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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17168304, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, the parent application fails to provide support for any of the instant claims. Therefore, the instant claims will not be granted priority back to the parent application and will have the earliest effective filing date of the instant application, which is 9/12/2023.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 10 are rejected under 35 U.S.C. 102a1 as being anticipated by Sida et al. (2019).
Regarding Claims 1-4, Sida teaches a single ingredient dehydrated spice as Sida teaches dried ginger (Pages 36-38), having a water activity of 0.3 (Table 3), which is in the claimed range. Sida is also seen to teach a monoterpene level of greater than 100ppm, 300ppm, 250ppm and 500ppm, as Sida teaches that lower drying temperatures increased monoterpenes and discussed geranial as a monoterpene and that the most geranial contents were found when drying at 50̊C (Page 38). Sida also notes high contents of geranial present and comprises one of the important aromas of ginger (Page 38). It is noted that Applicant discloses drying of ginger in the range of 35-65̊C and discusses this drying temperature range and the claimed amount of monoterpenes and other claimed components (Paragraph 122 of PG Publication). Therefore, it is understood that the dried ginger of Sida would also have monoterpenes at a levels greater than the claimed levels.
Regarding Claim 10, Sida is taken as cited above and teaches a single ingredient dehydrated ginger spice, comprising a monoterpene level of greater than 250ppm, for reasons as set forth above, a water activity of 0.3, as set forth above, and also teaches a gingerol content of greater than 4590 micrograms/g and a shogaol content greater than 3200 micrograms/g as Sida teaches the dried ginger samples have around 11-12 mg/g gingerol and 2mg/g shogaol (Figure 3), where both taught amounts are greater than the claimed amounts of the two claimed components.
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sida et al. (2019).
Regarding Claims 5-7, Sida teaches that the color and brightness of the dried ginger is affected by thermal treatment, where high temperatures turned the ginger darker with a slight yellowness with lower L* and higher b* because the browning of the ginger was greater at a higher drying temperature (Page 36) and teaches the highest L*, which translates to more yellowness at lower drying temperatures, with a L* of 81, a* of 3.5 and b* of 15 (Table 3). While Sida is silent as to the R, G and B values, it is noted that Applicant discloses the claimed R, G and B values correspond to L*a*b values of L of 83, a of 1.834 and b of 35 (Paragraph 123 of PG Publication). While the L* of Sida is close to the optimal L* of Applicant of 83, it is noted that the a and b values are outside the range disclosed. However, since Sida teaches that lower drying temperatures results in increased yellowness and lower browning of the resulting dried ginger, it would have been obvious to one of ordinary skill in the art to have optimized the drying temperature of the ginger in order to arrive at a dried ginger having the desired brightness and yellow tone. Given the teachings and guidelines of the prior art, it would have been well within the skill of one of ordinary skill in the art to have settled on an optimal drying temperature to arrive at a dried ginger having the desired brightness, minimal browning and optimal yellow tone. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the R, G, B values of the dried ginger involves only routine skill in the art. MPEP 2144.05 II.
Regarding Claim 8, as set forth above, Sida teaches a gingerol content of greater than 4590 micrograms/g and a shogaol content greater than 3200 micrograms/g as Sida teaches the dried ginger samples have around 11-12 mg/g gingerol and 2mg/g shogaol (Figure 3), where both taught amounts are greater than the claimed amounts of the two claimed components. However, Sida teaches the content of 6-gingerol increased with increasing drying temperature and that 6-gingerol seems to decompose as the drying temperature increases and transforms into 8 and 10-gingerol (Page 38). Similarly, drying temperature directly affects the yield of 6-shogaol and that the content of 6-shogaol slightly decreased as the temperature decreased to 60̊C (Pages 38-39). Sida also teaches 6-gingerol has a pungent aroma/taste (Page 36). Therefore, it appears known in the art that adjusting drying temperature affects the levels of these components in dried ginger and that it would have been well within the skill of one of ordinary skill in the art to have chosen an optimal drying temperature in order to optimize the levels of individual taste and flavor compounds in the resulting dried ginger. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amounts of flavor/aroma compounds of the dried ginger involves only routine skill in the art. MPEP 2144.05 II.
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Sida et al. (2019).
Regarding Claims 9 and 11, Sida is taken as cited above in the rejection of Claims 3 and 10.
