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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 7-8, 10, 13, 16-17, 28-29, 34-36, 41-43, 45-46, and 63 in the reply filed on 10/16/25 is acknowledged.
Claims 54 and 59 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/16/25.
Specification
The disclosure is objected to because of the following informalities:
On paragraph 0060, line 9, “arthonoic acid” seems to be a misspelling of “arthonioic acid”.
On paragraph 00149, line 2, “archidic acid” seems to be a misspelling of “arachidic acid”.
On paragraph 00150, lines 2-3, “archidic acid” seems to be a misspelling of “arachidic acid”.
On paragraph 00153, line 10, “arthonoic acid” seems to be a misspelling of “arthonioic acid”.
On paragraph 00185, page 34, lines 6, and 12-13, “cinnamadelhyde” seems to be a misspelling of “cinnamaldehyde”.
On paragraph 00150, line 5, “linoleic acid sodium salt” appears twice.
On paragraph 00140, page 18, line 4, “pump 212” seems it should read “pump 216” as described on paragraph 00141, since part 212 is described as “outlet 212”.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 7-8, 10, 13, 16-17, 28-29, 34-36, 41-43, 45-46, and 63 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2, 8, 13, 16, 21, 28, 29, 45, 63, and 67 of copending Application No. 18848294 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 of this application is patentably indistinct from claim 1 of Application No. 18848294. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 10 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 10 recites “wherein the length of time is in a range of 1 minute and 100 hours”. It is unclear if the length of time refers to the amount of time a gaseous stream of antimicrobial agent is provided, the total amount of time of the entire produce treatment method, or the amount of time the produce items are exposed to the gaseous antimicrobial agent. For examination purposes and compact prosecution, the claimed length of time in a range of 1 minute and 100 hours will be considered as the time the produce items are exposed (in contact) with the antimicrobial agent as disclosed on par.00130 of the instant Specification.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 7-8, 29, 34-36, 41, 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. [CN 107296093 A], hereinafter Wu, evidenced by USDA [Fumigation Handbook, 2020].
Regarding claim 1, Wu teach a produce treatment method comprising: providing an antimicrobial agent to an enclosure comprising a plurality of produce items (vegetable, yams); and contacting the plurality of produce items with the antimicrobial agent (allyl isothiocyanate formulation), wherein the antimicrobial agent is in gaseous form (fumigant is in gaseous state/form, see UDSA, Definitions 1.2, p.1-3) and is selected to deactivate latent microbes (Penicillium) in the plurality of produce items [Wu, Abstract, 0011, 0013, 0015-0016, 0021].
Regarding claim 7, Wu teach wherein the enclosure is airtight (sealed storage warehouse) or limits a rate of diffusion of gas into or out of the enclosure [Wu, 0012].
Regarding claim 8, Wu teach wherein providing the antimicrobial agent to the enclosure comprises providing a gaseous stream comprising the antimicrobial agent to the enclosure [Wu, 0012, 0015-0016].
Regarding claims 29, 34-35, Wu teach wherein the antimicrobial agent comprises an antifungal agent (allyl isothiocyanate formulation) [Wu, 0016], selected to deactivate blue mold [Wu, 0004] such as Penicillium spp. [Wu, 0002].
Regarding claim 36, Wu teach wherein the plurality of produce items comprises vegetables [Wu, 0002, 0011].
Regarding claim 41, Wu teach wherein the antimicrobial agent comprises allyl isothiocyanate [Wu, 0016].
Regarding claim 63, Wu teach the method comprising: providing an antimicrobial agent to an enclosure comprising a plurality of produce items; and contacting the plurality of produce items with the antimicrobial agent, wherein the antimicrobial agent is in gaseous form and is selected to deactivate latent microbes in the plurality of produce items as discussed above in claim 1. The method is useful for controlling or preventing rotting of produce items caused by mold Penicillium during storage [Wu, 0008, 0028], which is equivalent to a method of improving shelf-life of a plurality of produce items, since the method provides for preservation of the treated produce by protecting said produce from biotic stressors such as fungi, allowing the treated product to stay fresh or undamaged for an extended time.
