FINAL 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
This action is in response to papers filed 06/22/2026 which claims 1-10, 12, 15, and 18 were canceled; and claims 11, 13, 16, 17, 20, 22, and 25-31 was amended.. All the amendments have been thoroughly reviewed and entered.
Claims 11, 13-14, 16-17, and 19-33 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejections and/or objections not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New Objection
Claim Objections
Claims 30 and 31 are objected to because of the following informalities: the active step “adding” is missing in step b). Please add the active step “adding” back to step b). Appropriate correction is required.
New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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 11, 13-14, 17, 19, 26, and 29-32 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 11 introduce new matter as the claim recites the limitation: “a predetermined amount of said sugar coated edible composition.” There is no support for this limitation in the specification.
Applicant asserted for the amendments are supported by at least the specification and the original and previously pending claims.
However, after a throughout review of the specification and the original claims, there appeared to be no support for predetermined about of sugar coated edible composition.
It is noted that the specification disclosed the predetermined amount is to the edible composition (Specification, pages 3-4), and not to “sugar coated edible composition.” There is no disclosure anywhere in the specification or the original claims pertaining to the sugar coated edible composition being used in a predetermined amount. Thus, Applicant does not have possession of the claimed “a predetermined amount of said sugar coated edible composition,” as recited in claim 11. Claims 13-14, 17, 19, 26, 29, and 32 are also rejected as they depend from claim 11, thereby also containing the new matter material.
Claims 29-31 introduce new matter as the claims recite the limitations: “18 grams of said cellulose based polymer” and “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract.” There is no support of said limitations in the specification.
Applicant asserted for the amendments are supported by at least the specification and the original and previously pending claims.
However, after a throughout review of the specification and the original claims, there appeared to be no support for cellulose based polymer as it pertains to the amount of 18 grams, as well as, no support for “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract” as a separate step after step b).
It is noted that Experiment 1 of the specification only discloses “18 grams of Polysaccharide Polymer.” Nowhere else in the specification or the original claims disclose “18 grams of cellulose based polymer” as claimed. It is noted that polysaccharide polymer as disclosed in the specification is a genus and thereby, can encompassed polysaccharides such as but not limited to pectin, xanthan gum, and hyaluronic acid to name a few. Thus, Applicant only has possession of “18 grams of Polysaccharide Polymer” as particularly disclosed, but not “18 grams of cellulose based polymer.”
With respect to “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract,” it is noted that the specification only discloses in Experiment 1 that “2 grams of glycerol, 0.2 grams of flavour extract, and 0.05 grams of food colouring agent was then added to the homogenous mixture and stirred at 100 to 200 rpm to obtain a second homogenous mixture.” Thus, the “adding 2 grams of glycerol, 0.2 grams of flavour extract” is performed in one step b) with the food colouring agent. There is no support in Experiment 1 or anywhere in the specification for a further step of “adding 2 grams of glycerol, 0.2 grams of flavour extract” after step b) or in other words a separate step apart from the food colouring agent. Thus, Applicant does not have possession of the “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract” as a separate step as claimed.
Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendments at the time of filing of the instant application.
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 29-31 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.
Regarding claims 29-31, the recitation of “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract” renders said claims 29-31 indefinite because it is not clear if the “further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract” is step b), to the coloring agent, the homogenous mixture, or to another component. Thus, the metes and bounds of ““further comprising adding 2 grams of glycerol, 0.2 grams of flavour extract” as recited in claims 29-31 is unclear.
As a result, claims 29-31 do not clearly set forth the metes and bounds of patent protection desired.
Modified Rejections
Necessitated by Applicant’s Claim Amendments
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 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.
Claim(s) 11, 16-17, 26-27, 29-30, and 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1).
Regarding claims 11 and 16, Pearce teaches an edible film that is used to encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]). Pearce further teaches the substance is used in pre-measured amount ([0085], [0105], [0266], [0268], and [0269]). Pearce teaches the substance for encapsulation in the edible film is in granules form ([0064], [0067], [0076], and [0082]).
Pearce teaches the substances such as breath fresheners include mint or peppermint ([0045], [0105]). As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid.
