DETAILED ACTION
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 Application
Receipt of the Request for Continued Examination (RCE under 37 CFR 1.114), the Response, and Amendment filed 05/05/2026 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-13
Withdrawn claims: None
Previously cancelled claims: None
Newly cancelled claims: None
Amended claims: 1
New claims: 13
Claims currently under consideration: 1-13
Currently rejected claims: 1-13
Allowed claims: None
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/05/2026 has been entered.
Claim Objections
Claim 1 is objected to because “5mm” should be read as “5 mm”.
Appropriate correction is 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.
Claims 1-13 are rejected under 35 U.S.C. 112(a) 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 recites that the plant material has at least one dimension measuring greater than 5 mm. However, neither previous versions of the claims nor the specification discloses a dimension size of greater than 5 mm. As such, claim 1 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 had possession of the claimed invention. Therefore, a dimension size of greater than 5 mm constitutes new matter.
Claims 2-13 are rejected by reason of dependency from claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Mo (US 2014/0308394; IDS citation) in view of Made (“How Chewing Gum is Made?”, July 2017, Chewing Gum Facts, https://www.chewinggumfacts.com/making-chewing-gum/how-chewing-gum-is-made/; previously cited), Gonzaga de Freitas Araújo (Gonzaga de Freitas Araújo et al., “Microbial Quality of Medicinal Plant Materials”, 2012, Latest Research in Quality Control, pages 67-82; previously cited), hereinafter referred to as “Gonzaga”, and Kirkin (Kirkin et al., “Combined effects of gamma-irradiation and modified atmosphere packaging on quality of some spices” 2014, Food Chemistry, vol. 154, pages 255-261; previously cited).
Regarding claims 1, 2, 3, 4, 5, 6, and 13, Mo teaches a method of preparing a chewing gum or confectionery product (corresponding to chewing gum compositions) comprising pieces of plant material (corresponding to dried fruit powder) [0002]. Mo teaches that the method comprises: a drying step including preparing plant material pieces of a desired size such as about 0.25-4.0 mm; and drying the plant material through radiation (corresponding to radiative drying) [0028], [00031]-[0032]. The upper boundary of a particle size of about 0.25-4.0 mm disclosed by Mo in [0031] does not fall within or overlap the claimed particle size range. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05.I. Mo teaches that the method then comprises: preparing a mass of a chewing gum or confectionary product (corresponding to gum base); and incorporating the plant material into the mass by directly mixing the plant material into the mass ([0042]-[0043], claim 15).
Mo does not teach that the plant material pieces are dried by infrared radiation; or that the plant material pieces are subjected to gamma radiation after the drying step in order to render the plant material pieces microbiologically stable while substantially preserving color and flavor of the plant material as recited in present claims 1 and 13. Mo also does not teach that the energy absorbed from gamma radiation by the dried plant material is: at least 10 kGy, at least 12 kGy, at least 15 kGy, less than 20 kGy, less than 30 kGy, or less than 50 kGy as recited in present claims 1, 2, 3, 4, 5, and 6, respectively.
However, Made teaches that the base of the chewing gum base or confectionery product is sterilized prior to mixing the gum base with other ingredients (page 3, 1st-3rd steps under “Step by step”).
It would have been obvious for a person of ordinary skill in the art prior to the effective filing date of the present invention to have modified the method of Mo to include a stabilizing step that comprises rendering the dried plant material microbiologically stable prior to mixing the dried plant material with the mass of chewing gum or confectionery product as taught by Made. Since Mo discloses that dried plant material is combined with the base ([0042]-[0043], claim 15), but does not disclose a method of preparing the gum base, a skilled practitioner would have been motivated to consult an additional reference such as Made in order to determine a suitable method of preparing a gum base. In consulting Made, the practitioner would find that the gum base is sterilized prior to combining the base with other ingredients of the gum (page 3, 1st-3rd steps under “Step by step”). In order to preserve the sterile condition of the gum base, and of the subsequent chewing gum or confectionery product made from the gum base, the practitioner would readily recognize that the ingredients added to the gum base should be sterilized as well, thereby rendering the requirement that the dried plant material pieces be rendered microbiologically stable during a stabilizing step occurring after drying of the plant material pieces as recited in present claims 1 and 13 obvious.
