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 .
This office action is in response to the application filed on December 18, 2023. The earliest effective filing date of the application is June 16, 2021.
Election/Restrictions
Applicant’s election without traverse of Group II, claim 24, in the reply filed on January 23, 2026 is acknowledged.
The remaining claims that were subject to the restriction requirement have been canceled by applicant in the amendment filed January 23, 2026.
Priority
The present application is a 371 National Stage Application of PCT/US2022/033825 which has a filing date of June 16, 2022.
Status of Application
Claims 1-53 were originally filed; claims 1, 3, 5, 6, 10-23, and 37 were originally presented and subject to a restriction requirement. Claims 24 and 54-65 are pending; claims 1-23 and 25-53 have been canceled; claims 54-65 are new. Claims 24 and 54-65 are presented for examination.
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 57-60 and 62 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 57, 59, 60, and 62, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 58 recites that the coating agent is a long chain saturated fatty acid and a triterpenoid, which renders the claim indefinite because a coating agent cannot itself be two different components at the same time. Clarity can be improved by amending the claim to read “the coating agent comprises a long chain saturated fatty acid and a triterpenoid.”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
Claim 59 recites the broad recitation “ratio ranging from 0.01:5 to 10:0.01,” and the claim also recites ratios of “1:6 to 6:1, from 1:9 to 9:1, from 1:1 to 6:1, from 1:1 to 9:1, from 1:1 to 10:0.1, from 0.1:5 to 10:0.1, from 1:9 to 6:1, from 1:6 to 1:1, from 1:3 to 1:1, from 1:9 to 1:1, or from 1:6 to 9:1,” which is the narrower statement of the range/limitation; and
Claim 60 recites the broad recitation “ratio ranging from 1:1 to 6:1,” and the claim also recites ratios of “from 2:1 to 6:1, from 3:1 to 6:1, from 4:1 to 6:1, from 5:1 to 6:1, such as about 2:1, about 3:1, about 4:1, about 5:1,” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 59 and 60 refer to ratios without defining the basis. The claim limitations are unclear as to whether the ratios are based on weight, volume, molar, etc., and as such, the claims fail to distinctly claim the subject matter of the invention and is therefore indefinite. For the purposes of examination, the claims will be interpreted as weight ratios.
Claim 60 depends from claim 57, which depends from claim 24; claim 60 recites that “the long chain saturated fatty acid and the triterpenoid are present in a ratio…;” however, neither claim 57 nor claim 24 require that both the long chain saturated fatty acid and a triterpenoid are present in the coating. Claim 24 requires the selection of a coating agent comprising a fatty acid, an alkyl ester, a fatty alcohol, a triterpenoid, or combination thereof, and claim 57 requires that the fatty acid is a long chain saturated fatty acid. Thus, there is no requirement that the coating comprises both the claimed fatty acid and the triterpenoid and limiting the ratio of the two as claimed in claim 60 is improper. Therefore, the claim is rendered indefinite. Clarity can be improved by changing the dependency of claim 60 to depend on claim 58 or 59.
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 24, 54, 56, 57, and 61-63 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cothran (US Patent 2,261,229).
Regarding claim 24, Cothran discloses a coated fruit or vegetable (p. 1, right column, lines 40-49) comprising:
a fruit or vegetable; and
an aqueous emulsion (i.e., a coating) disposed on a surface of the fruit or vegetable,
wherein the coating comprises a free oil (claims 1 and 6) that is stearic acid (i.e., the coating comprises a coating agent comprising a fatty acid) (Example 3),
wherein the coating is present in an effective amount to decrease the loss of moisture (i.e., water loss) from the fruit or vegetable via evaporation (p. 1, right column, lines 2-5).
Regarding claim 54, Cothran discloses that the coating is thoroughly deposited on each fruit over the entire surface of the fruit (p. 1, left column, lines 52-54) and that the coating is distributed uniformly over the surface of each fruit or vegetable (claim 6) (i.e., the coated fruit or vegetable has a coating surface coverage of 100%).