Pearce teaches the edible film is produced by thoroughly blending an amount of a cellulose polymer, water, an amount of plasticizer such as glycerol (glycerin), an amount of flavoring agent, and an amount of coloring agent to form an uniformly homogeneous mixture ([0007]-[0030], [0103]-[0170]). Pearce teaches the uniformly homogenous mixture is de-aerated under vacuum until air bubbles are removed and then casting the uniform mixture on a suitable substrate such as polyethylene terephthalate film, and then drying the cast mixture to form a coated film ([0157]-[0170]). Pearce teaches the coated film is then peel to obtain the edible film ([0157]-[0170]). Pearce teaches the edible film is then used to encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]). It is noted that selection of any order of preforming process steps or selection of any order of mixing ingredients is prima facie obvious, absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
However, Pearce does not expressly teach applying a sugar coating to the edible composition before wrapping of claims 11 and 16.
Regarding the application of a sugar coating to the edible composition before wrapping of claims 11 and 16, Albert teaches an edible product comprising edible composition coated with an sugar shell and said sugar coated edible composition is wrapped within an edible adhesive film (Abstract; [0011]-[0026]; claims 1-31).
It would have been obvious to one of ordinary skill in the art to coat the edible composition of Pearce with a sugar shell before wrapping the edible composition with an edible film, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Albert provided the guidance do so by teaching that an edible composition can first be coated with a sugar shell before it is encapsulated within edible film so as colorants/glitter can be added to the edible film, and obtain an edible product that has a colorful decorative appearance (Albert: [0011]-[0012], [0017], [0023]-[0026]). Thus, ordinary artisan seeking to produce a colorful decorative edible product would have looked to first coat the edible composition of Pearce with a sugar shell before wrapping with the edible film, and achieve applicant’s claimed invention with reasonable expectation of success.
With respect to the claimed “said edible film is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user’s mouth,” as recited in claim 11, it is noted that this recitation is an intended function of the claimed edible film. As discussed above, Pearce teaches structurally same edible film produced in claim 11, as well as, Pearce also teaches the film is orally soluble and disintegrates quickly upon placement in a human mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Pearce: [0004]; claim 44). Thus, the claimed intended function of the film is met by the structurally same edible film of Pearce.
Regarding claim 17, Pearce teaches the substance for encapsulation is encapsulated in one layer of edible film ([0004], [0005], [0041], [0089], [0104]-[0105]). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can be any desired thickness of from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer) ([0177]; claims 46-47). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can vary between 5 and 200 micrometers ([0163], [0226], [0266]). It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of the edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 26 and 27, Pearce teaches edible film contains up to about 20% of plasticizer by dry weight of the film composition, about 0.1 to about 30 wt% of flavoring agent, and an up to about 5 wt% of coloring agent ([0026]-[0027], [0046], [0119]). It is noted that the amounts of plasticizer, flavoring agent, and coloring agent disclosed in Pearce overlap the claimed amount ranges for plasticizer, flavoring agent, and food coloring agent as recited in claim 26. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amounts of plasticizer, flavoring agent, and food coloring agent in the edible film composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claims 29 and 30, as discussed above, Pearce teaches the edible film is produced by thoroughly blending an amount of a cellulose polymer, water, an amount of plasticizer such as glycerol (glycerin), an amount of flavoring agent, and an amount of coloring agent to form an uniformly homogenous mixture ([0007]-[0030], [0103]-[0170]). Pearce teaches cellulose polymer as a film-forming agent is used in amount ranging from about 0.01 to about 99 wt% ([0010]). Pearce teaches edible film contains up to about 20% of plasticizer by dry weight of the film composition, about 0.1 to about 30 wt% of flavoring agent, and an up to about 5 wt% of coloring agent ([0026]-[0027], [0046], [0119]). Thus, it would have been obvious to one of ordinary skill in the art to optimize the weight in grams of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used during preparation of the mixture, as well as, optimize the condition during preparation by adjusting the rotational speed of the mixer so as to achieve the desired uniformly homogenous mixture. Absence objective evidence showing criticality of amounts of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used in step a), as well as, the criticality of mixing at 100 to 200 rpm, in achieving an edible film composition that is unexpectedly superior from the prior art, the optimization of the weight in grams of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used during preparation of the mixture, as well as, optimization of the condition during preparation by adjusting the rotational speed of the mixer so as to achieve the desired homogenous mixture, would have been obvious by routine optimization and experimentation. It is noted that “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
Regarding claims 32 and 33, as discussed above, Pearce teaches the substance for encapsulation in the edible film can be made into granules forms, thereby the substance of Pearce is not in a powdered form.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Below is the Examiner’s response to Applicant’s argument as they pertain to the pending 103 rejections.
