DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4 June 2026 has been entered.
Status of the Claims
Claims 1-7, 9-10, 12-14 and 17-30 are pending in the present application.
Election/Restrictions
Claims 9-10, 12-14 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 March 2024.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/859,399, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The ‘399 Application fails to provide adequate support for “the application composition comprises an abradable surface”, the binders of claim 4, the waxes of claim 5, the excipients of claim 6, the concentration ranges of claim 7, the dimensions in claim 23, the forms in claims 24-25, and the weight proportion in claim 29.
Therefore, the effective filing date of claims 1-7 and 21-30 is 16 April 2021.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
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 27-29 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.
Claims 27 and 28 recite the limitation "the second mean particle size" in ln. 1-2. Claim 29 recites the limitation "the second particulate" in ln. 2. There is insufficient antecedent basis for these limitations in the claims. Claims 27 and 28 each depend from claim 25 which depends from claim 1, and Claim 29 depends from claim 24 which depends from claim 1, but claims 1, 24 and 25 do not recite a second particulate or a second mean particle size. The examiner is construing claims 27-29 as each being dependent from claim 26 which claims a second particulate having a second mean particle size that is different from the first mean particle size.
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 1-7 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wolan et al. (US 2019/0330451 A1) in view of Lao et al. (US 2014/0080712 A1).
Regarding claims 1, 4-5, 21-22 and 30, Wolan et al. teach compositions comprising complexes of 1-methylcyclopropene and α-cyclodextrin, and articles (such as labels, sticks, and packaging) that include these complexes for use in delaying the maturation of, e.g., fruits, vegetables, and plants ([0002]; Claim 12). The composition may be provided in the form of a stick for application to a surface (e.g., by spreading manually). To form the stick, the 1-methylcyclopropene/α-cyclodextrin complex is combined with a multicomponent mixture comprising polymers, waxes, paraffin, mono- and polyhydric alcohols, dyes, and/or excipients that are molded into a stick. The stick forms a soft substance in the shape of a rod that, in turn, is embedded in a case that allows pulling out, for self-application outside or inside packages for storing fruit, vegetables or flowers ([0009], [0017]; Fig. 34). Wolan et al. teach that the stick form may include a binder, such as polyvinylpyrrolidone, and waxes, such as candelilla wax and beeswax ([0018]-[0027]). Wolan et al. teach examples of compositions comprising a homogeneous mixture of 1-MCP/α-cyclodextrin complex, PVP, candelilla wax and beeswax ([0121]-[0141]).
Wolan et al. do not explicitly disclose the 1-MCP/α-cyclodextrin complex having a mean particle size between 1 µm and 20 µm, as instantly claimed.
Lao et al. teach that 1-MCP is usually stabilized into clathrate such as α-cyclodextrin (α-CD) to ease handling during storage and transportation. The active ingredient 1-MCP is caged in α-CD and the resulting crystalline complex, called High Active Ingredient Product (HAIP). HAIP is typically composed of 100-150 μm needle like crystals but can be air-milled to a 3-5 μm fine powder if needed. HAIP product can be stored for up to 2 years without loss of 1-MCP at ambient temperature inside a sealed container lined with a moisture barrier ([0033], [0076], [0145]). Lao et al. further teach that the powder is difficult to handle in the field or in an enclosed space, and it is water-sensitive and releases 1-MCP gas quickly ([0033]). Lao et al. teach blending HAIP powder with core materials for example a melted wax and grinding the solid mixture into a powder ([0034]). Lao et al. also teach complex powders may have a median particle diameter of 100 micrometers or less; 75 micrometers or less; 50 micrometers or less; or 25 micrometers or less. In another embodiment, complex powders may have median particle diameter of 10 micrometers or less; 7 micrometers or less; or 5 micrometers or less. In another embodiment, complex powders may have median particle diameter of 0.1 micrometer or more; or 0.3 micrometer or more ([0076]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art to prepare the compositions according to Wolan et al. wherein the 1-MCP/α-cyclodextrin complex is milled to a fine powder with a median particle diameter of 0.1 to 100 µm, as reasonably taught by Lao et al. Such would have been obvious because Lao et al. teach that HAIP is typically composed of 100-150 μm needle like crystals but can be air-milled to a 3-5 μm fine powder if needed.