Regarding Claims 9 and 11, Sida is taken as cited above and teaches Sida teaches the dried ginger samples have around 11-12 mg/g 6-gingerol and 2mg/g 6-shogaol (Figure 3), where such levels are greater than the claimed amount of 6200 micrograms/g of 6-gingerol and 3750 micrograms/g of 6-shogaol, and therefore meet the limitations in Claim 11, but are higher than the amounts recited in Claim 9. While Sida does not specifically teach amounts of 10-gingerol and 10-shogaol, Sida teaches that 6-gingerol decomposes as the drying temperature increased to 60̊C and transforms into 10-gingerol (Page 38). It is reasonably understood that the same reaction would occur for 6-shogaol and 10-shogaol. Therefore, it is understood that at some point during heating, some amount of 6-gingerol and 6-shogaol would be converted to its other forms, such as 10-gingerol and 10-shogaol and it would have been well within the skill of one of ordinary skill in the art to have determined the optimal time and temperature for drying to maximize the flavor and aroma compounds desired in the final dried ginger product. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amounts of flavor/aroma compounds of the dried ginger involves only routine skill in the art. MPEP 2144.05 II.
Response to Arguments
The claim objections have been withdrawn in light of Applicant’s amendments. Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive for the following reasons. In response to Applicant’s arguments presented, the Examiner notes that ginger is very briefly discussed in Applicant’s specification, only in Paragraphs 122 and 123, and there is very little detail about any process to produce the dried ginger and whether any particular processing steps result in the claimed parameters for the dehydrated spice. Since Sida teaches comparable drying temperatures for the ginger as discussed by Applicant, one of ordinary skill in the art would have expected a comparable product to be formed, with an amount of monoterpenes as claimed, particularly since Sida teaches that lower drying temperatures increased monoterpenes and discussed geranial as a monoterpene and that the highest geranial contents were found when drying at 50̊C (Page 38). Sida also notes high contents of geranial present and comprises one of the important aromas of ginger (Page 38). Therefore, since Sida teaches dried ginger having the highest contents of monoterpenes like geraniol when dried at 50̊C and Applicant disclosed a temperature range for drying fully encompassing 50̊C, the composition will react or co-act in the same manner as claimed by Applicant, and therefore, the properties of these components will necessarily be present because a component and its properties are inseparable. Therefore, if the components are present, their properties would also be necessarily present. See In re: Papesch and In re: Antonie as cited in MPEP 2141.02 V. Therefore, the burden has properly shifted to Applicant to show that drying ginger at 50̊C would not necessarily result in monoterpenes levels as claimed. As previously set forth, Sida teaches a water activity within the claimed range. Regarding Applicant’s assertions about the methods that Sida used to disclose the amounts of volatile components present in the dried ginger samples and that it may inaccurately reflect the amounts of the components, the Examiner referred to disclosure in Sida at the bottom of Page 39 where amounts of 6-shogaol are discussed in units of mg/g and in Figure 3 on Page 39 of Sida which shows the 6-gingerol, 6-shogaol, paradol and zingerone content in mg/g of dried sample at various drying temperatures. The Examiner notes that Applicant’s claim recite amounts of the claimed compounds and Sida teaches amounts of the claimed compounds. Applicant can amend the claims to more specifically claim how the amounts are calculated, if supported by the specification and if critical for patentability of the claims and if different from how the prior art discusses amounts. However, to the extent of how the claims are currently drafted, the Examiner maintains that Sida either teaches or renders obvious the claimed limitations. Lastly, for the rejection of Claims 9 and 11, the reference of Johnson was mistakenly included in the statement of the rejection but was not used in the body of the rejection, therefore Johnson was removed from the statement of the rejection and the Examiner apologizes for any confusion this caused. In light of the teachings of the prior art, the Examiner still maintains that Applicant’s claimed single ingredient dehydrated ginger does not appear to be outside of what is known in the art or that the claimed amounts of the naturally occurring components would be unexpected based on teachings of the prior art. If there is data presented in Applicant’s Table 1 that shows that Applicant’s disclosed and supported methods results in dehydrated spices that have color and monoterpene levels that are outside of what is expected from prior art teachings, and are therefore novel, than Applicant should so amend claims to reflect such limitations. However, for the above mentioned reasons, the Examiner is not persuaded of the patentability of Applicant’s claims and the office action is made final and deemed proper at this time.
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 JENNA A WATTS whose telephone number is (571)270-7368. The examiner can normally be reached Monday-Friday. 9am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/ Primary Examiner, Art Unit 1791 12/11/2025