Applicant argues that Pearce does not teach peeling. Applicant alleges that paragraph [0160] of Pearce does not teach peeling. Applicant alleges that “[a] film can be removed from a carrier material in many ways other than by peeling as removing is a very generic term. Pearce discloses removing, not peeling. Pearce absolutely falls short of teaching or suggesting peeling and therefore does not teach the claim 11 recited feature of peeling.” (Remarks, pages 9-10).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that Pearce at paragraph [0160] teaches removing the film from the carrier material. Thus, Pearce does teach and contemplate the claimed peeling step for removing the film so that it can be package for use.
Applicant argues that “Pearce does not teach first de-aerating the solution prior to coating the mixture on the PET substrate and then drying the film afterwards.” Applicant alleges paragraph [0170] Pearce is directed to method of producing an essential containing film, which is different from paragraph [0160] of Pearce. Thus, alleges that “claim 11 is not directed to an essential oil containing film. Rather, claim 11 recites that the edible film disintegrates or dissolves without leaving substantial residue that must be swallowed or ejected from a user's mouth. This is not the case for an oil containing film, which would leave oil residue in the mouth.” As such, Applicant alleges that “Pearce's separate process embodiment for forming an essential oil containing film cannot be used to suggest that one would rely upon Pearce for de- aerating, coating, and then drying the formed edible film that is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user's mouth, as in claim 11 of the invention.” (Remarks, pages 11-12).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that Pearce at paragraph [0170] teach the deaerating the uniform mixture before casting and drying the mixture on the substrate. The recitation of “the film” after deaerating in Pearce appeared to be a typographical error as the following steps are “casting the unform mixture on a suitable substrate” and drying the cast mixture to form a film. Thus, the deaerating in Pearce is performed on the uniform mixture as the last step was to drying the cast mixture to form “a film.”
With respect to the claimed “said edible film is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user’s mouth,” as recited in claim 11, as discussed above in the pending 103 rejection, it is noted that this recitation is an intended function of the claimed edible film. As discussed above, Pearce teaches structurally same edible film produced in claim 11, as well as, Pearce also teaches the film is orally soluble and disintegrates quickly upon placement in a human mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Pearce: [0004]; claim 44). Thus, the claimed intended function of the film is met by the structurally same edible film of Pearce.
Applicant argues that Pearce does not teach or suggest wrapping of claim 11 (Remarks, pages 12-13).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that Pearce at paragraphs [0092] and [0103]-[0105] teach the film is used for encapsulating an edible material, in which the edible material is placed within the film envelope/pouch. Thus, Pearce does teach wrapping.
Applicant argues that Pearce does not teach or suggest the sugar coating feature of claim 11 (Remarks, page 13).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, the claimed sugar coating feature of claims 11 and 16 were taught and render obvious by Albert. See 103 rejection, pages 8-9 of this office action.
Applicant argues that Albert does not teach a sugar coating or shell and an edible film composition wrapped around the sugar coating or shell as recited in claims 11 and 16. (Remarks, pages 16-17).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that Albert provided the guidance for coating the edible composition of Pearce with a sugar shell before wrapping the edible composition with an edible film, in which Albert teaches that an edible composition can first be coated with a sugar shell before it is encapsulated within edible film so as colorants/glitter can be added to the edible film, and obtain an edible product that has a colorful decorative appearance (Albert: [0011]-[0012], [0017], [0023]-[0026]).
It is maintained that the edible adhesive as disclosed in Albert that is applied around (“overcoated”) or in other word, wrapped, on the sugar shell, is the edible film. See particularly paragraph [0026] of Albert.
Thus, it is maintained that Pearce in view of Albert does teach and render obvious the claimed steps of applying a sugar coating to an edible composition to form a sugar coated edible composition” and “wrapping said edible film around a predetermined amount of at least one edible composition to form a packaged dosage form after said sugar coating is applied.”
