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 .
Request for Prioritized Examination
The request for prioritized examination under 37 CFR 1.102(e)(1) filed 13 February 2026 has been GRANTED. The application is SPECIAL.
Status of the Claims
Claims 1-30 are pending in the present application.
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 does not provide adequate support for “width of about 1 cm to about 152 cm”, “a fungicide”, and “benomyl, imazalil, or sulfur dioxide”.
Therefore, the effective filing date for instant claims 14-25 and 28 is 13 February 2026.
The effective filing date for instant claims 1-13, 26-27 and 29-30 is 27 April 2020.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant asserts that US 9,421,793, which has been incorporated by reference, provides support for “the substrate having a first and second major sides and a width of about 1 cm to about 152 cm”.
The examiner respectfully argues that US ‘793 states, “Roll fed printers are available in small formats, such as to print individual labels having widths of 1 cm, up to 152 cm (about 60 inches) or even larger widths for wide format printing.” The instant claims recite “the substrate” has a width of about 1 cm to about 152 cm, and further states that the substrate comprises a thermoplastic sheet or film, a woven fabric, a nonwoven fabric, paperboard, cardboard, carton board, corrugated cardboard, or paper”. US ‘793 does not provide support for all the types of substrates being claimed having a width of about 1 cm to about 152 cm.
Applicant further asserts that US 9,320,288, which has been incorporated by reference, provides support for “a fungicide”, and “the fungicide is benomyl, imazalil, or sulfur dioxide”.
The examiner respectfully argues that US ‘288 states, “In other embodiments, the complexed compound is… fungicides such as Benomyl, Imazalil, and sulfur dioxide”. US ‘288 does not state that the invention includes a 1-MCP clathrate of α-CD, and a fungicide that is not complexed.
Therefore, the instant claims more broadly encompass substrates with a width of about 1 cm to about 152 cm, as well as fungicides such as benomyl, imazalil, and sulfur dioxide, that are not adequately described in the patent documents incorporated by reference.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.
It is noted that Applicant has argued that it is universally and unambiguously clear that the recitation of α-cyclodextrin is the compound that is not being part of a clathrate. Therefore, the recitation in claims 9, 15 and 21 that “the particulate includes 15 wt% α-cyclodextrin or less” refers to the α-cyclodextrin that is not being part of a clathrate.
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 14-25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘990 (US 2021/0331990 A1) in view of Wood ‘282 (US 9,353,282) and Wood ‘288 (US 9,320,288).
Regarding claim 14, Wood ‘990 teach a coated substrate comprising a coating disposed on a substrate surface, the coating comprising a composition consisting essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin and having a mean particle size between 3 µm and 15 µm as determined by a volume-based method; and a polymer (Claims 16-18). Wood ‘990 teach substrates comprising adhesive coatings ([0139]). Wood ‘990 teach preparation of laminated substrates comprising an α-cyclodextrin complex of 1-methylcyclopropene in petrolatum on a film, application of an adhesive and a second substrate, and sealed ([0227]-[0228]).
Wood ‘990 do not explicitly disclose an adhesive layer contacting a second surface of the substrate, optionally a liner contacting the adhesive layer, and a water-impervious plastic or foil wrapper enclosing the coated substrate, as instantly claimed.
Wood ‘282 teach the cyclodextrin inclusion complex formed from 1-MCP and α-cyclodextrin (1-MCP/c/α-CD), wherein careful control of water content during coating, curing, and subsequent storage prior to use is useful in maintaining the stability of the 1-MCP/c/α-CD complex. As water is reduced, the 1-MCP is more controllably maintained within the central pore of the α-cyclodextrin. Storage of treated packaging materials containing 1-MCP/c/α-CD is advantageously accomplished by either covering the treated portion of the treated packaging material with a liner that is impermeable to water vapor; or in the case of treated films or sheets formed from water vapor impervious thermoplastics, winding the films or sheets into rolls, or storing sheets or containers in stacks; or otherwise containing the treated packaging materials in a low humidity environment. In some embodiments, bulk quantities of treated packaging materials, such as rolls of treated packaging film or nested stacks of treated containers, are wrapped in water impervious plastic or foil wrappers or enclosed in water impermeable bags for storage and/or shipping (col. 18, ln. 25-46).
