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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-19) in the reply filed on 06/30/2026 is acknowledged. The traversal is on the ground(s) that “searching all claims would not constitute an undue search burden.” Remarks (06/30/2026) at 10:10-11. This is not found persuasive because, in the instant case, examining all of the pending claims represents a not only a serious search burden but also a serious examination burden on the Primary Examiner.
“To demonstrate serious examination burden separate from a serious search burden, the examiner must show by appropriate explanation that the inventions are likely to raise serious examination issues . . . . In this situation, a serious examination burden may exist where issues relevant to one invention are not relevant to the other invention.” MPEP § 808.02.
Here, claim 20 (Group II) is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Method claim 1 requires steps of diluting the concentrated solution, spraying the solution on the plant, and evaporating some of the solvent. Claim 20, being a product-by-process claim, can include — but does not require — any of these method steps. In fact, claim 20 is broader in that it encompasses any and all possible methods of applying the composition to the plant. For example, one could dip the plant or part thereof to be coated in the solution, and still arrive at a product reading on that recited in claim 20.
Not only would examination of both Groups I and II require a different field of search (e.g., different search queries covering plants coated by all possible methods), see id., but would also require consideration of issues relevant not only to the coating method of claim 1, but to all other possible coating methods as well. Consequently examination of all pending claims represents a serious search and examination burden on the Primary Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) Status
Claims 1-20 are pending as filed 06/12/2025.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/30/2026.
Information Disclosure Statement
Although Applicant is not required to file one, the Primary Examiner notes that no IDS has been filed to date in this application.
Drawings
The drawings filed 06/12/2025 are acceptable. See MPEP § 608.02(b)(I).
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The Primary Examiner having noted certain particular deficiencies, the disclosure is objected to because of the following informalities:
The CROSS-REFERENCE TO RELATED APPLICATIONS should be updated to reflect that applications 18/352,500 and 16/197,721 have issued as patents US 12,349,674 B2 and US 11,737,454 B2, respectively.
At 5:1 of the instant spec., “acuticular layer 8” should read - - a_cuticular layer 8 - -.
The use of the term “proxel” (e.g., “proxel-type BIT biocides” at 10:19 and 41:15) which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: “to form a sprayed solution” should read - - to form a spray[[ed]]able solution - -. The past-tense “sprayed” indicates that the solution has already been sprayed, whereas in claim 1, the solution is being diluted prior to spraying it in order that it be able to be sprayed. Appropriate correction is required.
Moreover, claim 1 is objected to because of the following informalities: “prior fruit set” in the penultimate line of the claim should read - - prior to fruit set - -. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “CO2” should read - - CO2 - -. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “and glycerin,” in the third-to-last line of the claim, should read - - [[and]] glycerin - -. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “coc oleic DEA,” in the sixth line of the claim, should read - - cocoleic DEA - -. 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.
Claim 14 is 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.
Claim 14 recites “increasing the fruit quality of the fruit.” This phrase is indefinite as it is unclear what quality of the fruit is being increased. Is it color, size, taste, or something else? Moreover, how and by whom is the quality evaluated? Is it comparison to an objective standard, or merely the preferences of a vendor or consumer? Consequently, the metes and bounds of the claim are impossible to determine.
Claim Interpretation
The claims refer to a “concentrated solution.” To the extent that “concentrated” can be considered a relative term or a term of degree, the term is definite as it is used in the context of the claims because independent claim 1 recites specific wt.-% concentrations of components and later recites “diluting the concentrates solution with additional solvent.” Consequently, the “concentrated solution” is that defined by the components (i)-(v) before application of additional solvent. See MPEP § 2173.02.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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.
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(s) 1-19 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaiser et al. US 2012/0042420 A1.
