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 .
Status of the Claims
Claims 1-20 are pending in the present application.
Election/Restrictions
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 March 2024.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lao et al. (US 2014/0080712 A1).
Regarding instant claim 1, Lao et al. disclose SEM images of HAIP (1-methylcyclopropene/alpha-cyclodextrin complex) air milled product and HAIP-carnauba wax blended particles (after grinding and sieving through 100 mesh). Typically, the HAIP has 3-5 μm particle size, but some aggregates of larger particles can be observed. The blend of HAIP and carnauba wax can be reduced in size by hand or by using a grinder thanks to the brittle nature of the wax. However, their particle size mainly remains constant between 100 and 200 mesh (75-150 μm). The inner structure of the blended particles is similar with that of the HAIP, indicating HAIP particles have been uniformly embedded in the wax matrix ([0145]).
Regarding the composition comprising an abradable surface, Lao et al. disclose that the HAIP-carnauba wax blended particles can be reduced in size by hand or by using a grinder thanks to the brittle nature of the wax. Therefore, the surface of the composition would also necessarily be abradable.
Regarding instant claim 2, carnauba wax comprises free fatty acids, alcohols and long-chain esters.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘521 (US 2015/0375521 A1) in view of Holcroft et al. (US 2011/0293801 A1).
Regarding instant claim 1, Wood ‘521 teach cyclodextrin or cyclodextrin inclusion complexes provided as a printable composition in place of the toner compositions typically employed in electrostatic printing. In particular, a polymer grafted cyclodextrin or a polymer grafted cyclodextrin inclusion complex is suitably formed into particles having a particle size of 5 µm to 16 µm and the particles are useful as printable compositions. Particles of this size are formed by milling, such as jet milling as described above, or by other conventional techniques known to those of skill. In other embodiments, cyclodextrin or a cyclodextrin inclusion complex is melt blended or solution blended with a polymer capable of electrostatic printing, and the blend is formed into particles having a particle size of 5 µm to 16 µm and the particles are useful as printable compositions. In still other embodiments, cyclodextrin or a cyclodextrin inclusion complex is blended with one or more radiation polymerizable monomers and the blend is irradiated to polymerize and crosslink the monomers. Then the polymer is broken up and milled to form particles having a particle size of 5 µm to 16 µm using conventional methods ([0042]; Claims 6 and 17).
Wood ‘521 teach water sensitive cyclodextrin complexes include complexes wherein the included compound is released from the α-cyclodextrin torus by the action of water. One highly water sensitive cyclodextrin complex is 1-methylcyclopropene/c/α-CD (1-MCP/c/α-CD), where it is well documented that water in both liquid and vapor form displaces—thereby ejecting 1-MCP from the complex. Since the use of water as a trigger for ejection of compounds is useful in many applications where a cyclodextrin complex is employed, it is desirable in such applications to maintain the cyclodextrin complex in a dry state until it is disposed at the targeted site where ejection is desired ([0069]).
Wood ‘521 also teach that the printable compositions further include a wax or a polymer in place of the polymer(s) employed in a conventional toner composition; in other embodiments, the printable compositions include a wax or a polymer in addition to the polymer(s) employed in a conventional toner composition ([0037], [0045]).
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 1-MCP/c/α-CD having a particle size of 5 µm to 16 µm and combining with a wax or polymer, as reasonably suggested by Wood ‘521.
Regarding the application composition having an abradable surface, Wood ‘521 teach wax and low melt polymers combined with the cyclodextrin complex ([0061], [0064]). Wood ‘521 teach that in other embodiments, the roller is not heated at all, but rather is simply a physical pressure point that serves to press the printed composition against the printed substrate to affix the printed composition thereto. For example, where the printable substrate includes cyclodextrin or a cyclodextrin complex in a particle including a wax, the rollers are not heated or are heated to a temperature of about 100° C or less, such as 60° C to 90°C. In other embodiments, the printable substrate includes a low-melting polymer, and the “fusing is accomplished by softening the surface of the printed substrate while pushing the printed composition into the substrate surface. For example, a low-density polyethylene coated paper is suitably employed in some such embodiments, wherein the temperature of the fusing rollers is selected to soften the polyethylene, allowing the printed composition to become embedded therein due to pressure applied by the rollers ([0078]).
Thus, Wood ‘521 teach waxes and polymers that are softened and adhered by pressure to a substrate, but they do not explicitly state that the composition is an abradable substrate.