Regarding claims 2-3 and 7, Wolan et al. teach that the stick includes a molded mass containing 5-50 wt.% 1-MCP/α-cyclodextrin complex, 2-45 wt.% polymer binder, and a casing in which the column is embedded. The mass may further include polymers, waxes, paraffin, mono- and polyhydric alcohols, dyes, and auxiliary components. Specific examples include coconut oil, SE-PF emulsifier, beeswax, stearic acid, candelilla wax, glycerol, and isopropyl alcohol. Specific examples include coconut oil ([0017]-[0018], [0020], [0124]).
Regarding claim 6, Wolan et al. teach compositions comprising stearic acid ([0018], [0020], [0124])
Regarding claims 23-25, Wolan et al. teach the stick forms a soft substance in the shape of a rod that, in turn, is embedded in a case that allows pulling out, for self-application outside or inside packages for storing fruit, vegetables or flowers ([0009], [0017]; Fig. 34). The shape depicted in Fig. 34 appears similar to a lipstick form, wherein the 1-MCP/α-cyclodextrin composition mass is in the form of a cylinder or rod with a first dimension that exceeds the lengths in the two dimensions orthogonal to the first dimension.
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare compositions according to Wolan et al. comprising the 1-MCP/α-cyclodextrin complex, a binder, a wax, and an oil and/or excipient, wherein the mass is in the form of a stick that resembles a lipstick, or any other suitable stick form that allows the composition to be manually applied/spread on a surface.
Regarding claims 26-29, Lao et al. teach that HAIP is typically composed of 100-150 μm needle like crystals but can be air-milled to a 3-5 μm fine powder if needed ([0033]). In one embodiment, complex powders may have median particle diameter of 100 micrometers or less; 75 micrometers or less; 50 micrometers or less; or 25 micrometers or less. In another embodiment, complex powders may have median particle diameter of 10 micrometers or less; 7 micrometers or less; or 5 micrometers or less. In another embodiment, complex powders may have median particle diameter of 0.1 micrometer or more; or 0.3 micrometer or more ([0076]).
Lao et al. do not explicitly teach selecting a modified particulate comprising a first particulate having a first mean particle size between 1 µm and 20 µm, and a second particulate having a second mean particle size between 30 µm and 100 µm, as instantly claimed.
However, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare a composition according to Wolan et al. comprising a 1-MCP/α-cyclodextrin complex having a combination of mean particle sizes within the range of 1 µm to 100 µm. Such would have been obvious because Lao et al. teach that 1-MCP/α-cyclodextrin complex is typically composed of 100-150 µm needle like crystals, but can be milled to have a median particle diameter of 100 µm or less and 0.1 µm or more.
Such would have been obvious in the absence of evidence to the contrary because it is generally prima facie obvious to use in combination two or more ingredients that have previously been used separately for the same purpose to form a third composition useful for that same purpose. The idea of combining them flows logically from their having been taught individually in the prior art. In re Kerkhoven 626 F.2d 646, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 1-7 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wolan et al. (US 2019/0330451 A1) in view of Wood et al. (US 11,591,415).
The teachings of Wolan et al. are discussed above.
