxygen can be introduced into the reaction through bubbling.
Where Wu as modified by Baranowitz teaches bubbling oxygen in the reaction mixture comprising the component of Huito fruit and an amino acid to produce a blue colorant which appears to be same as the invention as claimed, it logically follows that the color value of the colorant is increased. See In re Best.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of 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, as recited above, where Wu as modified by Baranowitz teaches bubbling oxygen in the reaction mixture comprising the component of Huito fruit and an amino acid to produce a blue colorant which appears to be same as the invention as claimed, it logically follows that the color value of the colorant is increased as compared with a control. See In re Best. 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). Specifically, Wu teaches reacting the a genipin-rich material with threonine, isoleucine and histidine at a temperature of 80 °C for 2 hours to a produce a blue colorant having a max wavelength of 592.2-600 nm (0061). 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 falls within the range of claim 29.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Baranowitz as applied to claim 28 above, and further in view of Horn US Patent Application Publication No. 2021/0292567 A1 (hereinafter referred to as Horn).
Regarding claims 22-23, Wu 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.
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 (0021; 0025; 0028; 0029), in which the pH of the reaction mixture is adjusted to 8 using NaOH solution (0064)
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 to 8 with NaOH solution as disclosed by Horn with reasonable expectation of success, for the reason that such a pH is established by prior art to be suitable for reacting genipin with an amino acid to produce a blue colorant.
Claims 1-5, 8-11 and 15-17 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 component of Huito fruit (e.g., a genipin-rich material that is obtained from water extracted Huito fruit, 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 reacts with the amino acid and produces a blue colorant in the presence of 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). Specifically, Wu teaches reacting the genipin-rich material with threonine, isoleucine or histidine at a temperature of 80 °C for 2 hours to a produce a blue colorant having a max wavelength of 592.2-600 nm (0061).
Wu teaches the that reaction proceeds in the presence of oxygen does not teach adjusting the amount of oxygen present during reaction of the component of Huito fruit and the amino acid such that the color value of the blue colorant is increased.
In the same field of endeavor, Tian teaches a method of 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 amount of oxygen (or air) present in the reaction mixture so as to obtain a blue colorant having desired hue (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 adjusting the amount of oxygen or air present in the reaction mixture to obtain a blue colorant having desired hue.
Where Wu as modified by Tian teaches adjusting the amount of oxygen in the reaction mixture comprising the component of Huito fruit and an amino acid to produce a blue colorant which appears to be same as the invention as claimed, it logically follows that the color value of the colorant is increased. See In re Best.
Wu in view of Tian teaches reacting a genipin-rich material such as Huito fruit 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 (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 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 the pH of a reaction between genipin and an amino acid determines the hue of the resulting blue colorant, and that 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, Wu teaches reacting the genipin-rich material with threonine, isoleucine or histidine at a temperature of 80 °C for 2 hours to a produce a blue colorant (0061). Tian teaches that the 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 air.
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, even if in arguendo that 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 and Koga.
Regarding claim 11, Wu teaches mixing 1 ml genipin-rich water extract with 0.016 g histidine to form a reaction mixture (0061), thus assuming a density of ~1 g/ml for the extract, the ratio of the component of Huito fruit to the amino acid is ~1g/0.016 =62.5.
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 pressing or water extraction.
Regarding claim 17, Wu in view of Tian and Koga 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).
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, 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 . Wu teaches that the blue shades generated are variable among deep blue, violet-blue, bright-blue and greenish blue depending on the amino acid used. Specifically, Wu teaches reacting the genipin-rich material with threonine, isoleucine and histidine at a temperature of 80 °C for 2 hours to a produce a blue colorant having a max wavelength of 592.2-600 nm (0061). Further, Tian teaches that the maximum absorption wavelength of the obtained blue pigment is about 600 nm (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 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 04/15/2026 have been fully considered and the examiner’s response is shown below:
The 35 USC 112(d) rejection is withdrawn in view of the amendment made to claim 22.
Regarding the 35 USC 103 rejection of claim 28, applicant argues on page 8 of the Remarks that Tian does not teach color value of the claimed invention thus failing to teach an increased color value.
The argument is acknowledged. It is noted that Tian is no longer relied upon in the instant rejection of claim 28. Further, as set forth in the instant office action, given that Wu as modified by Baranowitz teaches bubbling oxygen in the reaction mixture comprising the component of Huito fruit and an amin acid to produce a blue colorant which appears to be same as the invention as claimed, it logically follows that the color value of the colorant is increased. See In re Best.
Applicant argues on page 9 of the Remarks that the increase of the color value in the presence of an oxidant is not an inherent property of the process, as evidenced by Table 3 of the present application where, in comparing reaction #3 and #4, the color value either decreased at 12 hours or was static at 15 hours as compared to the control.
The argument is considered. However, it is noted that Wu does not teach a reaction time that is as long as 12-15 hours, rather, Wu teaches a reaction time of 2 hours. There is no evidence from applicant showing that the color value does not increase for a reaction time of 2 hours in the presence of oxygen. Further, it appears that the showing of Table 3 is conflicting with the instant claims, since claim 5 is suggesting that the color value increases for a reaction time of 1-24 hours.
Regarding the 35 USC 103 rejection of claim 1 over Wu as modified by Tian and Koga, applicant argues on page 10 of the Remarks that Tian does not teach color value thus failing to teach an increased color value.
The argument is acknowledged. However, as set forth in the instant office action, given that Wu as modified by Tian teaches adjusting the amount of oxygen in the reaction mixture comprising the component of Huito fruit and an amin acid to produce a blue colorant which appears to be same as the invention as claimed, it logically follows that the color value of the colorant is increased. See In re Best.
Applicant argues on page 11 of the Remarks that the increase of the color value in the presence of an oxidant is not an inherent property of the process, as evidenced by Table 3 of the present application where in comparing reaction #3 and #4, the color value either decreased at 12 hours or was static at 15 hours as compared to the control.
The argument is considered. However, it is noted that neither Wu nor Tian teaches a reaction time that is as long as 12-15 hours, rather, Wu teaches a reaction time of 2 hours (0061) and Tian teaches a reaction time of 2-5 hours (0025; 0033; 0041). There is no evidence from applicant showing that the color value does not increase for a reaction time of 2-5 hours in the presence of oxygen. Further, it appears that the showing of Table 3 is conflicting with the instant claims, since claim 5 is suggesting that the color value increases for a reaction time of 1-24 hours.
For the reasons set forth above, applicant’s argument regarding dependent claims 11, 22-23, 24-27 and 29 are not persuasive, either.
Conclusion
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
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