Holcroft et al. teach a method a method of treating plant parts comprising forming a coating on the surface of said plant parts by applying a layer of a coating composition to said surface of said plant parts, wherein said coating composition comprises (a) one or more wax, and (b) one or more cyclopropene compound ([0004]-[0006]; Claims 1-9). The composition of the present invention preferably includes at least one molecular encapsulating agent. More preferably, at least one molecular encapsulating agent encapsulates one or more cyclopropene compound or a portion of one or more cyclopropene compound, wherein the molecular encapsulating agents include cyclodextrin ([0036]-[0040], [0051]). Holcroft et al. teach compositions that are capable of being spread with an applicator but are mechanically stable when they are not under the mechanical stress of the application process ([0008]-[0009], [0043]).
Thus, Holcroft et al. teach an alternative method for application of 1-MCP to control ripening of plants. Holcroft et al. teach that wax formulations comprising the encapsulated 1-MCP is effectively spread with an applicator in order to apply the composition to the target surface.
It would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date to apply the compositions according to Wood ‘521 comprising 1-MCP/c/α-CD having a particle size of 5 µm to 16 µm and a wax or polymer to a surface by spreading the composition by mechanical pressure (i.e., an abradable surface). Such would have been obvious because Holcroft et al. teach that wax and semi-solid compositions comprising cyclodextrin encapsulated 1-MCP are effectively spread by mechanical pressure to a desired surface, wherein the 1-MCP is effective for controlling ripening of a plant.
Regarding instant claim 2, Wood ‘521 teach that the printable compositions include a colorant ([0008], [0011], [0032], etc.).
Regarding instant claim 3, Wood ‘521 teach that flow agents include stearic acid ([0063]).
Regarding instant claim 4, Wood ‘521 teach that polymers useful to form the core particulate include polyvinylpyrrolidone ([0053]). Also, suitable low melting polymers include polyols such as polyethylene glycol ([0061]).
Regarding instant claim 5, Wood ‘521 teach that suitable waxes include beeswax and candelilla wax ([0061]).
Regarding instant claim 6, Wood ‘521 teach that flow agents include fumed silica, silicon dioxide or titanium oxide derivatives, zinc stearate, aluminum oxide, etc. ([0063]).
Regarding instant claim 7, Wood ‘521 teach that in some embodiments, about 0.0001 wt % to 30 wt % cyclodextrin moieties (inclusion compounds and grafted polymers aside) are incorporated in the printable compositions ([0046]); and the one or more polymers are generally present in the printable compositions in an amount of from about 50 wt % to 99.999 wt % of the printable composition ([0056]).
Response to Arguments
Applicant's arguments filed 20 November 2025 have been fully considered but they are not persuasive. Applicant argues that Wood ‘521 is directed to electrostatically printable particulates and electrostatic printing thereof onto substrates, while Holcroft is directed to semisolid or liquid-containing compositions for spreading onto a plant or plant part. Combining Wood ‘521 with Holcroft would change the principle of operation of Wood ‘521 and defeat the purpose of Wood ‘521 in making particulate compositions for electrostatic printing, and electrostatically printing a cyclodextrin or a cyclodextrin clathrate onto a substrate.
The examiner respectfully argues that Wood ‘521 teach the printable substrate includes a low-melting polymer, and the “fusing is accomplished by softening the surface of the printed substrate while pushing the printed composition into the substrate surface. For example, a low-density polyethylene coated paper is suitably employed in some such embodiments, wherein the temperature of the fusing rollers is selected to soften the polyethylene, allowing the printed composition to become embedded therein due to pressure applied by the rollers ([0078]). Wood ‘521 also teach that the printable compositions further include a wax or a polymer in place of the polymer(s) employed in a conventional toner composition; in other embodiments, the printable compositions include a wax or a polymer in addition to the polymer(s) employed in a conventional toner composition ([0037], [0045]). Therefore, the compositions according to Wood ‘521 are soft and abradable. Holcroft et al. teach an alternative method for application of cyclodextrin encapsulated 1-MCP by effectively spreading by mechanical pressure to a desired surface. It would have been prima facie obvious to prepare the abradable composition comprising cyclodextrin encapsulated 1-MCP that can be applied by either printing or spreading.
Applicant further argues that Wood ‘521 discloses that a polymer-grafted cyclodextrin, or a polymer-grafted cyclodextrin inclusion complex, can be suitably formed to have a particle size between 5 µm and 16 um. However, a polymer-grafted α-cyclodextrin, for example, is not α-cyclodextrin: it is a different compound. Accordingly, a polymer-grafted α-cyclodextrin inclusion complex is chemically different from an α-cyclodextrin inclusion complex.
The examiner respectfully argues that Wood ‘521 teach that any of the known cyclodextrins, including without limitation α-cyclodextrin, β-cyclodextrin, γ-cyclodextrin, cyclodextrin derivatives, polymer grafted cyclodextrins, and combinations of two or more thereof are usefully included in the printable compositions. Therefore, it would have been obvious to use α-cyclodextrin as the encapsulating agent for 1-MCP, and to form the inclusion complex into particles having a particle size of 5 µm to 16 µm.