Applicant argues the claimed digestive aid is distinguished from the breath freshener of Pearce (Remarks, pages 18-19).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that The claimed “digestive aid” as recited in claim 16 is generic. Thus, under broadest reasonable interpretation (BRI) consistent with the specification, breath freshener (in other words, mouth freshener) as taught by Pearce reads on the generically claimed “digestive aid.” As discussed above in the pending 103 rejection, Pearce teaches the substances such as breath fresheners include mint or peppermint ([0045], [0105]). As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid. The specification on page 1, particularly defines “mouth freshener” under “Definitions” as synonymous to “digestive aid.” Accordingly, Birketvedt is sufficiently used as extrinsic evidence to establish that the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid in light of the preponderance of evidence from Applicant’s instant specification.
As a result for at least the reasons discussed above, claims 11, 16-17, 26-27, 29-30, and 32-33 remain rejected as being obvious and unpatentable over the combined teachings of Pearce and Albert (and as evidenced by Birketvedt) in the pending 103 rejection as set forth in this office action.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claim 11 above, and further in view of Edwards et al (US 2015/0250203 A1).
The process of claim 11 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 13, Edward teaches an edible composition comprising ingestible particles such fennel seeds and sesame seeds, wherein the ingestible particles impart flavor to the edible composition (Abstract; [0089], [0096], [0115], [0135], [0241], [0245], [0248], [0250], and [0266]).
It would have been obvious to one of ordinary skill in the art to include fennel seeds and sesame seeds as the substances in the edible composition of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Edward teaches that fennel seeds and sesame seeds can be used as ingredients in an edible composition to improve flavor. One of ordinary skill in the art would have reasonable expectation of success in including fennel seeds and sesame seeds as the substances in the edible composition of Pearce because flavoring agents are taught in Pearce as part of the edible composition (Pearce: [0120]-[0125]). Thus, ordinary artisan seeking to provide an edible composition with fennel and sesame flavors would have looked to including fennel seeds and sesame seeds as substances in the edible composition of Pearce, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues that Lee does not make up for the deficiencies of Pearce as evidence by Birketvedt (Remarks, page 14).
In response, the Examiner disagrees. As discussed above, Pearce in view of Albert, and as evidenced by Birketvedt remained to render obvious independent claim 11. See pages 7-9 of this office action, said pages being incorporated therein its entirety. Applicant’s argument directed to Lee is moot because pending 103 rejection over dependent claim 13 is based on the combined teachings of Pearce, Albert, and Edward (and as evidenced by Birketvedt), which was necessitated by Applicant’s claim amendments to claim 13.
As a result, claim 13 remained to be rejected as obvious and unpatentable over the combined teachings of Pearce in view of Albert (as evidenced by Birketvedt) and Edward in the pending 103 rejection as set forth in this office action.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claim 11 above, and further in view of Chang (US 2014/0212453 A1).
The process of claim 11 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 14, Chang teaches an edible composition (a snack) comprising flavoring ingredients such as betel nut (areca nut) and peppermint, wherein the flavoring ingredients are in powder form (Abstract; [0014], [0036], [0038], [0040], [0043]-[0044]; claims 29 and 31).
It would have been obvious to one of ordinary skill in the art to betel nut (areca nut) as one of the substances in the edible composition of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Chang teaches that betel nut (areca nut) can be used an ingredient in an edible composition to improve flavor, as it is used as a flavoring ingredient. One of ordinary skill in the art would have reasonable expectation of success in including betel nut (areca nut) as one of the substances in the edible composition of Pearce because flavoring agents are taught in Pearce as part of the edible composition (Pearce: [0104]-[0105]). Thus, ordinary artisan seeking to provide an edible composition with areca nut flavor would have looked to including betel nut (areca nut) as one of the substances in the edible composition of Pearce, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues Chang does not make up for the deficiencies of Pearce as evidence by Birketvedt. (Remarks, pages 14-15).
In response, the Examiner disagrees. As discussed above, Pearce in view of Albert, and as evidenced by Birketvedt remained to render obvious independent claim 11. See pages 7-9 of this office action, said pages being incorporated therein its entirety.
As a result, claim 14 remained to be rejected as obvious and unpatentable over the combined teachings of Pearce in view of Albert (as evidenced by Birketvedt) and Chang in the pending 103 rejection as set forth in this office action.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Albert (US 2004/0033293 A1), and as evidenced by Birketvedt (US 2016/0310552 A1), as applied to claim 11 above, and further in view of Kumar et al (WO 2016/005930 A1).