Regarding claims 56, 57, and 61, Cothran discloses that the coating comprises stearic acid (Example 3), which is a long chain saturated fatty acid.
Regarding claims 62 and 63, and as best interpreted with regard to the 112(b) rejections as set forth above, these claims are met through the rejection of claim 24 as set forth above with regard to the fatty acids. Claim 24 requires the selection of a fatty acid, an alkyl ester, a fatty alcohol, a triterpenoid, or combination thereof; by selecting a fatty acid that is stearic acid to meet claims 24 and 61, claims 62 and 63 are also considered to be met.
Claims 24, 54, 56, 62, and 63 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trowbridge (US Patent 2,070,936).
Regarding claim 24, Trowbridge discloses a coated fruit or vegetable comprising:
a fruit or vegetable; and
a fluid aqueous emulsion of coating material (i.e., a coating) disposed on a surface of the fruit or vegetable,
wherein the coating comprises a free fatty acid (i.e., coating comprises a coating agent comprising a fatty acid) (claim 1),
wherein the coating is present in an effective amount to accomplish material reduction of the normal rate of withering or shrinkage caused by loss of moisture through the skin or rind (i.e., decrease water loss from the fruit or vegetable via evaporation) (p. 1, left column, lines 28-34).
Regarding claim 54, Trowbridge discloses that the coating is uniform around and completely encloses the fruit or vegetable (i.e., the coated fruit or vegetable has a coating surface coverage of 100%) (p. 3, left column, lines 4-7).
Regarding claim 56, Trowbridge discloses that the free fatty acid is oleic acid (p. 2, right column, line 51), which is a long chain monounsaturated fatty acid.
Regarding claims 62 and 63, and as best interpreted with regard to the 112(b) rejections as set forth above, these claims are met through the rejection of claim 24 as set forth above with regard to the fatty acids. Claim 24 requires the selection of a fatty acid, an alkyl ester, a fatty alcohol, a triterpenoid, or combination thereof; by selecting a fatty acid to meet claim 24, claims 62 and 63 are also considered to be met.
Claims 24, 54, 56, 57, 61-63, and 65 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nussinovitch et al. (US PG Pub. 2018/0325135), herein after referred to as Nussinovitch.
Regarding claim 24, Nussinovitch discloses a coated postharvest plant matter (claim 54), the postharvest plant matter being edible plant matter that is a fruit or vegetable [0029] comprising:
a fruit or vegetable (claim 47); and
a coating disposed on a surface of the fruit or vegetable,
wherein the coating comprises a fatty acid (i.e., coating comprises a coating agent comprising a fatty acid) (claims 36 and 54),
wherein the coating is present in an effective amount to reduce water loss and improve shelf life (i.e., decrease spoilage) of the fruit or vegetable (Abstract; [0021]).
Regarding claim 54, Nussinovitch discloses that the coating is a layer formed on the surface of the fruit or vegetable (i.e., the coated fruit or vegetable has a coating surface coverage of 100%) ([0129]; claim 54).
Regarding claims 56, 57, and 61, Nussinovitch discloses that the fatty acid in the coating is stearic acid ([0027]; claim 45), which is a long chain saturated fatty acid.
Regarding claims 62 and 63, and as best interpreted with regard to the 112(b) rejections as set forth above, these claims are met through the rejection of claim 24 as set forth above with regard to the fatty acids. Claim 24 requires the selection of a fatty acid, an alkyl ester, a fatty alcohol, a triterpenoid, or combination thereof; by selecting a fatty acid that is stearic acid to meet claims 24 and 61, claims 62 and 63 are also considered to be met.
Regarding claim 65, Nussinovitch discloses that the fruit is a blueberry [0114].
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 55 is rejected under 35 U.S.C. 103 as being unpatentable over Nussinovitch et al. (US PG Pub. 2018/0325135).
Nussinovitch discloses the coated fruit or vegetable as set forth above with regard to claim 24.
