DETAILED ACTION
Response to Arguments
Applicant’s arguments, see page 7, filed 06/30/2026, with respect to the rejection(s) of claim(s) 1 under 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of D’Orazio (U.S. Pat. No. 4,144,318) in view of Huang et al. (CN111887245; translation provide by EPO 08/2026).
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 1-5 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/270,177 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and copending Application No. 18/270,177 claim “A substrate for diffusing volatile substances, characterized in that the substrate comprises: - a dispersible binder; and - a biodegradable material” wherein the biodegradable material (natural material) is wood or wood material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claim(s) 1-5 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over D’Orazio (U.S. Pat. No. 4,144,318) in view of Huang et al. (CN111887245; translation provide by EPO 08/2026).
Regarding claim 1, D’Orazio teaches mosquito coils made comprising sawdust and starch which meets the limitation of substrate for diffusing volatile substances, characterized in that the substrate comprises: - a dispersible binder (starch) and a biodegradable material (sawdust) (column 4, lines 35-55). D’Orazio teaches sawdust having a particle size from 100- 200 mesh (column 2, lines 65-68). D’Orazio does not teach wherein the biodegradable material has a particle size of less than 60 microns.
Huang et al. teaches mosquito coil with good burning performance and preparation method thereof (lines 10-15). Huang et al. teaches mosquito coil has a long continuous lighting time and does not cause harm to the human body (lines 35-40) Huang et al. teaches a preferred technical solution of the present invention, the fineness of each component is 300-400 mesh, 37 to 50 microns (lines 65-70). It would have been obvious to one of ordinary skill in the art at the time of filing to sieve the sawdust taught by D’Orazio to a fineness of 300-400 mesh because the particle size improves the burning performance.
Regarding claim 2, D’Orazio teaches 74% by weight sawdust which is encompassed by biodegradable material: 55-75 % (column 2; column 4, Table II). D’Orazio teaches 25% by weight starch which is encompassed by dispersible binder: 15-45 % (column 2; column 4, Table II).
Regarding claim 3, D’Orazio teaches 74% by weight sawdust which is encompassed by biodegradable material: 65-75 % (column 2; column 4, Table II). D’Orazio teaches 25% by weight starch which is encompassed by dispersible binder: 20-30 (column 2; column 4, Table II).
Regarding claims 4, 5 and 13, D’Orazio teaches 0.3-0.75% by weight sodium benzoate which is encompassed by in particular between 0.1 and 5 (column 2; column 3, lines 20-30).
Regarding claim 10, D’Orazio teaches potato starch which meets a broad and reasonable interpretation of flour (column 2, lines 25-40).
Regarding claims 11 and 12, D’Orazio teaches sawdust (column 2, lines 65-68).
Regarding claim 14, D’Orazio teaches 0.3-0.75% by weight sodium benzoate which is encompassed by in particular between 0. and 1.5 (column 2; column 3, lines 20-30). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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, Coris Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 08/30/2026
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