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.
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.
Claim(s) 10, 13, 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claim 1 above, and further in view of Ohama et al. [EP 0452512 A1], hereinafter Ohama.
Regarding claim 10, Wu teach the produce treatment method discussed above, but is silent regarding wherein the length of time (the time the produce items are exposed (in contact) with the antimicrobial agent) is in a range of 1 minute and 100 hours.
Ohama teach a produce treatment method comprising: providing an antimicrobial agent to an enclosure comprising a plurality of produce items (vegetables, fruits) [Ohama, 0118]; and contacting the plurality of produce items with the antimicrobial agent (allyl isothiocyanate (ISOTCA) and/or isothiocyanate (ISOTC)) [Ohama, 0109, 0036], wherein the antimicrobial agent is in gaseous form (ISOTCA/ISOTC gas/vapor fumigant is in gaseous state/form) [Ohama, 0110-0111, 0039], and is selected to deactivate latent microbes [Ohama, 0037, 0118-0120] in the plurality of produce items [Ohama, Title, Abstract, 0118, 0139], wherein the length of time (the time the produce items are exposed (in contact) with the antimicrobial agent) is in a range of 1 minute and 100 hours (6 hours to 3 days (72 hours)) [Ohama, 0112].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and contact the produce items with the antimicrobial agent for a time period that includes the claimed time range, as taught by Ohama, because Ohama teaches that treatment times may be as long as required for deactivate latent microbes in the produce items, which would also depend on the gaseous antimicrobial agent concentration [Ohama, 0112], and since both are directed to methods of treating produce items with antimicrobial agent(s).
Regarding claim 13, Wu teach the produce treatment method discussed above, but is silent regarding volatilizing an antimicrobial agent precursor to yield the antimicrobial agent.
Ohama teach the produce treatment method discussed above, comprising volatilizing an antimicrobial agent precursor to yield the antimicrobial agent (as disclosed on par.00141 of the instant Specification, bubbling/passing a carrier gas volatizing the antimicrobial agent precursor, forming the antimicrobial agent) [Ohama, 0111, 0028, 0039, 0143 steps (I-VI)].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and volatilize an antimicrobial agent precursor to yield the antimicrobial agent, as taught by Ohama, because Ohama teaches that antimicrobial agent precursors (isothiocyanates ISOTC such as ISOTCA) that are volatilized/vaporized or in gas form have a strong fumigating action, and are useful as fumigants while being highly safe and easy to handle [Ohama, 0109, 0112].
Regarding claim 43, Wu teach the produce treatment method discussed above, wherein the antimicrobial agent is provided in a concentration to the enclosure in a headspace in amounts of from 50-100g/m3 [Wu, 0033, 0047], but is silent regarding the antimicrobial agent being provided in a concentration to the enclosure in a headspace at least about 1200 ppmv, at least about 1250 ppmv, or about 1250 ppmv to about 5000 ppmv, or about 1250 ppmv to about 4900 ppmv.
Ohama teach the produce treatment method discussed above, wherein the antimicrobial agent (allyl isothiocyanate (ISOTCA) and/or isothiocyanate (ISOTC)) is provided in a concentration to the enclosure in a headspace in amounts of from 10-4000 ppmv [Ohama, 0080, 0112].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and provide the antimicrobial agent in a concentration to the enclosure in a headspace in the claimed concentration amounts as taught by Ohama, because Ohama teaches that the time of exposure of the treated item with the antimicrobial agent may vary according to the concentration of the antimicrobial agent [Ohama, 0112], and one of ordinary skill in the art would recognize the use of lower concentrations of antimicrobial with longer exposure times or higher concentrations of antimicrobial with shorter exposure times as desired, as also disclosed by Applicant in par.00130 of the instant Specification, or using a concentration of antimicrobial agent that is suitable according to the particular method being used, the food items being treated, and/or the type of antimicrobial agent(s) being used.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claim 1 above, and further in view of Ekanayake et al. [US 20020061352 A1], hereinafter Ekanayake, evidenced by Da-Som et al. [Wasabia koreana Nakai, 2018], hereinafter Da-Som.