Nussinovitch teaches that the coating is applied to the fruit or vegetable in a volume of about 0.5-500 μl per about 100 g of the fruit or vegetable [0130]. Since the coating taught by Nussinovitch is primarily water (claim 50), it can be assumed that the density of the coating is about the same as the density of water, which is 1 g/mL (or 0.001 g/μl).
To find the weight of the coating: weight = density x volume.
When the volume is 0.5 μl, weight = 0.001 g/μl x 0.5 μl; weight = 0.0005 g.
When the volume is 500 μl, weight = 0.001 g/μl x 500 μl; weight = 0.5 g.
Nussinovitch also teaches that the coating comprises 0.01-2 wt.% of the fatty acid (claim 50). Therefore, the coating comprises a minimum of 5x10-8 g of the coating agent (i.e., fatty acid) and a maximum of 0.01 g. Converting to μg, the range becomes 0.05-10,000 μg, which encompasses the claimed range of 650-4500 μg. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Claims 58-60 and 62-64 are rejected under 35 U.S.C. 103 as being unpatentable over Nussinovitch et al. (US PG Pub. 2018/0325135) as applied to claims 24 and 57 above, and further in view of Zhou (CN 108935655; citations refer to the machine translation) as evidenced by Moggia et al. (“Fruit characteristics and cuticle triterpenes as related to postharvest quality of highbush blueberries,” Scientia Horticulturae; volume 211, pp. 449-457; November 2016), herein after referred to as Zhou and Moggia respectively.
Nussinovitch discloses the coated fruit or vegetable and the coating comprising a fatty acid wherein the fatty acid is stearic acid (a long chain saturated fatty acid) as set forth above with regard to claims 24 and 57.
Regarding claims 58 and 62-64, Nussinovitch discloses that the coating agent is stearic acid ([0027]; claim 45), which is a long chain saturated fatty acid.
Nussinovitch is silent as to that the coating also comprises a triterpenoid wherein the triterpenoid is oleanolic acid. However, Nussinovitch also teaches that the coating further comprises a natural compound isolated from the surface of the fruit or vegetable ([0030]; [0102]).
Zhou, in the same field of invention, teaches a preservative for post-harvest fruit and vegetables that comprises oleanolic acid ([0004]; claim 1), which is a triterpenoid.
As evidenced by Moggia, oleanolic acid is a natural compound that is isolated from the cuticle of blueberries (i.e., a natural compound isolated from the surface of the fruit) (p. 452, section 3.2).
Therefore, as it was known in the art to coat fruits and vegetable for preservation, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the composition of Nussinovitch by using oleanolic acid as the natural compound, as Zhou teaches that oleanolic acid is known to be used for the preservation of fruits and where oleanolic acid is a natural compound isolated from the surface of a fruit.
Thus, Nussinovitch in view of Zhou as evidenced by Moggia teaches that the coating comprises the coating agents of stearic acid (a long chain saturated fatty acid) and oleanolic acid (a triterpenoid).
Regarding claims 59 and 60, modified Nussinovitch teaches that the coating agent is a long chain saturated fatty acid and a natural compound, the natural compound being a triterpenoid, as set forth above.
Nussinovitch teaches that the natural compound is preferably sterol [0102] and that the coating comprises 0-0.2 wt.% sterol. Where Nussinovitch teaches that sterol is only one preferred example of a natural compound isolated from the surface of a fruit/vegetable for use in the invention [0102], it would have been obvious to one of ordinary skill in the art to have selected and used any other natural compound isolated from the surface of a fruit/vegetable in place of the sterol at the same taught amount in the coating composition, as they are taught to be interchangeable.
Therefore, modified Nussinovitch teaches that the coating comprises 0.01-2 wt.% of the fatty acid (stearic acid being the fatty acid) and 0-0.2 wt.% of the triterpenoid. Thus, the long chain saturated fatty acid and the triterpenoid are present in a ratio ranging from 0 to 2:0.2, which overlaps with or encompasses the claimed ranges. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791