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 .
Claim Objections
Claims 4-6 are objected to because of the following informalities:
Regarding claims 4-6, for uniformity, the term “1-mcp” should be changed to “1-MCP” .
Regarding claims 4-6, the term “1-MCP” should be first defined in claims 1 and 3 after the recitation of 1-methylcyclopropene. For example, 1-methylcyclopropene (1-MCP).
Regarding claims 4-6, the term “milligrams” should be used consistently throughout the claim set. The term should be recited as “milligrams” or “mg”.
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 6-12 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 claim 6, the recitation “wherein the potatoes are allowed to be in an environment with 0.01 milligrams of 1-mcp gas/L of gas” renders the claim indefinite. It is not clear what the makeup of the “gas” is. Is the gas total volume of the surrounding air or gas within the surrounding environment?
In addition, it is not clear what is meant when the potatoes “are allowed to be in an environment with 0.01 milligrams of 1-mcp gas/L of gas.” Is this amount of 1-MCP the potatoes are treated with? Is it a requirement that the potatoes be put into an environment with the 0.01 milligrams of 1-mcp gas/L of gas or they are just allowed to be in the environment?
Regarding claim 8, the recitation “wherein the temperature is 25°C” renders the claim indefinite. It is not clear what the temperature is associated with. Is the environment within the controlled atmosphere storage box have a temperature of 25°C? With respect to the prior art, the temperature will be considered the temperature within the controlled atmosphere storage box.
Regarding claim 9, the recitation “wherein the potatoes sprout first but are not greened or greened slowly” renders the claim indefinite. First, it is not clear what the term “first” is relative too. Are the potatoes that are treated with a reagent containing 1-methylcyclopropene sprouted? Second, it is not clear how the potatoes could be greened slowly if the treatment of claim 1 inhibits the process of potato greening.
Claims 7 and 10-12 are rejected because they are dependent from a rejected base claim.
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 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chope et al. (WO 2020/099029 A1).
Regarding claims 1 and 2, Chope et al. disclose a method for storing potatoes comprising treating potatoes with 1-methylcyclopropene (1-MCP- a reagent containing 1-methylcyclopropene) (Abstract, [021], [081]-[083]/Example 1). Chope et al. disclose the application of 1-MCP to the storage atmosphere can unexpectedly achieve lower concentrations or reducing sugars, while achieving effective sprout suppression ([08], [039]).
Given Chope et al. teach a method wherein potatoes are treated with 1-MCP, inherently the treatment would inhibit the process of potato greening and the production of solanine in the potatoes.
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.
Claims 3-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chope et al. (WO 2020/099029 A1) in view of Stowe et al. (“Reproducible Method for 1-methylcyclopropene (1-MCP) Application and Quantitation for Post-harvest Research”, Preprints.org, posted October 12, 2023, https://www.preprints.org/manuscript/202310.0772, downloaded June 23, 2026).
Regarding claim 3, Chope et al. disclose all of the claim limitations as set forth above. While Chope et al. disclose storing potatoes in a large storage facility wherein the potatoes are treated with 1-MCP by the addition of 1-MCP to the storage atmosphere (i.e., fumigation), the reference is silent with the addition of NaOH to the 1-MCP.
Stowe et al. teach an effective and reproducible method application of 1-MCP to post-harvest food (Abstract). Stowe et al. teach the use of non-reactive acrylic chambers are very effective at maintaining constant headspace concentrations (p. 2/1. Introduction). Stowe et al. teach treating potatoes with 1-MCP by: (a) placing 1-MCP powder into glass dishes into the acrylic chamber; and (b) adding a 7.5% (w/v) (i.e., about 1.8M NaOH wherein 1M= 4% (w/v)) sodium hydroxide (NaOH) solution to the 1-MCP to saturate the 1-MCP powder and liberate the active 1-MCP into the atmosphere of the chamber (p. 2/2. Materials and Methods/1-MCP application and sampling). Stowe et al. teach the method provides accurate 1-MCP application (p. 5/4. Conclusions).
Chope et al. and Stowe et al. are combinable because they are concerned with the same field of endeavor, treating post-harvest food with 1-MCP in a storage atmosphere. It would have been obvious to one of ordinary skill in the art to have treated the potatoes of Chope et al. with 1-MCP using the application method of Stowe et al. to assure accurate dosing.
Regarding claims 4-5, modified Chope et al. disclose all of the claim limitations as set forth above. Chope et al. disclose the 1-methylcyclopropene is applied at a concentration of from 0,5 to 5 pL/L wherein the concentration in pL/L is the ratio of the volume of the 1-methycyclopropene to the storage container volume ([064]).
Chope et al. is silent with respect to how much 1-MCP powder and NaOH are combined to liberated 1-MCP gas. However, skilled artisan would have been motivated to adjust, in routine processing, the amount of 1-MCP powder added to a particular amount of NaOH to obtain the desired applied concentration while taking into consideration the size of the storage container.
Regarding claim 7, modified Chope et al. disclose all of the claim limitations as set forth above. Stowe et al. teach the use of non-reactive acrylic chambers are very effective at maintaining constant headspace concentrations (i.e., controlled atmosphere storage box-p. 2/1. Introduction).
Regarding claim 8, modified Chope et al. disclose all of the claim limitations as set forth above. Chope et al. teach treating potatoes with 1-MCP at a temperature of between 10° to 30°C ([021]).
Regarding claim 9, modified Chope et al. disclose all of the claim limitations as set forth above. While Chope et al. teach suppressing sprout growth to obtain reduced sprout growth ([033]), the reference does not disclose that all sprouting is eliminated. For example, see Figure 9 of Chope et al. which shows a number of potatoes, treated with 1-MCP and late ethylene, having sprouts < 5 mm(Figure 9).
Regarding claims 10-12, modified Chope et al. disclose all of the claim limitations as set forth above. Given Chope et al. teach a method of treating potatoes with 1-MCP, inherently the 1-MCP would (a) inhibit the generation of chlorophyll by inhibiting the expression of chlorophyll synthesis-related genes in the potatoes; (b) reduce chlorophyll by promoting the expression of chlorophyll degradation-related genes in the potatoes; and (c) inhibit the expression of solanine synthesis-related genes in the potatoes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
-Prange et al. (“Effects of Ethylene and 1-Methylcyclopropene on Potato Tuber Sprout Control and Fry Color”, Amer. J. Of Potato Res., 82, (2005), pp. 123-128) teaches the efficacy of 1- methylcyclopropene on as a preventative treatment of ethylene-induced fry color darkening in potato tubers without reducing the effectiveness of ethylene as a tuber sprouting control agent. This reference is repetitive of the applied art, Chope et al.
-Paul et al. (“1-Methylcyclopropene (1-MCP) Treatments-Chapter 7”, in Novel Postharvest Treatment of Fresh Produce, Ed. Sunil Pareek, CRC Press, 1st Edition, (2017), pp. 150-193) teaches the use of 1-Methylcyclopropene as an effective inhibitor of ethylene action in plants and plant produce (Abstract).
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/ Primary Examiner, Art Unit 1759
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