The combination of Mo and Made does not teach that the plant material pieces are dried by infrared radiation; or that the plant material pieces are subjected to gamma radiation during the stabilizing step in order to render the plant material pieces microbiologically stable while substantially preserving color and flavor of the plant material as recited in present claims 1 and 13. Mo also does not teach that the energy absorbed from gamma radiation by the dried plant material is: at least 10 kGy, at least 12 kGy, at least 15 kGy, less than 20 kGy, less than 30 kGy, or less than 50 kGy as recited in present claims 1, 2, 3, 4, 5, and 6, respectively.
However, drying plant material by infrared radiation is known in the art and such a method is disclosed by Gonzaga (page 70, 3rd paragraph under section 3.1- page 71, 1st paragraph). Gonzaga also teaches that gamma irradiation is a known method of effective microbial decontamination of plant material (page 74, 3rd paragraph under section 4). The ability of gamma radiation to substantially preserve color and flavor of the irradiated material is also known in the art.
It would have been obvious for a person of ordinary skill in the art prior to the effective filing date of the present invention to have modified the method of Mo by drying the plant material using infrared radiation and by rendering the plant material microbiologically stable by subjecting the plant material to gamma radiation as taught by Gonzaga. Since (1) Mo teaches that the plant material may be dried by radiative drying [0028]; and (2) the use of infrared drying to dry plant material is known in the art (Gonzaga, page 70, 3rd paragraph under section 3.1- page 71, 1st paragraph), a skilled practitioner would have readily recognized that infrared radiation may be used as the radiative drying in Mo. Therefore, the claimed drying of the plant material using infrared radiation recited in present claim 1 is rendered obvious.
Also, a skilled practitioner would readily recognize that chewing gum ingredients may be sterilized in order to preserve the sterile condition of the gum base to which the ingredients are added (Made, page 3, 1st-3rd steps under “Step by step”); and since sanitizing plant material by gamma radiation is a method known and practiced in the art, it would have been obvious for a person of ordinary skill in the art to have used gamma radiation to sanitize the dried plant material of Mo prior to adding the plant material to the gum base. Therefore, the claimed stabilizing step of rendering the dried plant material pieces microbiologically stable while substantially preserving color and flavor of the dried plant material as recited in present claims 1 and 13 are rendered obvious by the combination of Mo, Made, and Gonzaga.
The combination of Mo, Made, and Gonzaga does not disclose that the energy absorbed from gamma radiation by the dried plant material is at least 10 kGy.
However, Kirkin discloses that gamma irradiation is known in the art and discloses that the maximum absorbed dose of gamma irradiation that is approved for food such as plant material (i.e., spices) may be 30 kGy, such as 17 kGy (page 1, 1st column, 1st paragraph; page 256, 1st column, paragraph under section 2.2). The value of 17 kGy falls within the absorbed dose ranges of at least 10 kGy, at least 12 kGy, at least 15 kGy, less than 20 kGy, less than 30 kGy, and less than 50 kGy as recited in present claims 1, 2, 3, 4, 5, and 6, respectively. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
It would have been obvious for a person of ordinary skill in the art to have modified the gamma radiation step of modified Mo, Made, and Gonzaga to include providing plant material with an absorbed energy of up to 30 kGy, such as 17 kGy, as taught by Kirkin. Since Gonzaga teaches that plant material may be subjected to gamma radiation in order to microbially decontaminate the plant material while substantially retaining the flavor and color of the plant material, but does not disclose a suitable amount of absorbed energy for the plant material from the gamma irradiation, a skilled practitioner would have been motivated to consult an additional reference such as Kirkin in order to determine a suitable amount of absorbed energy, thereby rendering the absorbed energy levels recited in present claims 1, 2, 3, 4, 5, and 6 obvious.
