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
Receipt of Remarks/Amendments filed on 07/30/2026 is acknowledged. Claims 1-15 are cancelled. Claims 5-12 are non-elected claims and are withdrawn. Claims 1 and 4 are amended. Claims 16-20 are new. Claims 1-4 and 13-20 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Modified Rejection As Necessitated by the Amendment Filed 07/30/2026
Claim Interpretation and Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
According to MPEP 2181, § 112(f) is applied to a claim limitation if it meets the following 3-prong test:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function
Part I: Identifying Functional Language
According to MPEP 2181, a claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term "means" or "step" and includes functional language. The presumption that 35 U.S.C. 112(f) applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.
In the instant claims, Claims 17-20 do not recite the term "means" or "step" but rather uses the phrase, such as "configured to".
Part II: Construing Functional Language
The corresponding structure, material, or act in the Specification that performs the recited function is given the broadest reasonable interpretation. However, neither the Specification nor Claims 17-20 disclose structures that perform the recited functions of “configured to hydrate”, “configured to be incorporated”, “configured to cause…spices to be transferred”, “configured to cause the edible film to hydrate”.
Part III: Definiteness of Functional Language
When § 112(f) is invoked, the specification must adequately disclose a corresponding structure, material or act that performs the function. For “means”-type claims, an adequate disclosure requires that the corresponding structure or material is: (a) disclosed in a way that one of ordinary skill in the art will understand what specific structure or material the inventor has identified to perform the recited function; (b) sufficient to perform the entire function recited in the claim limitation; and (c) clearly linked to the function in the written description.
The analysis and conclusion for each claim is as follows:
The recitation of “configured to” in Claim 17 refers to the edible film of the invention, and its intended use. As such, 112f is not invoked.
Claim 18 explicitly states what to do with the sauce, i.e. configured to be incorporated to film layer, therefore 112f is not invoked.
Claims 19 and 20 describe what happens when one side of the food product is configured to cause the transfer of spices and one side is configured to cause hydration, therefore 112f is not invoked for these claims because these recitations fall under intended uses.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 13-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Foss et al. (WO 2008/112716 A2), hereinafter Foss, in view of Verrall et al. (Of record), hereinafter Verrall.
Foss teaches an edible film comprising at least one flavoring, pullulan, and at least one plasticizer, wherein the film can be contacted with a food to provide flavoring in or on the food (Abstract; Claim 1).
Regarding Claim 1, Foss discloses preparing a polymer solution comprising pullulan, which reads on the polysaccharide, and other polymers (p. 5, line 30-34). Foss teaches that flavoring agents can be incorporated as liquid flavors and fine powders into the pullulan base, and flavoring particles can also be sprinkled on top of the cast film, i.e. spices are added to the film mass or sprinkled on top of the wet film, which reads on the claimed coating on the surface with plurality of spices (p. 6, line 9-17; p. 7, lines 6-22). Foss does not require both surfaces to be sprinkled with spices. Foss teaches preparing sauce films containing sauces or liquid concentrates, and gives an example of pullulan with BBQ sauce (p. 8). One would adjust the amount of pullulan and BBQ sauce as needed to add other components such as the at least one plasticizer (Claim 1).
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Foss teaches the at least one plasticizer is selected from glycerol, sorbitol etc., and exemplifies glycerol (Claim 6; p. 7, Example). Foss also discloses the solids comprising glycerol and pullulan in the film to be 30:70 with water, which would also render the ratio of mixture to sauce obvious (p. 7 Solids and Film tables).
Foss teaches the edible film further comprises a film-forming polymer in addition to pullulan, wherein the additional polymer is selected from a group inter alia modified cellulose etc. (Claims 9-10). However, Foss does not expressly teach anionic carboxymethylcellulose (CMC) sodium salt with a viscosity of less than 50 cp.
