DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The grounds of rejection set forth below for claims 10-12, 15-19 are the same as those set forth in the previous Office action mailed on Mar. 16, 2026. For this reason, the present action is properly made final.
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 .
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-12 are rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claims 11 and 12 are ultimately dependent upon independent claim 10. Independent claim 10 recites a “4,6-substituted 2-methoxy phenol”.
Claim 11 recites limitations of the 4,6-substitution, and one of the limitations is “hydrogen”. Hydrogen is not a “substitution” of a position of the phenol recited in base claim 11, and therefore this limitation does not specify a further limitation of the subject matter claimed in base claim 11.
Claim 12 recites the compounds 2-methoxy-4-methylphenol and 2-methoxyphenol. Neither of these compounds has a substitution at the 6-position as is required by the “4,6-substituted” compound recited in base claim 11. Therefore, the two noted compounds do not specify a further limitation of the subject matter claimed in base claim 11.
Claim Rejections – 35 U.S.C. § 102
Claims 10-12, 15, and 17 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US Patent Application Publication No. 2018/0290811 A1 (herein “Withers”).
As to claims 10-12, 15, and 17: Withers described food packaging materials (see the abstract). Withers describes flexible materials such a multi-layer film made by co-extruding polymeric layers (see ¶ [0052]), and Withers describes flexible materials such as a cling film, a wrap, and bags (see ¶ [0053]). The film includes a natural antioxidant additive that is incorporated in and/or on the polymeric material (see ¶ [0054]).
The natural antioxidants may be extracted, isolated, and/or derived from plant material (see ¶ [0007]). Withers describes several natural antioxidants (see ¶ [0019]), including gingerol, capsaicin, capsaicinol, eugenol, and isoeugenol, among others. By way of example, the compound eugenol is 4-allyl-2-methoxyphenol which is according to the recited “4,6-substituted 2-methoxy phenol or derivative thereof” in which the 4-position is substituted by allyl and the 6 position is hydrogen.
Withers does not disclose that these natural antioxidants are sourced from a toasted comestible byproduct.
The recited toasting characteristics refer to the source of the antioxidants rather than any particular structural characteristics of the antioxidants. The recited toasting limitations are thus product-by-process limitations. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production (MPEP 2113). The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process. Because no such criticality of the source of the antioxidant to the structure of the antioxidant has been demonstrated, the claim stands properly anticipated by Withers, notwithstanding any difference in the method by which Withers’ antioxidants are sourced.
Claim Rejections – 35 U.S.C. § 103
Claims 16 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Withers.
The discussion set forth above regarding Withers with respect to base claim 10 is incorporated here by reference.
As to claim 16: As set forth above, Withers describes films according to base claim 1. Withers further discloses that the food packaging material includes a polymeric material selected from PET, PLA, PE, EVOH, PP, PVdC, PS, PVC, PA (see ¶ [0045]).
Withers does not specifically disclose a film comprising one of the aforementioned antioxidants as well as one of PLA or PE.
In light of Withers’ disclosure of suitable types of polymeric materials for the food packaging materials, one of ordinary skill in the art would have been motivated to make any of Withers’ food packaging materials using any of the disclosed polymeric materials, including PLA or PE, based upon the desired properties of the packaging material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made Withers’ films including PLA or PE and including any of the antioxidants gingerol, capsaicin, capsaicinol, eugenol, or isoeugenol.
As to claim 19: As set forth above, Withers describes films according to base claim 1. Withers further discloses that the natural antioxidant additive may be incorporated in and/or on the polymeric material in an amount such that it is able to migrate from the polymeric material onto and/or into the food and thereby inhibit or retard oxidation of the food (see ¶ [0054]). Withers further discloses that the natural antioxidant may be present in the food packaging material in an amount between about 0.00001% and 20% by weight (see ¶ [0055]) or 0.1 ppm and 20,000 ppm (see ¶ [0056]) and narrower ranges therebetween.
The present specification (Spec. p. 9, ¶ [0028]) indicates that amounts of about 600 ppm to about 2000 ppm of antioxidant function to limit the amount of hexanal formation in the manner presently claimed.
Withers does not specifically disclose the presently recited property regarding the amount of hexanal formation from a food source.
Withers’ disclosed range of amounts overlaps the amount that is presently disclosed as functioning to limit the amount of hexanal formation in the manner presently claimed. In light of Withers’ disclosure of suitable amounts of One of ordinary skill in the art would have been motivated to make Withers’ films using amount of antioxidant within the disclosed ranges, including amounts of about 600 ppm to about 2000 ppm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made Withers’ films using about 600 ppm to about 2000 ppm of the aforementioned antioxidants.