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 wrap the coated substrate according to Wood ‘990 in a water impervious plastic or foil wrapper in order to control the water content during storage and/or shipping, as reasonably suggested by Wood ‘282.
Wood ‘288 teach rolls or stacks of sheets may be wrapped and sealed in individual pouches, wherein the product can be kept airtight and protected from premature exposure to water and water vapor prior to use. In this application, if an attachment means such as an adhesive layer is used, it may be protected by a release strip (col. 38, ln. 1-32).
Regarding the width of the substrate, Wood ‘990 teach that the dimensions of the major surfaces of the sheets and films include a width of about 2 cm to 2 m ([0100]). Wood ‘990 teach that the disgorgement conditions include ambient pressure (typically about 1 atm), temperature between 0 °C and about 50 °C, and relative humidity between about 80% and 100% ([0056]).
Regarding claims 18-25 and 28, Wood ‘990 do not explicitly disclose a coating composition also comprising a fungicide, as instantly claimed.
Wood ‘288 teach that the inclusion complex may also include fungicides such as benomyl, imazalil, and sulfur dioxide (col. 9, ln. 61-62; col. 10, ln. 27-28 and 49-57).
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 apply an adhesive to the second major surface along with a release strip, wherein the adhesive allows the substrate to be applied to the inside of sealed pouch, as reasonably suggested by Wood ‘288. Also, it would have been obvious to further include an inclusion complex with a fungicide, such as benomyl, imazalil, or sulfur dioxide, as reasonably suggested by Wood ‘288.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant asserts that the instant Application has an effective filing date under 35 U.S.C. 120 of April 27, 2020. Accordingly, Wood '990 is not prior art against the instant claims.
The examiner respectfully argues that the effective filing date for instant claims 14-25 and 28 is 13 February 2026, as discussed above.
Applicant further argues that Wood '282 and Wood ‘288 do not disclose a coating including a particulate consisting of 1-MCP/c/CD and optionally α-cyclodextrin, and having a mean particle size between 1 um and 20 µm. Wood '282 and Wood ‘288 fail to suggest or imply such a particulate.
The examiner respectfully argues that Wood ‘990 teach a coated substrate comprising a coating disposed on a substrate surface, the coating comprising a composition consisting essentially of a 1-methylcyclopropene clathrate of α-cyclodextrin and having a mean particle size between 3 µm and 15 µm as determined by a volume-based method; and a polymer (Claims 16-18).
Claims 1-18 and 20-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘793 (US 9,421,793) in view of Wood ‘282 (US 9,353,282).
Regarding claims 1-2, 14, 18, 20 and 26, Wood ‘793 teach a method of printing a cyclodextrin composition onto a substrate, the method including forming an electrostatically printable composition, the composition including a polymer and one or more cyclodextrin inclusion complexes (col. 2, ln. 47-51; col. 2, ln. 66 to col. 3, ln. 4). The printable compositions including one or more polymer and a cyclodextrin inclusion complex, the cyclodextrin inclusion complex including α-cyclodextrin (α-CD) and 1-methylcyclopropene (1-MCP) (col. 8, ln. 17-23; col. 9, ln. 15-16; col. 11, ln. 7-10; col. 17, ln. 24-67). Wood ‘793 teach that in some embodiments the cyclodextrin complex has a particle size ranging from a median size of about 5 µm to 150 µm, or about 6 µm to 100 µm, or about 6 µm to 80 µm (col. 9, ln. 41-44). Wood ‘793 teach that the compositions are suitable for electrostatic printing (col. 6, ln. 31-33), and that printable composition average particle size ranges between about 4 µm to 16 µm, wherein the average particle size is varied depending on the particular printer and toner source targeted. The average particle size is determined by a volume-based method (col. 10, ln. 48-61). Average particle sizes of about 8 µm to 10 µm are required for electrostatic printing with good resolution at 600 dpi (col. 10, ln. 48-67). Wood ‘793 teach that the compositions are prepared by compounding ingredients using melt blending, cooling, crushing or pelletizing, then turned into a fine powder with a controlled particle size range by air jet milling or ball milling (col. 11, ln. 1-6).