Regarding claims 16-17, Wu teach the produce treatment method discussed above, but is silent regarding activating an antimicrobial agent precursor to yield the antimicrobial agent, and wherein activating the antimicrobial agent precursor comprises contacting the antimicrobial agent precursor with a catalyst selected to facilitate conversion of the antimicrobial agent precursor to antimicrobial agent.
Ekanayake teach methods of food preservation using compositions comprising isothiocyanate compound [Ekanayake, Abstract]. The disclosure teach that isothiocyanate compound has antibacterial, antimicrobial, anti-mold, and antifungal effects [Ekanayake, 0006, 0032] and may be obtained by contacting an antimicrobial agent precursor from a Cruciferae family plant (i.e., wasabi [Ekanayake, 0083, 0106, claim 3]) extract as essential oil with a catalyst selected such as the enzyme myrosinase [Ekanayake, 0108-0109] to facilitate conversion of the antimicrobial agent precursor (Cruciferae plant essential oil) to antimicrobial agent (isothiocyanate, particularly allyl isothiocyanate) [Ekanayake, 0110, 0080, 0055], wherein said antimicrobial agent of allyl isothiocyanate (AITC) is formed by hydrolysis of sinigrin via myrosinase, which are compounds inherently present in Cruciferae plants such as wasabi, as evidenced by Da-Som [Da-Som, Introduction, p.2], and as disclosed by Applicant on par.00135 of the instant Specification.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and activate an antimicrobial agent precursor to yield the antimicrobial agent, wherein activating the antimicrobial agent precursor comprises contacting the antimicrobial agent precursor with a catalyst selected to facilitate conversion of the antimicrobial agent precursor to antimicrobial agent as taught by Ekanayake and evidenced by Da-Som, because Ekanayake teaches that isothiocyanates such as AITC has antibacterial effects [Ekanayake, 0006], which may be advantageously obtained from the essential oil of a natural plant source [Ekanayake, 0112-0113] or synthetically produced if desired [Ekanayake, 0114-0116], and since both are directed to methods of treating food items with antimicrobial agent(s).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claim 1 above, and further in view of Bowden et al. [US 20200281233 A1], hereinafter Bowden.
Regarding claim 28, Wu teach the produce treatment method comprising contacting the plurality of produce items with the antimicrobial agent as discussed above, but is silent regarding wherein contacting the plurality of produce items with the antimicrobial agent comprises permeating a cuticular layer of each of the plurality of produce items with the antimicrobial agent.
Bowden teaches a method for treating a perishable product including sanitation, protection, preservation, or enhancement of the perishable product such as a plurality of produce items [Bowden, 0076]; by directly applying a substance to the surface of the perishable product after harvesting using a carrier [Bowden, Abstract], wherein the substance may be in gaseous form and suitable for reducing microorganisms such as sanitizers and/or essential oils [Bowden, 0043] having antimicrobial and/or antifungal properties [Bowden, 0050]. Some embodiments include contacting the plurality of produce items with the gaseous antimicrobial agent, wherein contacting the plurality of produce items with the antimicrobial agent comprises permeating a cuticular layer of each of the plurality of produce items with the antimicrobial agent [Bowden, 0060].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and permeate a cuticular layer of each of the plurality of produce items with the antimicrobial agent as taught by Bowden, because Bowden teaches the method takes advantage of the natural process of the perishable products and the sanitizing substances being used to enhance the quality of the treated perishable product [Bowden, 0060], and since both are directed to methods of treating produce items with antimicrobial agent(s). Furthermore, while Wu does not explicitly recites the antimicrobial agent permeates the cuticular layer of the produce items during the process, it would be reasonable to conclude that the permeation of antimicrobial agent through the cuticular layer of the produce items in the method of Wu occurs since Bowden disclose that produce items such as fruits and vegetables are capable of respiration [Bowden, 0089], which would allow the antimicrobial agent to penetrate or permeate the cuticular layer of the produce items being treated in the method of Wu.
