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 .
Status of the Claims
Acknowledgement is made of the response filed on December 10, 2025. In that response, claims 1-3 and 5-10 were amended and claim 4 was cancelled. Claims 1-3 and 5-12 are treated on the merits in this action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Specification
The use of the term MULTIPLEX®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities: in limitation C), the phrase “production of a solid lyophilisate containing polyphenols and of water, which is recirculated…” should be revised to avoid confusion that the lyphilisate contains both polyphenols and water, and the lyophilizate is recirculated, e.g. “production of a solid lyophilizate containing polyphenols, and of water which is recirculated…”. The same objection applies to “production of a dried leaf product containing oleuropein and of water, which is recirculated…”.
In claim 1, limitation C), last line, “of defoliation and washing of the olives” leaves out the “twig removal” recited in A). Moreover the phrase is not necessary if just for referencing limitation A). The same objection applies to the same language in limitation D), and claim 2, line 2.
Claim 2 is objected to because of the following informalities: in limitation a), “the olives” refer to those recited in claim 1, A), and therefore “fed to the process” is redundant and potentially confusing. Also in limitations b) and c), “the previous operation” should be amended to “operation a)” or “operation b)” as appropriate (as in limitation d)).
Claims 1, 3, 5-7, and 11 are objected to because of the following informalities: claim terms should be used consistently. Claims 3, 5-7, and 11 recite “de-oiled stoned olive paste” whereas claim 1 recites “stoned de-oiled olive paste”.
Claim 3 is objected to because of the following informalities: In limitations g), h), and k), “EVO” should precede “oil”. In limitations h) and i), “the” or “said” should precede “EVO”.
Claim 5 is objected to because of the following informalities: “the treatment operation of the said de-oiled stoned olive paste” could be replaced with “operation C)”.
Claims 6 and 7 are objected to because of the following informalities: “of the de-oiled stoned olive paste” is redundant.
Claims 7 and 8 are objected to because of the following informalities: “of treatment of olive leaves and apical twigs” is redundant.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, and 5-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 now recites “an optical sensor, which determines the degree of ripeness, data collected….”.
The methodology for determining adequacy of written description entails (1) for each claim, determining what the claim as a whole covers, (2) reviewing the entire application to understand how applicant provides support for the claimed invention including each element and/or step, and (3) determining whether there is sufficient written description to inform a skilled artisan that applicant was in possession of the claimed invention as a whole at the time the application was filed. MPEP §2163(II). Also the “written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice …, reduction to drawings …, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.” MPEP §2163(II)(A)(3)(a)(ii) (citations omitted). The “Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 ‘merely by clearly describing one embodiment of the thing claimed’.” Id. (citations omitted).
Here claim 1 as a whole covers a process for production of extra virgin olive oil, comprising, among other steps, cleaning of harvested olives and scanning of the cleaned olives using any sensor based on any optical measurement. The entire application has been reviewing to understand how applicant provides support for said optical sensor. The sole optical sensor disclosed is the Multiplex® sensor (paras.0032-33, 0047, 0059, pre-grant publication US 2023/0416637) which operates via luminous excitation and fluorescence measurement of the plant material. Only claim 2 recites this (limitation c)). No other optical sensor capable of an optical determination of olives’ ripeness is disclosed. This an instance where “a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 ‘merely by clearly describing one embodiment of the thing claimed’.” MPEP §2163(II)(A)(3)(a)(ii) (citations omitted). Therefore it is determined that there is insufficient written description to inform a skilled artisan that applicant was in possession of the claimed invention as a whole at the time the application was filed.
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 1-3 and 5-12 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.
The term “polyphenol-rich” in claims 1 and 6 is a relative term which renders the claim indefinite. The term “polyphenol-rich” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Olive oil is known to contain polyphenols naturally. Therefore the degree of “rich” is vague without some standard. Similarly in claims 8 “oleuropein-rich” is vague. It is also noted that polyphenols generally are known to have “antioxidant activity” in claim 6 and therefore this phrase does not enlighten this issue. None of the dependent claims resolves this issue and therefore are also rejected on this ground.
Claim 1 recites “…by means of a specific software provided in subsequent extraction”. First “specific” appears unnecessary if any suitable software is the intended meaning. If a particular software, then the name or some more clear indication is necessary than “a specific”. “A specific software” is not named or otherwise identified in the disclosure. The disclosure states, “All the malaxators have safety valves and are equipped with specific software for monitoring the whole process, … to optimize customized process methods according to the cultivar and/or the degree of ripeness of the fruit, starting from a data collection database of previous productions”. Therefore “a specific software” appears to be one that is provided with a malaxator.
Second, “a specific software provided in subsequent extraction” does not make sense. “Provided in subsequent extraction” perhaps applies to “extracting oil from olives with similar characteristics” in the previous line. If so, it should be moved to immediately follow that phrase.
In claim 1, limitation D), “and possibly other leaves resulting from olive tree pruning” raises confusion. Olive tree pruning would result in olive leaves. Without more, “possibly other leaves resulting from olive tree pruning” raises the question how and which “other leaves”, i.e., non-olive leaves, result from pruning an olive tree.
In claim 3, “possible use of inert gas” and “possible mixing” renders the claim indefinite. Anything is “possible”, i.e., it could be done, and does not confer any limitation to the process here. The instances in claim 3 could be “optional” limitations.
