DETAILED ACTION
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 6 recites “banana leave” when the proper spelling when referring in the singular tense is ‘banana leaf’.
Claim 4 recites “by arranging the banana leaves in a freezer chamber including a current of air flows over the surfaces”. It would appear the claim should recite ‘by arranging the banana leaves in a freezer chamber including a current of air that flows over the surfaces’ or similar.
Appropriate correction is required.
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 1 - 5 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 claim 1, line 5, there is no antecedent basis for the term “the main vein”.
Regarding claim 1, line 9, it is unknown what would constitute “potions of the banana leaves”. It is believed that the claim is meant to recite ‘portions of the banana leaves’ and for the purpose of examination the claims has been so treated.
Claims 2 – 5 are rejected by virtue of their dependence on a rejected base claim.
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.
Claims 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Plant Abundance as further evidence by FireFighter Now (FFN) in view of Applicant’s Admission of the Prior Art (AAPA) as further evidenced by Whirlpool in view of Nelson.
Regarding claim 1, Plant Abundance discloses a process to preserve musa spp., i.e., banana leaves, comprising roasting banana leaves by exposing the leaves to a temperature between 280º C to 320º C using a wood fire. As further evidenced by FFN a wood fire would commonly provide a temperature of around 320º C (311º C) (page 5). Regarding the specific time of 0.5 to 1.0 second Plant Abundance discloses that the banana leaves are simply passed over the temperature source (page 5) that is the leaves are slowly passed back and forth over the temperature source exposing individual areas of said leaves for a brief time to the temperature source as seen on pages 3 – 6. Since the obvious goal of Plant Abundance is to wilt the leaves by a brief exposure to the heat source it would have been an obvious matter of choice to the ordinarily skilled artisan to have exposed the leaves to the temperature source for about 0.5 to 1.0 seconds in the video (page 3 – 6) in order to wilt the leaves before further processing. The banana leaves are deveined by identifying a main vein of the banana leaves and making a cut on both side of the main vein and along a length thereof until the blades of the banana leaves are freed (page 7 and 8). Further, since Plant Abundance is preserving said banana leaves for use in preparing food and/or using said banana leaves as plates it would have been an obvious matter of choice for Plant Abundance to have eliminated defects in portions of the banana leaves. Plant Abundance then cuts the banana leaves into fragments or sections to obtain a predetermined amount (page 8), packages the leaves in a barrier media (zip bag) to contain them (page 8 and 9) and freezes the packaged banana leaves (page 10, transcript line 6, “ready to in the freezer) until ready for use (page 10, transcript line 10 and 11, just pull them out of the freezer give them a quick defrost). Once it was known to freeze the packaged banana leaves it is not seen that patentability would be predicated on the particular temperature at which said leaves would be frozen absent clear and compelling evidence to the contrary. Further regarding particular temperature at which the banana leaves would be frozen, AAPA admits that the ordinarily skilled artisan knows to preserve banana leaves by freezing, that freezing is a widely used process to preserve banana leaves, and that the freezing is done by applying a temperature well below zero Celsius. AAPA further admits that the ordinarily skilled artisan has a clear understanding regarding the optimal freezing temperatures and times for freezing of banana leaves (specification [0009]) which is to say that freezing the packaged banana leaves at -18º C would have been an obvious matter of design and/or choice to the ordinarily skilled artisan. Whirlpool provides further evidence that the optimum temperature for freezer storage of foods, which would include banana leaves, would be at or below -18º C (page 1). Regarding a particular desired, i.e., predetermined weight amount, once it was known to package the banana leaves in a barrier media to container them it is not seen that patentability would be predicated on the specific weight of leaves in the barrier media.
Claim 1, differs from Plant Abundance in eliminating foreign matter and/or microorganisms and washing said leaves with a soapy water solution and subsequently immersing said leaves in a disinfectant solution.
Nelson discloses that when handling banana products it is common industry practice to eliminate foreign matter (insects) and microorganisms (fungi, sooty mold) and that said elimination of foreign matter and microorganisms would be done by washing the banana products in a soapy water solution and immersion in a disinfectant (bleach) for a period of time (page 28 – 33). Further it is seen that not only the bananas would contain foreign matter and microorganisms but the entire banana tree would also be subjected to foreign matter and microorganism contamination therefore it would have been obvious to the ordinarily skilled artisan that it would be necessary to wash the banana leaves to remove foreign matter and microorganisms as well by using a soapy water solution and a disinfectant. To therefore modify Plant Abundance and wash the banana leaves to remove foreign matter and microorganisms by using a soapy water solution and a disinfectant as taught by Nelson would have been obvious. Regarding a specific time period for immersing said leaves in a disinfectant, once it was known to immerse the banana leaves in a disinfectant to eliminate microorganisms it is not seen that patentability would be conferred by the specific time period of between 5 and 10 minutes absent strong and compelling evidence to the contrary. It is a settled principle of law that a mere carrying forward of an original conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (MPEP § 2144.05 II.A.).
Regarding claim 2, Plant Abundance as further evidenced by FFN in view of AAPA as further evidenced by Whirlpool in view of Nelson disclose the roasting of banana leaves, by exposing the banana leaves to a burning device that uses a solid fuel, i.e., firewood, (Plant Abundance page 3 – 7). Plant Abundance further discloses that said searing would also be accomplished by passing the banana leaves over a hot stovetop which stovetops are commonly fueled by electrical energy and gaseous fuel like natural gas and propane (page 5).
Regarding claim 3, Plant Abundance as further evidenced by FFN in view of AAPA as further evidenced by Whirlpool in view of Nelson disclose the deveining step would be conducted manually with a cutting device (scissors) (Plant Abundance page 7 and 8).