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claim 1 above, and further in view of Lim et al. [US 20190200651 A1], hereinafter Lim.
Regarding claim 42, Wu teach the produce treatment method comprising contacting the plurality of produce items with the antimicrobial agent allyl isothiocyanate as discussed above, but is silent regarding the antimicrobial agent additionally comprising one or more antimicrobial agents selected from the group of diallyl disulfide, carvacrol, eugenol, cinnamaldehyde, limonene, thymol, methyl anthranilate, methyl cinnamate, gamma-decalactone, alpha-terpineol, and linalool.
Lim teaches methods for using antimicrobial compositions suitable for inhibiting spoilage of a plurality of produce items [Lim, 0038], wherein said antimicrobial compositions may be in contact with the produce/foods surfaces [Lim, 0002-0003], and wherein the antimicrobial agent comprises allyl isothiocyanate and one or more antimicrobial agents selected from the group of carvacrol, cinnamaldehyde, and thymol [Lim, Abstract, 0023].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and provide an antimicrobial agent comprising allyl isothiocyanate and one or more antimicrobial agents selected from the group of carvacrol, cinnamaldehyde, and thymol as taught by Lim since both are directed to methods of treating produce items with antimicrobial agent(s), and because Lim teaches that some combinations of antimicrobials have a synergistic effect in enhancing the antimicrobial effectiveness against microorganisms [Lim, 0127]. Furthermore, it would provide methods for treating produce items with a composition comprising a combination of antimicrobial agents that is characterized by having controlled-release of each antimicrobial compound [Lim, Abstract, 0002], depending on the volatility of each antimicrobial species, by directing the antimicrobial agent to the surface of the produce, thus effectively inhibiting the growth of spoilage and microorganisms on the produce items using a lower quantity of preservative [Lim, 0003], while at the same time avoiding the negative impact of sensory and quality attributes of foods caused by the excessive use, or direct and uncontrolled addition of all the antimicrobial species to foods [Lim, 0004].
Claim(s) 45-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu as applied to claim 1 above, and further in view of Hernandez et al. [US 20200068912 A1], hereinafter Hernandez.
Regarding claim 45-46, Wu teach the produce treatment method discussed above, but is silent regarding the method further comprising coating the plurality of produce items with an edible coating composition, wherein the edible coating composition comprises: a coating agent comprising one or more saturated glycerides selected from monoglycerides and diglycerides; and one or more fatty acid salts; and a solvent.
Hernandez teaches methods of making and using edible coating compositions [Hernandez, 0007, 0047] for coating produce items [Hernandez, 0049], wherein the edible coating composition comprises: a coating agent comprising diglycerides [Hernandez, 0145]; and one or more fatty acid salts [Hernandez, 0049, 0052]; and a solvent [Hernandez, 0048, 0052].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wu and provide a method further comprising coating the plurality of produce items with an edible coating composition, wherein the edible coating composition comprises: a coating agent comprising one or more saturated glycerides such as diglycerides; and one or more fatty acid salts; and a solvent as taught by Hernandez, since both are directed to methods of treating produce items for preservation, and/or protection from degradation, because Hernandez teach that these coating compositions are useful for protecting produce items against degradation caused by biotic stressors [Hernandez, 0048] such as fungi [Hernandez, 0149], and since Wu already expressed interest in protecting produce items from fungi as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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/LUIS EUGENIO DIOU BERDECIA/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792