The process of claim 11 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claim 19, Kumar teaches an edible film used as an edible packaging material for wrapping food products therein, the edible film comprises carboxymethyl cellulose, glycerol or sodium oleate or potassium oleate (a plasticizer), and edible silver or gold (a coloring agent) (Abstract; [00032]-[00064]; claims 1-14).
It would have been obvious to one of ordinary skill in the art to incorporate sodium oleate or potassium oleate (a metal salt of a fatty acid) in place of glycerol as the plasticizer of Pearce, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Pearce and Kumar are commonly drawn to edible film used as an edible packaging material for wrapping food products (snacks), and Kumar provided the guidance to use sodium oleate or potassium oleate in place of glycerol in the formation of the edible film. Thus, an ordinary artisan would have looked other known plasticizers in the prior art including a metal salt of a fatty acid such as sodium oleate or potassium oleate to be used as the plasticizer in Pearce so as to form an edible film with a desired flexibility, which is one of the desired properties of the edible film of Kumar and Pearce, and achieve Applicant’s claimed invention with reasonable expectation of success.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues Kumar does not make up for the deficiencies of Pearce as evidence by Birketvedt. (Remarks, pages 19-20).
In response, the Examiner disagrees.
In response, the Examiner disagrees. As discussed above, Pearce in view of Albert, and as evidenced by Birketvedt remained to render obvious independent claim 11. See pages 7-9 of this office action, said pages being incorporated therein its entirety.
As a result, claim 19 remained to be rejected as obvious and unpatentable over the combined teachings of Pearce in view of Albert (as evidenced by Birketvedt) and Kumar in the pending 103 rejection as set forth in this office action.
Claim(s) 20-25, 28, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pearce (US 2005/0008735 A1) in view of Kumar et al (WO 2016/005930 A1), and as evidenced by Birketvedt (US 2016/0310552 A1).
Regarding claim 20, Pearce teaches an edible film that is used to encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]). Pearce further teaches the substance is used in pre-measured amount ([0085], [0105], [0266], [0268], and [0269]).
Pearce teaches the substances such as breath fresheners include mint or peppermint ([0045], [0105]). As evidenced by Birketvedt, mint or peppermint is known for its function both as a breath freshener (a flavoring agent) and a digestive aid (Birketvedt: [0045] and [0060]), thereby the breath freshener such as mint or peppermint of Pearce meets the claimed digestive aid.
Pearce teaches the edible film is produced by thoroughly blending an amount of a cellulose polymer, water, an amount of plasticizer such as glycerol (glycerin), an amount of flavoring agent, and an amount of coloring agent to form an uniform mixture ([0007]-[0030], [0103]-[0170]). Pearce teaches the uniform mixture is de-aerated under vacuum until air bubbles are removed and then casting the uniform mixture on a suitable substrate such as polyethylene terephthalate film, and then drying the cast mixture to form a coated film ([0157]-[0170]). Pearce teaches the coated film is then peel to obtain the edible film ([0157]-[0170]). Pearce teaches the edible film is then used to encapsulate substances such as flavors, breath fresheners, and confectionary food product (Abstract; [0004]-[0178]). Pearce teaches the edible film contains colors and flavors, and is cut into small pieces for use as a breath freshener or as an oral care film ([0002]-[0046], [0151]-[0152]). It is noted that selection of any order of preforming process steps or selection of any order of mixing ingredients is prima facie obvious, absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
While Pearce teaches that the edible films contains colors and flavor and is cut into small pieces, Pearce does not expressly mentioned that the edible film is shredded into small pieces to make edible glitters. However, it would have been obvious to shred or cut the edible film of Pearce into small pieces to make edible glitters in view of the guidance from Kumar.
Kumar teaches an edible film used as an edible packaging material for wrapping food products therein, the edible film comprises carboxymethyl cellulose, glycerol or sodium oleate or potassium oleate (a plasticizer), and edible silver or gold (a coloring agent) (Abstract; [00032]-[00064]; claims 1-14). Kumar teaches the edible film is prepared by mixing a composition comprising sodium carboxy methyl cellulose, sodium oleate or potassium oleate, and edible silver or gold to form a mixture, and then applying the mixture on a substrate such as PET to be dried into edible thin film, and peeling said film from the substrate and shredding or cutting said film into desired small pieces to produce edible flakes/shreds with silver/gold appearance (Abstract; [00032]-[00064]).
