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 Claims and Response to Restriction
Claims 1-15 are pending. Applicant’s election with traverse of the invention of Group I (Claims 1-4 and 13-15), drawn a reversible edible film comprising 2 sides: Side A, a surface coated with spices; and Side B, composed of a polysaccharide mixture with an anionic carboxymethylcellulose (CMC) sodium salt, glycerin, and marinating liquid or sauce; and a food comprising the edible film, for examination in the reply filed 04/06/2026, is acknowledged by the Examiner. Applicant amended independent Claim 1, which now recites that the film has “two functional-differentiated sides”, and that side B is “exclusively composed of the polysaccharide mixture, glycerin, and sauce or marinating liquid.” Applicant claims that Verrall does not disclose these amended features, and therefore, the invention’s special technical feature makes a contribution over prior art. However, the Examiner maintains that the instant invention does not make a contribution over the prior art in spite of the amendment, as indicated by the Obviousness rejection infra over Noumi et al. (JP H07-322812 A, machine translated in IP.com), in view of Verrall et al. (US 2009/0035426 A1; Of record).
As such, Claims 5-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 1-4 and 13-15 are currently under examination and the subject matter of the present Office Action and the restriction requirement is made Final.
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.
Claims 1-4 and 13-15 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.
Claim 1 requires that Side B of the film is “exclusively” composed of the polysaccharide mixture, glycerin, and sauce or marinating liquid. First, it is unclear if Applicant is using “exclusively” to mean “consisting of”, “consisting essentially of”, or something else. Second, one of ordinary skill in the art would not be able to ascertain what elements are being included and excluded because the phrase also recites “sauce or marinating liquid” but does not limit what is in the sauce or the liquid. As such, it is unknown as to what ingredients are being excluded and what are allowed as part of the sauce or marinating liquid. The metes and bounds of the claim is unclear, and the claim, along with all the dependent claims, are rejected.
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 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Noumi et al. (JP H07-322812 A, machine translated in IP.com), hereinafter Naumi, in view of Verrall et al. (US 2009/0035426 A1; Of record), hereinafter Verrall.
Noumi teaches an edible casing film with surface treatment layer of a chitosan salt on at least one surface of the polysaccharide film (Claim 1).
Regarding Claim 1, Noumi discloses preparing the edible film by dispersing gellan gum, other water-soluble polysaccharides and polyhydric alcohol in water and heated to dissolve, in order to prepare a uniform aqueous solution (p. 5, 3rd paragraph). Specifically, Noumi gives an example comprising a step wherein 2 parts by weight of gellan gum, 1 part by weight of xanthan gum, 1 part by eight of locust bean gum and 2 parts by weight of glycerin were dispersed in 100 parts water (p. 5, Example 1).The amounts fall within the claimed amounts for polysaccharide and glycerin. A chitosan salt solution was sprayed and dried on the surface, and the film was eventually molded into a tube with the chitosan salt being in the inner surface (Example 1). However, Noumi teaches that the surface treatment can be on more than one surface, which renders the edible film reversible (Claim 1).
Regarding Side A, Noumi also teaches that known colorants, spices, flavors, sweeteners, seasonings and the like may be added to the edible film of the present invention or may be attached to the surface (p. 5, 1st paragraph). Regarding Side B, the tube was filled with pork hydrolyzed with pickle liquid, steamed, and cooled at a humidity of 30%, then the film is adhered to the meat, which would mean that the inner side of the film comprises the sauce or marinating/pickling liquid (p. 5, Example 1). Regarding the ratio between the sauce and the mixture, Noumi discloses that the film has a water content of 17%. It would be obvious to one of ordinary skill in the art to replace this water with the same amount of liquid sauce, to impart flavor to the edible film.
The polysaccharides used in the edible film is not limited to what is exemplified. Noumi teaches suitable polysaccharides including xanthan gum, locust bean gum, pectin, alginic acid, carboxymethyl cellulose, soluble starch etc. and their its salts and mixtures, reading on the polysaccharides in Claims 1 and 4 (p. 2, [0006]).
Regarding the viscosity in Claim 1, Noumi does not teach the viscosity claimed.
Verrall is in the same field and discloses the invention of an edible film useful for applying a flavoring additive to a food item, wherein the film includes preferably a blend of two different CMCs, suitable for use as flavored films meats and meat products, such sausages and hams (Abstract; [0037]). The edible film of Verrall is also useful as casing, and can be formulated to at least partially disintegrate upon application to a food item to rapidly impart the flavoring additive to the food item ([0003], [0005]). 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 further supports Noumi by teaching that the food flavoring ingredient is added as a component of the edible film is applied directly to the food item, and wrapping the food with the flavored film [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 Noumi and seek guidance from Verrall in using the CMC suitable for edible casing, i.e. using any of the CMCs taught by Verrall, including the 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, VerraII teaches an embodiment wherein the first CMC is about 2-10wt%, which overlap 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 Noumi and optimizing the amount as needed.
Claims 13-15 are also rendered obvious as Noumi teaches that its edible film has good adhesion to processed foods such as ham and cucumber, and is suitable for a casing for manufacturing a processed food [0025].
Conclusion
No claims are allowed.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
Prosecution Insights