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered but they are not persuasive. Applicant states that claims 1-3 and 5-9 are amended to address the issues raised. (Remarks, 6, December 10, 2025.)
As discussed fully above the amendments do not overcome the present rejections.
Claim Rejections - 35 USC § 103
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 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.
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 1, 3, 5-7, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Pantziaros (Pantziaros, A.G., et al., A new olive oil production scheme with almost zero wastes, Biomass Conversion and Biorefinery (2021; published online Feb. 2020) 11:547–557) in view of Romero-Garcia (Romero-Garcia, J.M., et al., Review Biorefinery based on olive biomass. State of the art and future trends, Bioresource Technology 159 (2014) 421–432) and Wilk (US 2017/0292908).
Pantziaros teaches an olive oil production method, comprising washing olives, pitting, milling and beating or malaxation, centrifugation or cold extraction, (Figs.1, 8, and accompanying text pp.554-555; see title; abstract). In Stage 1, the leaves are removed from olives, washed, and then pitted, and in Stage 4, the pitted olive goes to malaxation device, centrifuged to extract oil, and then purified and collected (pp.550-51, 554-55). Pantziaros thus describes the second production line in clause (B) of claim 1 and claim 3. “All the used water is filtered and returned for further use such as machine cleaning” (p.555).
Pantziaros further describes extracting phenolic compounds from the pitted and pressed olive pomace using water, evaporating, and then freeze-drying the concentrate to obtain a powder, meaning the lyophilizate was micronized (p.551 3.1.4, p.548 rt.col.-549, p.549 2.2). Regarding claim 5 Pantziaros teaches that the byproducts of olive oil processing include paste made out of pomace, various antioxidants, and animal feed, among other (p.550 left col.). Therefore the skilled person could have understood that freeze-drying could be performed with intermediate products such as pomace paste also. Regarding claims 7 and 9 official notice is taken that packaging and sanitizing of a product are standard industrial practices.
Pantziaros does not specifically teach cold extraction of extra virgin olive oil from olives with stones or optical scanning to determine ripeness as in claim 1.
Romero-Garcia reviews research regarding by-products of olive oil production, namely biomass from olive tree pruning, olive stones, olive pomace and wastewaters obtained from the process (title; abstract; Fig. 2 and accompanying text). It teaches two-phase separation involving production of olive oil and olive pomace comprising olive stones (Fig. 2, right side below “Decanter”; p.422 2.3). Romero-Garcia discusses pruning olive branches and leaves which are “separated in the early steps of olive processing” and utilizing oleuropein in the leaves (p.423 2.5, p.430 left-rt. col.; see Fig. 2).
Wilk teaches a spectrometer system may be used to determine a ripeness status or fat level of a substance such as an olive using its spectral data (title; abstract; para.0014-15, 0040, 0044-45, 0051, 0093, 0292, 0294, 0301-02, 0310-16; Figs. 38-40A and accompanying text; claim 1). “[T]he analyzed spectral data and/or related additional analysis results may be dynamically added to a universal database operated by the cloud server 118, where spectral data associated with sample materials may be stored” (para.0104). Such data may be modeled or customized for optimizing a use such as estimating the oil content in food such as an avocado (paras.0316; see paras. 0236, 0246-47, 0266, 0273, 0326; Figs. 19, 39, 40A and accompanying text).
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to combine the teachings of Pantziaros, Romero-Garcia, and Wilk and combine the features of each as recited in the instant claims. The skilled person would have been suggested to do so because all are drawn to olive processing and the selection of a known material or mechanism based on its suitability for its intended use supports a prima facie obviousness determination. MPEP §2144.07 (citations omitted). Furthermore making integral several parts disclosed in a prior art to form a single unit has been held to be a matter of obvious engineering choice where such modification is not contrary to the understandings and expectations of the art. MPEP §2144.04 (V)(B) (citations omitted).
Regarding claims 10-12 which recite content of the substances obtained by the active steps in the claim from which they depend. In other words these claims do not recite an action that is performed actively, i.e., as a step comprising the method claimed. Rather the features in the claims would occur as a result of the steps in the claims from which each depends. Thus the clause raises a question as to the limiting effect of the claim language. Such a clause “in a method claim is not given weight when it simply expresses the intended result of a process step positively recited”, as in the instant claim. MPEP § 2111.04 (citations omitted).
Response to Arguments
Although new rejections are made above Applicant’s arguments are addressed now to the extent they have not been rendered moot and are relevant to the above rejections. Applicant's arguments filed December 10, 2025 have been fully considered but they are not persuasive. Applicant argues that Romero-Garcia does not suggest two extraction operations in parallel, or comparing data collected with previously-collected data. (Remarks, 8, December 10, 2025.)
In response it is noted again that making integral several parts disclosed in a prior art to form a single unit has been held to be a matter of obvious engineering choice where such modification is not contrary to the understandings and expectations of the art. MPEP §2144.04 (V)(B) (citations omitted). Furthermore as discussed above Wilk teaches data collection and comparison.
Applicant further argues that Wilk does not teach non-destructive measurement by fluorescence optical sensors. (Remarks, 8.)
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., non-destructive measurement by fluorescence optical sensors) are not recited in the rejected claim(s), i.e. claims 1, 3, and 5-12. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614