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 Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie Molecular Human Reproduction Vol.13, No.7 pp. 473–481, 2007.
Regarding claims 1 and 4, Xie teaches a 200 mM sorbitol solution. (Table 1) While Xie does not describe the solution claimed as an “apple preservative”, this limitation is directed to the intended use of the claimed composition and does not impart any materially distinguishing characteristics to the claimed solution. Given that the solution of Xie is the same as that claimed, Xie anticipates claims 1 and 4.
Regarding claim 2 and 8, these claims recite intended uses of the sorbitol solution recited. The sorbitol solution recited by Xie could be used in the fashion recited in claims 2 and 8 and therefore the solution of Xie anticipates the composition recited in claims 2 and 8.
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.
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 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Abe USPGPub 2018/0125069.
Regarding claims 9 and 10, Abe teaches a composition suitable for preventing or curing ring rot. [0015,0032] The composition comprises sorbitol in an amount of 0.01-10 wt%. [0141] This concentration of sorbitol translates to about 0.55-550 mM. Suitable methods for applying the composition include dipping, coating and film coating. [0136] The composition is suitable for use on apple plants.
Abe is silent regarding specifically soaking apples in the sorbitol solution disclosed. However, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have soaked the apples from the apple plants in the solution disclosed by Abe in order to prevent ring rot. While Abe is silent regarding how long to soak apples, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have soaked the apples for a quantity of time sufficient to prevent ring rot. Therefore, claims 9 and 10 do not provide a patentable distinction over the prior art.
Response to Arguments
Applicant's arguments filed 28 June 2025 have been fully considered but they are not persuasive.
Applicant asserts on page 3-4 of the remarks that the recitation of an intended use of preventing apple ring rot for the claimed composition patentably distinguishes the instant invention from the prior art. As stated in MPEP 2111.02 “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” The preamble limitations regarding ring rot are of no significance to claim construction since the body of the claims fully and intrinsically sets forth all of the limitations of the claimed invention. As such, applicant’s assertion is not found persuasive.
Applicant asserts on page 4 of the remarks that there is no motivation to displace Abe’s composition by using sorbitol and that Abe lacks any teaching that sorbitol alone could inhibit apple ring rot. Neither of these assertions are germane to the present rejection since the rejection does not rely on displacing the fungicide in Abe or using sorbitol alone. Abe teaches apple preservative as claimed, sorbitol as claimed and covering (i.e. soaking) apples with the composition. No criticality has been demonstrated for the claimed soaking time. As such, no patentable distinction has been demonstrated for claims 9 and 10 from the prior art.
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793