Applicant further argues that Wood ‘521 does not disclose any compositions that are spreadable. Each and every disclosure of Wood ‘521 is related to particulate compositions suitable for electrostatic printing. Spreadable compositions are not particulates, and are unsuitable for electrostatic printing. The spreadable semisolid compositions of Holcroft lack discrete particulate structure, or any practicable way to form a particulate therefrom, because mechanical manipulation as slight as brushing obtains flow. Such a material cannot be made into a discrete particulate, and therefore cannot be provided an electrostatically printable form. The spreadable wax/liquid compositions of Holcroft include a liquid, and cannot be electrostatically printed. Electrostatically printable compositions must be solventless, in accordance with Wood ‘521 as well as the knowledge of one of ordinary skill in the art of electrostatic printing. Accordingly, any modification of Wood "521 by Holcroft would require modification of the compositions of Wood ‘521 to be spreadable compositions instead of discrete particulates, in order to be applied by spreading.
The examiner respectfully argues that a person of ordinary skill in the art would have been able to include the 1-MCP/CD complex particles of Wood ‘521 in the wax of Holcroft to yield a composition that is abradable and spreadable.
Claims 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lao et al. (US 2014/0080712 A1).
Regarding instant claim 3, Lao et al. teach that the encapsulated particles are further suspended in an oil medium (Claim 1). The oil comprises a mixture of alkanes of C15 to C40, or a distillate of petroleum. In another embodiment, the oil comprises a member selected from the group consisting of a mineral oil, an edible oil, and combinations thereof ([0043]-[0044]; Table 1). Suitable triglycerides are oils found in plants, such as, for example, coconut, palm, cottonseed, olive, tall, peanut, safflower, sunflower, corn, soybean, linseed, tung, castor, canola, citrus seed, cocoa, oat, palm, palm kernel, rice bran, cuphea, or rapeseed oil ([0080], [0082]-[0084]).
Regarding instant claim 5, Lao et al. teach that the waxy compound comprises carnauba wax, candelilla wax, stearic acid, or combinations thereof ([0014], [0022], [0038], [0131], [0143]; Table 1).
Regarding instant claim 6, Lao et al. teach that the Pickering particles comprise silica particles, clay, oxides, polymer particles or combinations thereof ([0014], [0040]; Table 1).
Regarding instant claim 7, Lao et al. teach HAIP-wax particles comprising 19.9489% to 40.6129% HAIP (1-methylcyclopropene/alpha-cyclodextrin complex) loading ([0116], [0120], [0124], [0128], [0131], [0135]; Table 1).
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 Lao et al. comprising an oil medium, candelilla wax, and an excipient such as silica particles, clay, oxides, polymer particles or combinations thereof. Also, it would have been obvious to prepare HAIP-wax particles comprising 19.9489% to 40.6129% HAIP (1-methylcyclopropene/alpha-cyclodextrin complex) loading.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lao et al. (US 2014/0080712 A1) as applied to claims 3 and 5-7 above, further in view of Wolan et al. (US 2019/0330451 A1).
Regarding instant claim 4, Lao et al. teach a method of using a carrier composition as described herein for a formation of an aqueous slurry. The slurry may optionally include one or more adjuvants, for example and without limitation, one or more binder ([0090]-[0093]). Lao et al. also teach the wax coated HAIP powder embedded in a resin matrix, wherein the resin matrix includes a polyester or polyether ([0013]).
Lao et al. do not explicitly disclose a binder or resin matrix selected from the group consisting of polyvinylpyrrolidone, a polysaccharide, a polyalkylene oxide, a polysaccharide derivative, and any combination thereof.
Wolan et al. teach a composition comprising a complex of 1-MCP and α-CD, and a polymer binder such as polyvinylpyrrolidone ([0005]). Wolan et al. teach that the composition may be in the form of a stick for application to a surface (e.g., by spreading manually), wherein the stick comprises the 1-MCP/α-CD complex combined with polymers, waxes, etc. ([0017]). In some embodiments, the stick includes a molded mass containing 5-50 wt.% 1-MCP/α-CD complex, 2-45 wt.% polymer binder (e.g., polyvinylpyrrolidone (PVP)), and a casing in which the column is embedded. The mass may further include polymers, waxes, etc., such as beeswax, stearic acid, candelilla wax, glycerol and isopropyl alcohol ([0018]-[0027], [0124]-[0136]).
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 comprising HAIP powder according to Lao et al. embedded in a polymer binder such as PVP, as reasonably taught by Wolan et al. Such would have been obvious because Wolan et al. teach the ease of application of the stick form of the 1-MCP/α-CD complex in a polymer, including for self-application outside or inside packages for storing fruit, vegetables or flowers ([0017], [0027]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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, 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
/Mina Haghighatian/Primary Examiner, Art Unit 1616