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 .
The claim sets filed October 5, 2023 and December 5, 2023 are acknowledged. Claims 70-91 are pending in the application. Claims 1-69 have been cancelled.
Claim Rejections - 35 USC § 102
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 70-83 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishina JP 0416173 (refer to the corresponding machine translation).
With respect to claim 70, it is noted that the recitation of “of treating an agricultural product” in the preamble of claim 70 is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the claim language of “the method comprising: applying a mixture to a surface of the agricultural product to form a protective coating over the surface of the agricultural product, wherein the mixture comprises: a solvent; and a composition comprising at least one monoacylglyceride of Formula I, wherein the at least one monoacylglyceride is formed by esterification or transesterification of a fatty acid in claim 70, Nishina teaches applying a mixture comprising solvent and mono-fatty acid ester of glycerin with carbon chain lengths from C1-C18 (C16 and C18) to fruits and vegetables. The mono-fatty acid ester of glycerin are esterified fatty acids (P2, entire).
With respect to claim 71, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the at least one monoacylglyceride of Formula I comprises a glycerol ester of hexadecanoic acid, a glycerol ester of 16-hydroxyhexadecanoic acid, a glycerol ester of 9,16-dihydroxyhexadecanoic acid, a glycerol ester of 10,16- dihydroxyhexadecanoic acid, a glycerol ester of 9,10,16-trihydroxyhexadecanoic acid, or any combination thereof in claim 71, Nishina teaches this limitation since Nishina teaches the mono-fatty acid ester of glycerin has a carbon chain length of C16 (palmitic or hexadecenoic acid) (P2, top).
With respect to claim 72, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the at least one monoacylglyceride of Formula I comprises a glycerol ester of octadecanoic acid, a glycerol ester of 18-hydroxyoctadecanoic acid, a glycerol ester of 9,18-dihydroxyoctadecanoic acid, a glycerol ester of 10,18- dihydroxyoctadecanoic acid, a glycerol ester of 9,10,18-trihydroxyoctadecanoic acid, or any combination thereof in claim 72, Nishina teaches this limitation since Nishina teaches the mono-fatty acid ester of glycerin has a carbon chain length of C18 (stearic or octadecanoic acid) (P2, top and middle).
With respect to claim 73, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the composition further comprises an emulsifier in claim 73, Nishina teaches this limitation since Nishina teaches the mixture comprises an emulsifier (P2, middle).
With respect to claim 74, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the composition further comprises a salt in claim 74, Nishina teaches this limitation since Nishina teaches the mixture can be used in combination with other substances such as salt water, calcium salt of an organic acid, or sodium acetate (P1, top-P2, top).
With respect to claim 75, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the composition further comprises a weak acid in claim 75, Nishina teaches this limitation since Nishina teaches the mixture can be used in combination with organic acids such as citric acid or acetic acid (P2, top and middle).
With respect to claim 76, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the solvent comprises one or both of water and ethanol in claim 76, Nishina teaches this limitation since Nishina teaches the solvent includes water or ethanol (P2, top).
With respect to claims 77 and 78, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the agricultural product is edible in claim 77 and wherein the agricultural product is a fruit or a vegetable in claim 78, Nishina teaches this limitation since Nishina teaches the composition is applied to fruits and vegetables, such as lettuce, cabbage, and apples (P2, top and bottom).
With respect to claim 79, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the agricultural product is inedible in claim 79, Nishina teaches this limitation since Nishina teaches the apple was cut into slices and is silent with respect to removal of the seeds (inedible) (P2, bottom).
With respect to claims 80-82, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the coating prevents diffusion of gaseous species in claim 80, wherein the coating reduces moisture loss from the product in claim 81, and wherein the coating reduces a rate of mass loss in the agricultural product in claim 82, it is noted that these recitations relate to the resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Nishina teaches a method that is identical to the presently claimed method as addressed above in claim 70 and Nishina teaches the freshness of the treated fruits and vegetables is preserved and maintained and wilting and changes in color can be prevented (P2, bottom).
With respect to claim 83, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein the coating is transparent to the human eye in claim 83, Nishina teaches this limitation since Nishina teaches the composition does not impair the appearance of the fruits and vegetables (P1, bottom).
Claims 85-91 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yeats et al., “The Formation and Function of Plant Cuticles” (hereinafter “Yeats”).
With respect to claim 85, it is noted that the recitation of “of treating an agricultural product” in the preamble of claim 85 is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the claim language of “the method comprising: applying a composition to a surface of the agricultural product to form a protective coating over the surface of the agricultural product, wherein the composition comprises: about 15 wt% to about 100 wt% of one or more first monoacylglycerides formed by: esterification of C16 hydroxy fatty acids, transesterification of C16 hydroxy fatty esters, or both; and up to about 85 wt% of one or more second monoacylglycerides formed by: esterification of C18 hydroxy fatty acids, transesterification of Ci8 hydroxy fatty esters, or both in claim 85, Yeats teaches depositing a composition comprised exclusively of monoacylglycerol ester of 10,16-dihydroxyhexadecanoic acid, which was formed by esterification of hydroxyhexadecanoic acids (C16), on the surface of agricultural products to form a barrier (P5, 1st-2nd paragraphs; P5-P6, Cuticle Structure, Biosynthesis, and Assembly; P11, Intracellular Acyltransferases and Hydroxylases, 2nd paragraph; P12, left column, bottom; and P15, right column, last paragraph).