Regarding the mean particle size, and the composition comprising a first particulate and a second particulate having different mean sizes, Wood et al. teach a particulate composition consisting essentially of a mixture of a first particulate portion and a second particulate portion, wherein i) the first particulate portion is a modified portion of a source particulate and has a mean particle size between 1 μm and 10 μm, or between 10 μm and 20 μm as determined by a volume-based method, and the second particulate portion is an unmodified portion of the source particulate and has a mean particle size between 30 μm and 100 μm, as determined by a volume-based method, wherein the source particulate consists essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin (Claims 1-13). Wood et al. teach that the weight ratio of the two or more modified particulates, or of the one or more modified particulates with a particulate product present in the combined modified particulate is not limited, and is selected by an operator to achieve a targeted rate of 1-MCP disgorgement when the combined modified particulate is subjected to disgorgement conditions. In some fourth embodiments, by way of example, about 1 to 1000 parts by weight of a first modified particulate is admixed with about 1 to 1000 parts by weight of a second modified particulate to form a combined modified particulate; in another example, about 1 to 1000 parts by weight of a modified particulate is admixed with 1 to 1000 parts by weight of an unmodified particulate to form a combined modified particulate (col. 4, ln. 36-58).
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare a composition according to Wolan et al. comprising a particulate composition consisting essentially of a mixture of a first particulate portion and a second particulate portion, wherein i) the first particulate portion is a modified portion of a source particulate and has a mean particle size between 1 μm and 10 μm, or between 10 μm and 20 μm as determined by a volume-based method, and the second particulate portion is an unmodified portion of the source particulate and has a mean particle size between 30 μm and 100 μm, as determined by a volume-based method, wherein the source particulate consists essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin, as reasonably suggested by Wood et al. A person of ordinary skill in the art would have been motivated to select a mixture of a first particulate and a second particulate having different sizes in order to control the rate of 1-MCP disgorgement.
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 1-7 and 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,591,415 in view of Wolan et al. (US 2019/0330451 A1). US ‘415 claims a particulate composition consisting essentially of a mixture of a first particulate portion and a second particulate portion, wherein i) the first particulate portion is a modified portion of a source particulate and has a mean particle size between 1 μm and 10 μm, or between 10 μm and 20 μm as determined by a volume-based method, and the second particulate portion is an unmodified portion of the source particulate and has a mean particle size between 30 μm and 100 μm, as determined by a volume-based method, wherein the source particulate consists essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin; ii) the first particulate portion and the second particulate portion have a first rate of 1-methylcyclopropene release and a second rate of 1-methylcyclopropene release, respectively, when subjected to a set of disgorgement conditions; and iii) the particulate composition has a rate of 1-methylcyclopropene release that is intermediate between said first rate of 1-methylcyclopropene release and said second rate of 1-methylcyclopropene release when subjected to said set of disgorgement conditions.
US ‘415 does not explicitly claim an application composition comprising the first and second particulates of 1-MCP clathrate of α-cyclodextrin, and a binder, wax or combinations thereof in the form of a marking instrument.
Wolan et al. teach compositions comprising complexes of 1-methylcyclopropene and α-cyclodextrin, and articles (such as labels, sticks, and packaging) that include these complexes for use in delaying the maturation of, e.g., fruits, vegetables, and plants ([0002]; Claim 12). The composition may be provided in the form of a stick for application to a surface (e.g., by spreading manually). To form the stick, the 1-methylcyclopropene/α-cyclodextrin complex is combined with a multicomponent mixture comprising polymers, waxes, paraffin, mono- and polyhydric alcohols, dyes, and/or excipients that are molded into a stick. The stick forms a soft substance in the shape of a rod that, in turn, is embedded in a case that allows pulling out, for self-application outside or inside packages for storing fruit, vegetables or flowers ([0009], [0017]; Fig. 34). Wolan et al. teach that the stick form may include a binder, such as polyvinylpyrrolidone, and waxes, such as candelilla wax and beeswax ([0018]-[0027]). Wolan et al. teach examples of compositions comprising a homogeneous mixture of 1-MCP/α-cyclodextrin complex, PVP, candelilla wax and beeswax ([0121]-[0141]).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date to prepare a marking instrument according to Wolan et al. comprising the particulate composition consisting essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin according to US ‘415.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/MONICA A SHIN/Primary Examiner, Art Unit 1616