Because Withers’ antioxidants include compounds within the scope of the presently recited antioxidants, and because Withers’ amounts of antioxidants overlaps the amount which is presently disclosed to function to limit the amount of hexanal formation in the manner presently claimed, there is a reasonable basis to conclude that the films made with about 600 ppm to about 2000 ppm of the antioxidants would possess the same antioxidant behavior as the present films, including the presently recited property regarding the amount of hexanal formation from a food source.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Withers in view of US Patent No. 5,002,989 (herein “Naumovitz”).
The discussion set forth above regarding Withers with respect to base claims 10 and 17 is incorporated here by reference.
As set forth above, Withers describes films according to base claim 17. Withers further discloses that the food packaging material may include a barrier layer (see ¶ [0050]). Withers does not disclose any specific materials from which the barrier layer is made.
Naumovitz discloses barrier compositions comprising a vinylidene chloride copolymer and high density polyethylene which have a high barrier with respect to oxygen (see col. 2, ll. 39-43). The compositions are useful for making articles (see col. 6, ll. 31 to col. 7, l. 16) such as multi-layer films (see col. 7, l. 2).
In light of Withers’ disclosure of a barrier layer, one of ordinary skill in the art would have been motivated to make Withers’ films using materials that are known in the art to be suitable for making a barrier layer. In light of Naumovitz’s disclosure of barrier compositions for making articles such as films, one of ordinary skill in the art would have been motivated to use Naumovitz’s barrier composition to make the barrier layer of Withers’ films.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made Withers’ films having a barrier layer comprising the discloses barrier of Naumovitz comprising a vinylidene chloride copolymer and high density polyethylene.
Response to Arguments
Applicant’s arguments filed Mar. 16, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejections under 35 U.S.C. § 112(b) have been withdrawn in light of the amendments of the claims.
Regarding the rejection under 35 U.S.C. § 112(d): Applicant argues that the substitutions in claim 11 and the compounds of claim 12 fall within the scope of independent claim 10 because Applicant has “clearly defined” a substituent as including hydrogen. This argument is unpersuasive because Applicant has not pointed to, and the examiner does not find, a clear definition in the application of the term “substituted” that is recited in independent claim 10. MPEP 2111.01(IV)(A), 2173.05(a)(III).
Regarding the rejections over Withers et al.: Applicant argues (p. 8 of Remarks) that the recited starting materials for making the natural antioxidant leads to “an antioxidant composition” with properties that are distinguished over those of two specific phenolic compounds employed in (comparative) Samples L and M.
The examiner understands the Applicant's argument to mean that the recited natural antioxidant requires a composition of multiple compounds rather than a singular compound (such as the singular phenolic compounds employed in comparative Samples L and M), and that Withers does not disclose such a composition of multiple compounds.
This argument is not persuasive because it is not consistent with the broadest reasonable interpretation of the claim and because it is not consistent with the disclosures in the specification and in dependent claim 12.
Independent claim 10 recites an antioxidant that “includes a 4,6-substituted 2-methoxy phenol” (emphasis added). The plain meaning and broadest reasonable interpretation of this phrasing is that it encompasses a (singular) 4,6-substituted 2-methoxy phenol compound, and thus it does not require the composition of compounds that is argued.
Dependent claim 12 recites that the antioxidant “is” selected from certain specific (individual) compounds and combinations thereof. The recitation that the antioxidant "is" a certain compound indicates that the claims encompass the antioxidant being a singular compound. The recitation (in the alternative) of "combinations" at the end of claim 12 and in the corresponding supporting disclosures in the specifications further indicate that the claims encompass a natural antioxidant that is not a combination (or a "composition" as argued) of plural compounds.
The scope of the recited antioxidant that is 'obtained from' and 'derived from' toasting certain materials thus includes the natural antioxidant being a singular compound rather than the argued "composition". Withers’ antioxidants therefore fall within the scope of the recited antioxidants, notwithstanding the lack of a disclosure that they are a composition of antioxidant compounds sourced from a toasted comestible byproduct.
The rejections over Withers et al. that were set forth in the preceding Office action have therefore been repeated above in paragraphs 10-30.
Conclusion
This action is properly final because the claims are rejected on the same grounds as set forth in the previous Office Action mailed on Jan. 5, 2026. Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). See MPEP § 706.07(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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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