Regarding claims 7, 8, 9, 10, and 11, modified Mo teaches the invention as described above in claim 1, including the gamma average dose rate of the gamma radiation was 2.0 kGy/h to achieve an absorbed dose of the gamma radiation by the plant material of 17 kGy (Kirkin, page 256, 1st column, paragraph under section 2.2). In order to achieve such an absorbed energy dose at such an energy dose rate, the time of gamma irradiation would necessarily be 8.5 hours, which equates to 510 minutes. This time of 510 minutes falls within the time ranges recited in present claims 7, 8, 9, 10, and 11.
Regarding claim 12, modified Mo teaches the invention as described above in claim 1, including a product of the method of claim 1 (corresponding to chewing gum or confectionary) [0008].
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1-13 over Mo, Made, Gonzaga, and Kirkin: Applicant’s arguments and amendments have been fully considered and are considered unpersuasive.
Applicant amended claim 1 to recite that the plant material piece measured greater than 5 mm in at least one dimension. Applicant argued that Mo does not disclose this claimed size; and that the particle size defined in Mo refers to the entire particle, not of any separate, individual dimension of the particle. Applicant argued that the primary purpose of Mo is to blend dried fruit into powder to use as a bulking agent while the goal of the present invention is to provide aesthetic and sensory appeal to consumers through using visible pieces of plant material. Applicant argued that Mo teaches away from the present invention as Mo discloses that the plant pieces are unnoticeable to a consumer while the present invention discloses that the plant pieces are visible to a consumer (Applicant’s Remarks, page 5, 1st paragraph under section II – page 6, 2nd paragraph).
However, the Examiner points out that the present specification discusses a particle size of less than 5 mm [0013]. Therefore, disclosures in the present specification are considered to refer to particles having a particle size of less than 5 mm, which is outside of the presently claimed particle size. As such, any asserted advantages of the claimed invention cannot be gleaned from the present specification.
In response to Applicant’s assertion that Mo does not disclose a size in at least one dimension of the particle as being greater than 5 mm as presently claimed, Mo teaches preparing plant material pieces of a desired size such as about 0.25-4.0 mm [0028], [00031]. The upper boundary of a particle size of about 0.25-4.0 mm disclosed by Mo in [0031] does not fall within or overlap the claimed particle size range. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05.I.
In response to Applicant’s assertion that the particle size defined in Mo refers to the entire particle, not of any separate, individual dimension of the particle, Applicant has not provided any evidence of such an assertion. Therefore, Applicant’s argument regarding such is unpersuasive.
In response to Applicant’s assertion that Mo teaches away from the present invention as Mo discloses that the plant pieces are unnoticeable to a consumer, the average human is able to see particles measuring 4.0 mm in at least one dimension. Therefore, it is reasonable to expect that a consumer is able to see the 4.0 mm plant material piece disclosed in Mo, even if the consumer does not feel a 4.0 mm plant material piece in the mouth amongst the other ingredients of the chewing gum. Therefore, Mo is not considered to teach away from being able to see the plant material pieces.
Applicant then argued that Made does not teach sterilization of dried plant material prior to adding the dried plant material to the gum base. Applicant argued that it would not be obvious to modify Mo using Made for this reason (Applicant’s Remarks, page 7, 1st-2nd paragraphs).
However, as described above in the rejection of claim 1 above, a skilled practitioner would readily recognize that chewing gum ingredients may be sterilized in order to preserve the sterile condition of the gum base to which the ingredients are added (Made, page 3, 1st-3rd steps under “Step by step”). Since sanitizing plant material by gamma radiation is a method known and practiced in the art as evidenced by [0005] of the present specification, it would have been obvious for a person of ordinary skill in the art to have used gamma radiation to sanitize the dried plant material of Mo prior to adding the plant material to a sterilized gum base. Therefore, the claimed stabilizing step of rendering the dried plant material pieces microbiologically stable while substantially preserving color and flavor of the dried plant material is rendered obvious.
Since the prior art has been shown to render the present claims obvious and Applicant’s arguments have been shown to be unpersuasive, the rejections of the claims are maintained as written herein.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791
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