Verrall is in the same field and discloses the invention of an edible film useful for applying a flavoring additive to a food item (Abstract; [0037]). Verrall exemplifies a composition comprising sodium CMC (Table 1). Verrall teaches a preferred embodiment wherein the first CMC solution has a viscosity is in a range of ~25-50 cP at 25° C, and another CMC solution with a higher viscosity range (Claims 5-6; [0008]). Verrall also teaches that the food flavoring ingredient is cast as a component of the edible film, making it compatible with Foss [0014].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Verrall with Foss and use CMC taught by Verrall as the modified cellulose of Foss, i.e. use CMC with a viscosity of ~25-50 cP at 25° C, until a film with desired viscosity and dissolution rate is obtained. As such, Claim 2 is also obvious.
Regarding Claim 3, Foss teaches Mira Mist 662 modified food starch polymer at 5% in a solids composition, and 30% of this solids composition is used in the film (p. 7). As such, the polymer is present at 1.5%. VerraII also teaches an embodiment wherein the first CMC is about 2-10wt%, which overlaps with the claimed amounts (Claim 14). As above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to also start with a low amount of polysaccharide based on the teachings of Verrall and Foss and optimizing the amount as needed.
Regarding Claim 4, Foss teaches the additional at least one film-forming polymer is selected from alginates, carrageenans, xanthan gum, modified cellulose, polydextrose, starch, dextrin, maltodextrin, and combinations thereof (Claims 9-10).
Regarding Claims 13-15, Foss teaches meats with the edible film comprising spices, as well as flavoring films for beverages (p. 6, lines 23-30 through p. 8)
Regarding the recitation of “configured to hydrate”, “configured to be incorporated”, “configured to cause…spices to be transferred”, “configured to cause the edible film to hydrate” in Claims 17-20, these are intended uses. With respect to the art rejection above, the intended use of the composition does not patentably distinguish the composition, per se, because such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. See MPEP 2111.02. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the intended use does not create a structural difference and the body of the claim does not depend on the intended use for completeness but rather can stand alone. Consequently, in this case, the intended use is not limiting.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Foss in view of Verrall, and further in view of Otoni et al. ("Recent advances on edible films based on fruits and vegetables—a review." Comprehensive Reviews in Food Science and Food Safety 16.5 (2017): 1151-1169.), hereinafter Otoni.
Foss teaches an edible film comprising at least one flavoring, pullulan, and at least one plasticizer, wherein the film can
Regarding Claim 16, Foss is silent on the water activity of the edible film.
Otoni is in the food packaging field and comprehends the functions of packaging including reducing spoilage and extending the shelf-life (Intro, 1st paragraph). Otoni teaches edible films based on fruit purees combined with film-forming hydrocolloids, e.g. CMC, provides an alternative means of nutrient intake (p. 2, R. Col.; Table 1).
Otoni teaches that peach puree edible films presented a water activity of 0.43, which is low enough to avoid microbial growth; similar low water activity values of less than 0.6 were reported for films from wine grape pomace extract and from mango puree making the films stable as long as they are stored under dry conditions (p. 8, L. and R. Col.).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Otoni with that of Foss and prepare an edible film having a water activity of less than 0.6, for instance, starting at 0.43, which is considered low enough to avoid microbial growth and stable under dry storage conditions.
Response to Remarks:
Applicant argued that Noumi and Verrall do not teach the elements of amended Claim 1; Applicant argued that Verrall does not cure the deficiencies of Noumi.
Applicant’s arguments have been considered but are moot because the new ground of rejection necessitated by the amendment does not rely on Noomi for any teaching or matter specifically challenged in the argument. Verrall is relied on to teach the CMC viscosity not taught by Foss in the amended rejection supra.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: DeZeen. (Hahn, J. Holly Grounds develops dissolvable ramen packaging that turns into sauce. 13 July 2020. Obtained on 09/09/2026 from URL: <https://www.dezeen.com/2020/07/13/holly-grounds-dissolvable-noodle-packaging-design/>). Hahn teaches replacing plastic sachets for instant noodles with an edible, spice-infused wrapper that breaks down when cooked to season the broth.
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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