Claim 1
Kaiser teaches a method for forming an exogenous [0005 et seq.] flexible [0109] films on a plant [0005 et seq.], comprising:
providing a concentrated solution that includes:
(i) water, a specifically disclosed amount being 66.6 wt.-% [Table 12];
(ii) 0.1-30 wt.-% of a film-forming matrix [Table 8], a specifically disclosed amount being 1 wt.-% carboxymethylcellulose [Table 12], but other examples include cellulose acetate, cellulose acetate-succinate, cellulose acetate phthalate, hydroxyethylcellulose, hydroxypropylcellulose, carboxymethylcellulose, carboxyethylcellulose, chitosan, methylcellulose, ethyl cellulose, propylcellulose, butylcellulose, alkylcelluloses, phthalate and acetate esters of cellulose, hypromellose, hypromellose acetate succinate, hypromellose phthalate, xanthan gum, guar gum, gellan gum, gum arabic, carageenan, alginic acid (and its salts), acacia, tragacanth, polyvinyl acetate, polyvinyl alcohol, polyvinylpyrolidone, polyvinylacetate phthalate, methacrylic-acrylic acid copolymer and its alkyl esters or ethers and combinations of two or more thereof [0025];
(iii) 1-90 wt.-% of a hydrophobic barrier component, with exemplary narrower ranges of 7.5-40 wt.-%, 5-50 wt.-%, and 2.5-80 wt.-% [Table 8];
(iv) 0.1-30 wt.-% of a plasticizer component, with exemplary narrower ranges of 1-5 wt.-%, 1-10 wt.-%, 0.5-20 wt.-% [Table 8];
(v) 0.1-10 wt.-% of a filming agent (film enhancing component) [Table 8], a specifically disclosed amount being 13 wt.-% isopropyl myristate [Table 12], but other examples include potassium silicate, calcium silicate, aluminum magnesium silicate, aluminum calcium silicate, magnesium silicate, aluminum sodium silicate, aluminum potassium silicate, aluminum sodium potassium silicate, magnesium trisilicate, silica, silicic acid and it salts, siloxanes, dimethicone copolyol, dimethicone copolyol fatty acid esters or ethers, silicone glycol copolymer, other water soluble silicates, isopropyl myristate, isopropyl palmitate, butyl stearate, diisopropyladipate, diacetyl adipate, dibutyl adipate, dioctyl adipate, glyceryl adipate, myristylmyristate, oleic acid, soybean oil, vegetable oil, ethyl oleate and combinations of two or more [0043];
diluting the concentrated solution with additional solvent prior to application [0065] (since the composition is eventually sprayed, this dilution is sufficient to form a sprayable composition);
application by spraying on the plant [0078];
drying by loss of water (i.e., evaporation) to form the film [0087].
Kaiser does not explicitly state that the composition is applied prior to fruit set of the plant, but does teach that “the composition can be applied at any time in the growth cycle” [0079]. It is the Primary Examiner’s position that “any time” is inclusive of prior to fruit set specifically. In the alternative, one of ordinary skill in the art would have interpreted this teaching a clear suggestion to apply the composition at any desired time during the growth cycle. Consequently, it would have been equally obvious to one of ordinary skill in the art to apply the composition either before, at, and/or after fruit set because there are only three possible points in the growth cycle to apply the composition.
While Kaiser teaches that the composition is effective to form a stronger cuticle, Kaiser does not explicitly teach that the composition is effective to form a thicker cuticle. It is the Primary Examiner’s position that this is a physical property of the film and, since Kaiser teaches the same composition as claimed, having the same components, applied in the same manner, one of ordinary skill in the art would have expected them to have the same properties, including being effective to form a thicker cuticle. See MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”).
Claims 2-8
As noted above, Kaiser teaches “the composition can be applied at any time in the growth cycle,” which is inclusive of or renders obvious application at within 30, 20, 10, or 5 days of fruit set, after bud break, after full bloom, and at least 45 days prior to harvest. Moreover, Kaiser teaches that “the compositions can be applied up to about 1, 5, 10, 15, 20, 25, 30, 35 or 40 days before harvest” [0079]. Nevertheless, 40 days prior to harvest is close enough to render the claimed 45 days obvious, absent a showing of distinguishing data for 45 days vs. 40 days. See MPEP § 2144.05(I) (a prima facie case of obviousness exists where ranges are “merely close” when one of ordinary skill in the art would have “expected them to have the same properties”).
Claims 9-15
Kaiser teaches applying the composition “to plants and plant parts” [0089]. It is the Primary Examiner’s position that this either encompasses application to any of the plant parts recited in these claims or, in the alternative, would have suggested doing so to one of ordinary skill in the art because of the non-limiting nature of the teaching. Moreover, as noted above, one of ordinary skill in the art would have expected the composition to have the claimed physical effects. See MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”).
Claim 16
Kaiser teaches “[t]he ‘film forming matrices component’ is any molecule that can be used to allow the film to form a matrix structure. Exemplary ingredients that can be used as film forming matrices include cellulose acetate, cellulose acetate-succinate, cellulose acetate phthalate, hydroxyethylcellulose, hydroxypropylcellulose, carboxymethylcellulose, carboxyethylcellulose, chitosan, methylcellulose, ethyl cellulose, propylcellulose, butylcellulose, alkylcelluloses, phthalate and acetate esters of cellulose, hypromellose, hypromellose acetate succinate, hypromellose phthalate, xanthan gum, guar gum, gellan gum, gum arabic, carageenan, alginic acid (and its salts), acacia, tragacanth, polyvinyl acetate, polyvinyl alcohol, polyvinylpyrolidone, polyvinylacetate phthalate, methacrylic-acrylic acid copolymer and its alkyl esters or ethers and combinations of two or more thereof” [0052].
Moreover, “[t]he film forming matrices component can be used at any concentration that allows the composition to form a film. One of ordinary skill in the art will be able to determine the concentration of the film forming matrices component needed for a particular application. Exemplary concentrations of film forming matrices components that can be used in the compositions include from about 0.05% to about 10%, from about 0.10% to about 8%, from about 0.30% to about 5%, and from about 0.50% to about 3%” [0053].