Regarding claim 4, Plant Abundance as further evidenced by FFN in view of AAPA as further evidenced by Whirlpool in view of Nelson admits that the ordinarily skilled artisan has a clear understanding regarding the optimal freezing temperatures and times for the freezing of banana leaves (applicant’s specification [0009]) which is to say that AAPA is admitting that the specific freezing conditions that would be applied would have been an obvious matter of routine optimization which the ordinarily skilled artisan would conventionally and routinely optimized. 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, here current of air flow and periods of time (MPEP § 2144.05 II.A.).
Nevertheless, by teaching the placement of the banana leaves in a freezer Plant Abundance is clearly encompassing and suggesting a freezing step where said freezing would be carried out by arranging the banana leaves in a freezer chamber that includes flowing a current of air over the leaves. Whirlpool provides further evidence that the optimum temperature for freezer storage of foods, which would include banana leaves, would be at or below -18º C (page 1).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Plant Abundance as further evidence by FireFighter Now (FFN) in view of Applicant’s Admission of the Prior Art (AAPA) as further evidenced by Whirlpool in view of Nelson as further evidenced by Garwood 5,103,618.
Regarding claim 5, Plant Abundance as further evidenced by FFN in view of AAPA as further evidenced by Whirlpool in view of Nelson discloses the banana leaves would be packed in food grade bags (zip lock) (Plant Abundance page 9 and 10).
Claim 5 differs from Plant Abundance as further evidenced by FFN in view of AAPA as further evidenced by Whirlpool in view of Nelson in the bag(s) being further packed in boxes.
Once it was known to pack the banana leaves in a food grade bag it is not seen that patentability would be predicated on the specific amount of banana leaves that would be packed in said bags or the capacity of any boxes the bags would be contained in. Limitations relating to the size of the package or the capacity of a box in which said bags would be contained are not seen as sufficient to patentably distinguish over the prior art. The mere scaling up of prior art bags and boxes to contain said bags capable of being scaled up, if such were the case, would not establish patentability in a claim to old bags and boxes to contain said bags so scaled. 531 F.2d at 1053, 189 USPQ at 148.). Where the only difference between the prior art and the claims was a recitation of relative capacity of the claimed bags and boxes to contain the bags and bags and boxes having the claimed relative dimensions would not perform differently than the prior art bags and boxes, the claimed bag and box is not seen to be patentably distinct from the prior art bags and boxes. Garwood provides further evidence that it was well established and conventional in the art to package individual containers, such as bags, in boxes containing multiples of said containers for shipment (col. 9, ln 14 – 24 and fig. 19 and 20).
Response to Arguments
Applicant's arguments filed 25 July 2026 have been fully and carefully considered but they are not found persuasive.
Applicant appears to urge the present amendment includes the term “mainly”. The term mainly does not appear in the amended claims.
Applicant urges that Applicant’s Admission of the Prior Art refers to the general knowledge existing in the technical field and does not admit to the specific combination of process steps, operational parameters, and technical conditions presently claimed was known, obvious, or suggested by the prior art, that the specification specifically describes a process comprising controlled roasting, deveining, disinfecting, packaging, and freezing parameters, the technical effects of which were evaluated through physical, mechanical, and colorimetric testing, demonstrating the simultaneous preservation of appearance, color, mechanical resistance, flexibility, and stability of the banana leaf during prolonged storage. These urgings are not deemed persuasive.
Here applicant is urging many limitations not found in the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., appearance, color, mechanical resistance, flexibility, and stability of the banana leaf during prolonged storage) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant urges that Plant Abundance does not disclose controlled and standardized time and temperature parameters such as those specifically defined in the present application, particularly exposing the banana leaves to temperatures between 280°C and 320°C during a controlled period between 0.5 and 1 second and the present application experimentally demonstrates that the specifically claimed parameters allow preservation of the characteristic coloration of the banana leaves within commercially acceptable ranges, as evidenced by the CIELAB colorimetric analyses reported in the specification. Applicant further urges that Plant Abundance does not disclose specific freezing temperature parameters, controlled freezing times, or technical conditions directed to preserving moisture content, flexibility, mechanical resistance, or visual stability of the banana leaves. Much less does Plant Abundance disclose experimental evidence demonstrating simultaneous preservation of such properties after prolonged storage periods and that the present application incorporates objective experimental evidence demonstrating that the specific combination of claimed parameters allows preservation of texture characteristics, mechanical resistance, appearance, and color of the banana leaves even after freezing and prolonged storage processes. These urgings are not found persuasive.
Again applicant is urging limitations not found in the claims and it must be remembered that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
Applicant urges that Plant Abundance teaches an objective contrary to the present invention in that the leaves must change colour as a consequence to exposure to fire. First applicant is urging limitations not claimed. Further the applicant appears to be urging the conclusion of obviousness is based upon improper hindsight reasoning. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant urges that Plant Abundance does not disclose the specific freezing temperature of -18º C. This urging is not deemed persuasive.
It must be remembered that the rejections have been made over a combination of references. If Plant Abundance had taught every limitation as claimed a rejection under 35 U.S.C. 103 would not have been necessary as a rejection under 35 U.S.C. 102 would have ensued. It is also noted that AAPA clearly discloses that the ordinarily skilled artisan knows specific optimal freezing temperatures for banana leaves and would understand and choose the appropriate temperature to do so and that Whirlpool discloses that the optimum temperature for foods would be at or below -18º C as claimed.
In urging experimental results, parametric combinations, storage tests, and colourmetric analyses from the specification applicant continues to urge limitations not recited in the claims.
It is also seen that applicant urges Plant Abundance alone when the rejections have been made over a combination of references making the invention as claimed obvious over the combination of the prior art. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 14 October 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
