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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/30/2025, 5/14/2026, 7/13/2026 and 8/11/2026 have been considered by the examiner.
Claim Objections
Applicant is advised that should claims 24-25 be found allowable, claims 26-28 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 18, 20-23, 25, 27 and 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baier et al. (US 2014/0094369; of record) in view of Lu et al. (US 2007/0275101; of record).
Baier describes a delivery device in the form of a film comprising a substrate (e.g. polyethylene, paper; see [0116]; see instant claims 18, 20 and 29-31) having a surface which is provided with a coating (see [0129] the coating comprising a composition comprising an encapsulation material, such as cyclodextrin (see [0038]), which serves to encapsulate the active ingredient 1-MCP (ethylene blocking agent) (see [0036]). The 1-MCP/cyclodextrin inclusion complex is intermingled with at least one degradable polymer (see [0019]) such as water-soluble polymers like polyvinylpyrrolidone and polyvinyl alcohol (see [0048]). Baier teaches that the ratio of polymer to the ethylene blocking agent complex be within the range of 20:1 to 1:10 (see [0055]; see instant claims 18 and 21). The coating may comprise additional components such as glycerin (i.e. glycerol) which is a hygroscopic agent (see [0077]; see instant claims 25 and 27).
In all, the teaching suggests a film substrate having a surface comprising a coating layer, the layer comprising a complex of 1-methylcyclopropene (1-MCP) and cyclodextrin intermingled with a hydrophilic polymer, e.g. polyvinylpyrrolidone, and a hygroscopic agent such as glycerin.
Baier fails to teach the molecular weight of the polyvinylpyrrolidone as being between at least 5000.
Lu is directed to antimicrobial film formulations. Polyvinylpyrrolidone is exemplified as a desirable film forming polymer. Lu teaches that polyvinylpyrrolidone useful in the film possesses a molecular weight of from 6,000-15,000 (PVP K-15) (see [0079]) (see instant claims 18 and 21-23). Thus, it would have been obvious to use the polyvinylpyrrolidone polymers having a weight of 6,000-15,000 in the formulation of Wood and Baier with a reasonable expectation for success in yielding a composition having suitable film-forming properties. See MPEP 2143(I)(A). It is noted that the resulting PVP polymer composition comprising the MCP/cyclodextrin inclusion complex would be ‘capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture’ as the formulation comprises the same materials/structure as that required by instant claim 18.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
Claims 19, 24, 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Baier et al. (US 2014/0094369; of record) in view of Lu et al. (US 2007/0275101; of record) as applied to claims 18, 20-23, 25, 27 and 29-31 above, and further in view of Wood et al. (US 2015/0375521).
Baier and Lu fails to teach the composite film as a) comprising an adhesive layer and b) a barrier polymer.
Wood, like Baier, is directed to film materials for use in plant ripening processes, the film comprising cyclodextrin inclusion complexes comprising 1-MCP and cyclodextrin (see [0107, 0111]) wherein the cyclodextrin complex is provided within a polymer network (see abstract, [0042]). The composition can be provided on a film substrate that has a barrier layer, a plastic film (e.g. polymer) that provides added additional control of the release of the compound and prevents release beyond the barrier layer, or provides for controlled diffusion of the complexed compounds (see [0033, 0104]; see instant claims 24, 26 and 28). Wood’s film substrate may further comprise an adhesive backing so as to adhere the film to a target surface (see [0111]; see instant claim 19). It would have been obvious to modify Baier’s film such that it comprises an adhesive layer to enable sticking the film to a desired target surface barrier as well as a barrier layer/polymer to enable controlled release of 1-MCP. See MPEP 2143(I)(C) which states that the use of a known technique to improve similar devices in the same way is supportive of obviousness.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was filed, as evidenced by the references, especially in absence of evidence to the contrary.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 18-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,647,834.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in all the applications are drawn to a composition comprising: (a) a complex of 1-methylcyclopropene and a-cyclodextrin and (b) a hydrophilic polymer binder selected from the group consisting of polyvinylpyrrolidone and copolymers thereof, polyvinyl alcohol and copolymers thereof, polyvinyl acetate copolymers, and combinations thereof, wherein the ratio of polymer binder to complex on a weight to weight basis ranges from about 0.5:1 to about 3:1, wherein the polymer binder has a molecular weight ranging from at least about 5,000, and wherein the composition is capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other.
Claims 18-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,647,834.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in all the applications are drawn to a composition comprising (a) a substrate having a first surface and a second surface; (b) a layer on the first surface consisting essentially of a hydrophilic composition, wherein the composition comprises: (i) a complex of 1-methylcyclopropene and a-cyclodextrin; and (ii) a polymer binder selected from the group consisting of polyvinylpyrrolidone and copolymers thereof, polyvinyl alcohol and copolymers thereof, polyvinyl acetate copolymers, and combinations thereof; (c) at least one additional functional layer covering the layer on the first surface; and (d) an adhesive provided on the second surface; wherein the hydrophilic composition is capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture, and wherein the at least one additional functional layer changes the 1-methylcyclopropene release profile relative to what the 1-methylcyclopropene release profile would be in the absence of the layer. The instant claims do not contemplate an adhesive provided to a second surface however it is noted that this embodiment is envisaged by the instant specification. The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other.
Claims 18-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12043733.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in all the applications are drawn to a composition comprising: (a) a complex of 1-methylcyclopropene and a-cyclodextrin and (b) a hydrophilic polymer binder selected from the group consisting of polyvinylpyrrolidone and copolymers thereof, polyvinyl alcohol and copolymers thereof, polyvinyl acetate copolymers, and combinations thereof, wherein the ratio of polymer binder to complex on a weight to weight basis ranges from about 0.5:1 to about 4:1, wherein the polymer binder has a molecular weight ranging from at least about 5,000, and wherein the composition is capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other.
Claims 18-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-23 of application 18/618537
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in all the applications are drawn to a composition comprising: (a) a complex of 1-methylcyclopropene and a-cyclodextrin and (b) a hydrophilic polymer binder selected from the group consisting of polyvinylpyrrolidone and copolymers thereof, polyvinyl alcohol and copolymers thereof, polyvinyl acetate copolymers, and combinations thereof, wherein the ratio of polymer binder to complex on a weight to weight basis ranges from about 0.5:1 to about 4:1, wherein the polymer binder has a molecular weight ranging from at least about 5,000, and wherein the composition is capable of releasing the 1-methylcyclopropene in the form of a gas when exposed to moisture The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611
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