Claim 17
Kaiser teaches “[t]he "hydrophobic barrier component" is any molecule that can be used to inhibit moisture from crossing the film. Exemplary ingredients that can be used as hydrophobic barrier components include stearic acid, carnauba wax, glyceryl monostearate, monostearin, diglyceryl stearate, stearin, tristearin, mono, di- and triglycerides, butyl stearate, stearyl alcohol, cetyl alcohol, cetostearyl alcohol, palmitic acid, oleic acid, lecithin, metal salts of fatty acids, polysorbates, sorbitan-fatty acid esters, alkylethoxylates, alkylphenoxyethoxylates, dioctyl sodium sulfosuccinate, alkyl sulfates, alkyl sulfonates, alpha and beta-pinene and pinene homopolymer, polyglyceryl mono, di- and tri-fatty acid esters and ethers, lignin, lignosulfonic acid and it metal salts, beeswax, candelilla wax, ozokerite wax, Shea butter, hard butter, palm oil, palm kernel oil, avocado oil, tallow, lard, coconut oil, hydrogenated vegetable oil, octyl dodecanol, oleyl alcohol, algae oil, hemp oil, poppy seed oil, and combinations of two or more thereof” [0050].
Moreover, “[t]he hydrophobic barrier component can be used at any concentration that allows the composition to form a film that is resistant to moisture transfer. One of ordinary skill in the art will be able to determine the concentration of the hydrophobic barrier component needed for a particular application. Exemplary concentrations of hydrophobic barrier components that can be used in the compositions include from about 1% to about 25%, from about 2% to about 20%, from about 3% to about 15%, and from about 4% to about 15% [0051].
Claim 18
Kaiser teaches “[t]he ‘plasticizing component’ is any molecule (or mixture of molecules) that can be used to allow the film to form a firm phase but allows flexibility to the film formed to expand as fruit grows. Exemplary ingredients that can be used as plasticizing components include glycerin, propylene glycol, sorbitol solutions, sorbitan monostearate, sorbitan monooleate, lactamide, acetamide DEA, lactic acid, polysorbate 20, 60 and 80, polyoxyethylene-fatty esters and ethers, sorbitan-fatty acid esters, polyglyceryl-fatty acid esters, triacetin, dibutyl sebacate and combinations of two or more [0045].
Moreover, “[t]he plasticizing component can be used at any concentration that allows the composition to form a firm phase. A Brookfield viscometer can be used to test the viscosity of the biofilm and exemplary ranges of viscosity include from about 10,000 to about 35,000 centipoise, or from about 5,000 to about 40,000 centipoise on initial formulation and from about 6,000 to about 25,000, or from about 7,000 to about 30,000 after standing. In some examples, formulations that form emulsions display a particle size distribution of the micelles ranging from about 300.0 nanometers to about 350.0 microns. One of ordinary skill in the art will be able to determine the concentration of the plasticizing component needed for a particular application. Exemplary concentrations of plasticizing agents that can be used in the compositions include from about 0.5% to about 40%, from about 8% to about 35%, from about 10% to about 30%, and from about 15% to about 25%” [0046].
Claim 19
Kaiser teaches “[t]he ‘film enhancing component’ is any molecule (or mixture of molecules) that can be used to enhance film spreading. Exemplary ingredients that can be used as film enhancing components include potassium silicate, calcium silicate, aluminum magnesium silicate, aluminum calcium silicate, magnesium silicate, aluminum sodium silicate, aluminum potassium silicate, aluminum sodium potassium silicate, magnesium trisilicate, silica, silicic acid and it salts, siloxanes, dimethicone copolyol, dimethicone copolyol fatty acid esters or ethers, silicone glycol copolymer, other water soluble silicates, isopropyl myristate, isopropyl palmitate, butyl stearate, diisopropyladipate, diacetyl adipate, dibutyl adipate, dioctyl adipate, glyceryl adipate, myristylmyristate, oleic acid, soybean oil, vegetable oil, ethyl oleate and combinations of two or more” [0043].
Moreover, “[t]he film enhancing component can be used at any concentration that allows the composition to spread and form a film. One of ordinary skill in the art will be able to determine the appropriate concentration of film enhancing component needed for a specific purpose. Exemplary concentrations of film enhancing components that can be used in the compositions include from about 0.01% to about 15%, from about 0.02% to about 9%, from about 0.05% to about 8%, from about 0.07% to about 7%, from about 0.10% to about 6%, and from about 0.15% to about 5%” [0044].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-8 of U.S. Patent No. 11,737,454 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the instant claims. See MPEP § 804(II)(B). As noted above, the method of the patented claims necessarily result in the physical effect of increasing a cuticle thickness. See MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”).
Claims 1 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-12 of U.S. Patent No. 12,349,674 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the instant claims. See MPEP § 804(II)(B). As noted above, the method of the patented claims necessarily result in the physical effect of increasing a cuticle thickness. See MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3,410,678 A; US 5,908,708 A; US 7,222,455 B2; and US 2021/0360917 A1 are all representative of the prior art. US 455 in particular teaches applying a coating to prevent cuticle cracking, stem browning, and water loss in cherries.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
2 September 2026
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