It would have been obvious to one of ordinary skill in the art to include edible silver or gold in the method of preparing the edible film of Pearce such that upon shredding or cutting the formed edible film, the resultant edible film that is shredded or cutted into small pieces would produce edible flakes/shreds with silver/gold appearance (edible glitters), and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Pearce and Kumar are commonly drawn to edible film used as an edible packaging material for wrapping food products (snacks), and Kumar provided the guidance for producing the edible film of Pearce such that edible silver or gold can be included in the method of the method of preparing the edible film of Pearce so as upon shredding or cutting the formed edible film, the resultant edible film that is shredded or cutted into small pieces would produce edible flakes/shreds with silver/gold appearance. Thus, an ordinary artisan seeking to product edible film flakes/shreds with silver/gold appearance (edible glitter), would have looked to including edible silver or gold in the method of preparing the edible film of Pearce and shredding or cutting the resultant edible film into small pieces would to produce edible flakes/shreds with silver/gold appearance, and achieve Applicant’s claimed invention with reasonable expectation of success.
With respect to the claimed “said edible film is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user’s mouth,” as recited in claim 20, it is noted that this recitation is an intended function of the claimed edible film. As discussed above, Pearce teaches structurally same edible film produced in claim 20, as well as, Pearce also teaches the film is orally soluble and disintegrates quickly upon placement in a human mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Pearce: [0004]; claim 44). Thus, the claimed intended function of the film is met by the structurally same edible film of Pearce.
Regarding claim 21, Kumar provides the guidance for using sodium carboxymethyl cellulose as the cellulose film forming polymer in the method of preparing the edible film, as the use of sodium carboxymethyl cellulose keeps the film sturdy with a high level of uniformity in the thickness of the film (Kumar: [00033]-[00034] and [00046]-[00064]).
Regarding claim 22, Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can be any desired thickness of from about 0.0005 inches (12.7 micrometer) to 0.002 inches (50.8 micrometer) ([0177]; claims 46-47). Pearce teaches the edible film is thin to encourage rapid dissolution or disintegration, wherein the edible film thickness can vary between 5 and 200 micrometers ([0163], [0226], [0266]). It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the thickness of the edible film would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 23, Kumar teaches and provide guidance for using sodium oleate or potassium oleate in place of glycerol in the formation of the edible film of Pearce (Kumar: [00034], [00044], [00066], [00050], [00054], [00062], [00063]). Thus, it would have been obvious for an ordinary artisan to look to other known plasticizers in the prior art including a metal salt of a fatty acid such as sodium oleate or potassium oleate to be used as the plasticizer in Pearce so as to form an edible film with a desired flexibility.
Regarding claim 24, Pearce teaches cellulose polymer as a film forming polymer ([0010]-[0013]).
Regarding claim 25, as discussed above, Pearce teaches the edible film contains colors and flavors.
Regarding claim 28, Pearce teaches edible film contains up to about 20% of plasticizer by dry weight of the film composition, about 0.1 to about 30 wt% of flavoring agent, and an up to about 5 wt% of coloring agent ([0026]-[0027], [0046], [0119]). It is noted that the amounts of plasticizer, flavoring agent, and coloring agent disclosed in Pearce overlap the claimed amount ranges for plasticizer, flavoring agent, and food coloring agent as recited in claim 26. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). As such, it would have been customary for an artisan of ordinary skill to determine the film thickness to achieve the desired thin film thin to encourage rapid dissolution or disintegration. Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the amounts of plasticizer, flavoring agent, and food coloring agent in the edible film composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 31, as discussed above, Pearce teaches the edible film is produced by thoroughly blending an amount of a cellulose polymer, water, an amount of plasticizer such as glycerol (glycerin), an amount of flavoring agent, and an amount of coloring agent to form an uniformly homogenous mixture ([0007]-[0030], [0103]-[0170]). Pearce teaches cellulose polymer as a film-forming agent is used in amount ranging from about 0.01 to about 99 wt% ([0010]). Pearce teaches edible film contains up to about 20% of plasticizer by dry weight of the film composition, about 0.1 to about 30 wt% of flavoring agent, and an up to about 5 wt% of coloring agent ([0026]-[0027], [0046], [0119]). Thus, it would have been obvious to one of ordinary skill in the art to optimize the weight in grams of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used during preparation of the mixture, as well as, optimize the condition during preparation by adjusting the rotational speed of the mixer so as to achieve the desired uniformly homogenous mixture. Absence objective evidence showing criticality of amounts of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used in step a), as well as, the criticality of mixing at 100 to 200 rpm, in achieving an edible film composition that is unexpectedly superior from the prior art, the optimization of the weight in grams of cellulose polymer in water, plasticizer (glycerol), flavoring agent, and coloring agent used during preparation of the mixture, as well as, optimization of the condition during preparation by adjusting the rotational speed of the mixer so as to achieve the desired homogenous mixture, would have been obvious by routine optimization and experimentation. It is noted that “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP §2144.05 (I)-(II).