With respect to claim 86, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the composition comprises: about 50 wt% to about 100 wt% of the one or more first monoacylglycerides; and up to about 35 wt% of the one or more second monoacylglycerides in claim 86, Yeats teaches this limitation since Yeats teaches the composition is comprised exclusively of monoacylglycerol ester of 10,16-dihydroxyhexadecanoic acid (P11, Intracellular Acyltransferases and Hydroxylases, 2nd paragraph; P12, left column, bottom).
With respect to claim 87, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the one or more first monoacylglycerides comprise a glycerol ester of 16-hydroxyhexadecanoic acid, a glycerol ester of 9,16- dihydroxyhexadecanoic acid, a glycerol ester of 10,16-dihydroxyhexadecanoic acid, a glycerol ester of 9,10,16-trihydroxyhexadecanoic acid, a glycerol ester of 16-hydroxy- 10- oxohexadecanoic acid, or any combination thereof in claim 87, Yeats teaches this limitation since Yeats teaches the composition comprises monoacylglycerol ester of 10,16-dihydroxyhexadecanoic acid (P11, Intracellular Acyltransferases and Hydroxylases, 2nd paragraph; P12, left column, bottom).
With respect to claim 88, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the composition comprises about 50 wt% to about 100 wt% of the one or more first monoacylglycerides in claim 88, Yeats teaches this limitation since Yeats teaches the composition is comprised exclusively of monoacylglycerol ester of 10,16-dihydroxyhexadecanoic acid (P11, Intracellular Acyltransferases and Hydroxylases, 2nd paragraph; P12, left column, bottom).
With respect to claim 89, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the one or more second monoacylglycerides comprise a glycerol ester of 18-hydroxyoctadecanoic acid, a glycerol ester of 9,18- dihydroxyoctadecanoic acid, a glycerol ester of 10,18-dihydroxyoctadecanoic acid, a glycerol ester of 9,10,18-trihydroxy-octadecanoic acid, a glycerol ester of 18-hydroxy-9,10-epoxy-octadecanoic acid, or any combination thereof in claim 89, Yeats teaches this limitation since Yeats teaches the composition is comprised exclusively of monoacylglycerol ester of 10,16-dihydroxyhexadecanoic acid and is silent with respect to a second monoacylglyceride (P11, Intracellular Acyltransferases and Hydroxylases, 2nd paragraph; P12, left column, bottom).
With respect to claim 90, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the composition further comprises one or both of an emulsifier and a salt in claim 90, Yeats teaches this limitation since Yeats teaches the composition may also comprise waxes, glycerol, or sodium chloride (P5-P6, Cuticle Structure, Biosynthesis, and Assembly; P8, right column, bottom; P12, Environment and Hormones).
With respect to claim 91, Yeats is relied upon for the teaching of the method of claim 85 as addressed above.
Regarding the claim language of wherein the agricultural product is a fruit or a vegetable in claim 91, Yeats teaches this limitation since Yeats teaches the agricultural product is a fruit or a vegetable (P15, right column, bottom).
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.
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.
Claim 84 is rejected under 35 U.S.C. 103 as being unpatentable over Nishina JP 0416173 (refer to the corresponding machine translation) as applied to claim 70 above.
With respect to claim 84, Nishina is relied upon for the teaching of the method of claim 70 as addressed above.
Regarding the claim language of wherein a thickness of the coating is less than about 1500 nm in claim 84, Nishina does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the coating in Nishina through routine experimentation with the expectation of successfully preserving the freshness of the coated product. One of ordinary skill in the art would have been motivated to do so because the thickness of the composition is a function of the ingredients present which have been shown in Nishina and addressed above in claim 70, the thickness of the coating is a variable that can be modified by adjusting the amount of each ingredient present, and Nishina also teaches the composition does not impair the flavor or appearance of the food (P1, bottom). There would have been a reasonable expectation of success. “[W]here 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) (MPEP 2144.05 II).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 70 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 11 and 22 of prior U.S. Patent No. 10517310. This is a statutory double patenting rejection.
Claim 70 of the instant invention relates to a method comprising applying a mixture comprising solvent and a composition comprising at least one monoacylglyceride of Formula I, wherein the at least one monoacylglyceride is formed by esterification or transesterification of a fatty acid. The scope of claim 70 is identical to the scope of claims 11 and 22 of US Patent No. 10517310 which also relates to a method comprising esterification of fatty acid to form monoacylglycerides of Formula I, mixing the monoacylglycerides of Formula I and a solvent, and applying the mixture to the surface of an agricultural product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at 571-272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793