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues Pearce does not teach peeling, as well as, first de-aerating the solution prior to coating the mixture on the PET substrate and then drying the film afterwards. (Remarks, page 20).
In response, the Examiner disagrees. As discussed above, the Examiner maintains the previously presented position that Pearce at paragraph [0160] teaches removing the film from the carrier material. Thus, Pearce does teach and contemplate the claimed peeling step for removing the film so that it can be package for use.
Furthermore, as discussed above, the Examiner maintains the previously presented position that Pearce at paragraph [0170] teach the deaerating the uniform mixture before casting and drying the mixture on the substrate. The recitation of “the film” after deaerating in Pearce appeared to be a typographical error as the following steps are “casting the unform mixture on a suitable substrate” and drying the cast mixture to form a film. Thus, the deaerating in Pearce is performed on the uniform mixture as the last step was to drying the cast mixture to form “a film.”
Applicant argues Kumar is drawn to providing a plurality of films and thus, cannot be combined with Pearce to render obvious the claimed shredding the edible film composition into small pieces to make edible glitters, as claim 20 is drawn to “edible film” in singular and not a stack films. (Remarks, pages 20-21).
In response, the Examiner disagrees. The disclosures of at least paragraphs [00032]-[00064] from Kumar are directed to a single edible film. Thus, Kumar is properly combined with Pearce to render obvious Applicant’s claim 20.
Applicant argues “claim 20 is distinguished [from Kumar] based on the feature that the edible film is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user’s mouth.” (Remarks, bottom of page 21 to page 22).
In response, the Examiner disagrees. As discussed above in the pending 103 rejection, the claimed recitation “said edible film is adapted to disintegrate or dissolve without leaving substantial residue that must be swallowed or ejected from a user’s mouth,” as recited in claim 20, is an intended function of the claimed edible film. As discussed above, Pearce teaches structurally same edible film produced in claim 20, as well as, Pearce also teaches the film is orally soluble and disintegrates quickly upon placement in a human mouth without leaving substantial residue that can be felt by the human tongue or which needs to be swallowed or ejected from the mouth (Pearce: [0004]; claim 44). Thus, the claimed intended function of the film is met by the structurally same edible film of Pearce.
Applicant argues “[t]here is no motivation to modify Pearce and Birketvedt to provide a metalized film, much less a two-layered metalized film.” (Remarks, page 20).
In response, the Examiner disagrees. The Examiner maintains the previously presented position that the obviousness analysis in the 103 rejection for claim 20 is not to “modify[ing] Pearce and Birketvedt to provide a metalized film,” but rather, it would have been obvious to one of ordinary skill in the art to include edible silver or gold in the method of preparing the edible film of Pearce such that upon shredding or cutting the formed edible film, the resultant edible film that is shredded or cutted into small pieces would produce edible flakes/shreds with silver/gold appearance (edible glitters), per guidance from Kumar. See 103 rejection, pages 22-25 of this office action.
Thus, Applicant’s argument focusing on how “[t]here is no motivation to modify Pearce and Birketvedt to provide a metalized film” is misplaced and not pertinent to the obviousness analysis in the 103 rejection for claim 20. Applicant is noted that "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
As a result, for at least the reason discussed above, claims 20-25, 28, and 31 remain rejected as being obvious and unpatentable over the combined teachings of Pearce and Kumar (and as evidenced by Birketvedt) in the pending 103 rejection as set forth in this office action.
Conclusion
No claim is allowed.
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.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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