Therefore, it would have been prima facie obvious for a person having ordinary skill in the art prior to the effective filing date of the instant claims to prepare a 1-MCP/α-CD complex according to Wood ‘793 wherein the clathrate has a mean particle size of between 4 µm to 16 µm, followed by combining with a polymer. Such would have been obvious because Wood ‘793 teach that the cyclodextrin complex has a particle size ranging from a median size of about 5 µm to 150 µm, or about 6 µm to 100 µm, or about 6 µm to 80 µm, and further teach that printable composition average particle size ranges between about 4 µm to 16 µm. Wood ‘793 further teach that particle sizes can be adjusted by grinding, pulverizing, jet milling and ball milling. A person having ordinary skill in the art would reasonably expect to be able to prepare printable compositions comprising 1-MCP/α-CD complexes with a particle size of about 4 µm to 16 µm, and a polymer since Wood ‘793 teach electrostatic printing of compositions comprising cyclodextrin complexes and a polymer, wherein the particle size is preferably about 4 µm to 16 µm.
Wood ‘793 do not explicitly disclose wrapping the coated substrate in a water impervious wrapper, as instantly claimed.
Wood ‘282 teach the cyclodextrin inclusion complex formed from 1-MCP and α-cyclodextrin (1-MCP/c/α-CD), wherein careful control of water content during coating, curing, and subsequent storage prior to use is useful in maintaining the stability of the 1-MCP/c/α-CD complex. As water is reduced, the 1-MCP is more controllably maintained within the central pore of the α-cyclodextrin. Storage of treated packaging materials containing 1-MCP/c/α-CD is advantageously accomplished by either covering the treated portion of the treated packaging material with a liner that is impermeable to water vapor; or in the case of treated films or sheets formed from water vapor impervious thermoplastics, winding the films or sheets into rolls, or storing sheets or containers in stacks; or otherwise containing the treated packaging materials in a low humidity environment. In some embodiments, bulk quantities of treated packaging materials, such as rolls of treated packaging film or nested stacks of treated containers, are wrapped in water impervious plastic or foil wrappers or enclosed in water impermeable bags for storage and/or shipping (col. 18, ln. 25-46).
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 wrap the coated substrate according to Wood ‘793 in a water impervious plastic or foil wrapper in order to control the water content during storage and/or shipping, as reasonably suggested by Wood ‘282.
Regarding claims 3, 5-8, 14 and 26, Wood ‘793 teach that the printed substrates may be used by sticking an adhesive-bearing printed substrate inside of fresh produce packaging, on the surface of a cardboard box or open carton containing fresh produce, inside a modified atmosphere package or controlled atmosphere package, or the like for slow release of 1-MCP in proximity of the produce (col. 24, ln. 35-42). Wood ‘793 further teach both the printed substrate and a laminating substrate are permeable to 1-MCP and impermeable to water, wherein the edges are sealed, or the adhesive used in the laminating substrate is impermeable to water, or both (col. 25, ln. 51-56).
Regarding claim 4, Wood ‘793 teach that printable substrates in roll form are usefully employed (col. 18, ln. 39).
Regarding claims 9, 15 and 21, Wood ‘793 teach a printed substrate comprising a 1-MCP clathrate of α-cyclodextrin (Claim 1, 6-8, 10, 17 and 19).
Wood ‘793 does not teach that the compositions comprise 15 wt.% or more of uncomplexed α-cyclodextrin. In the absence of evidence to the contrary, the compositions according to Wood ‘793 will comprise less than 15 wt.% of uncomplexed α-cyclodextrin.
Regarding claims 10, 16 and 22, Wood ‘793 teach that average particle size is a volume-based average (col. 10, ln. 58-64).
Regarding claims 11, 17 and 23, Wood ‘793 teach polymers include polyamides, polyesters, polyurethanes, polystyrene, etc. (col. 11, ln. 38 to col. 12, ln. 57).
Regarding claims 12, 14, 24 and 29, Wood ‘793 teach the printable substrates include a paper or another nonwoven material, or a solid polymeric sheet including a polyolefin, a polyamide, a poly ester, polyvinylchloride, polyvinylidene chloride, or a polymer coated on a paper. Papers suitably employed include newspaper stock, kraft paper, standard office copier or printer paper, and specialty papers having various coatings thereon for printing purposes, ornamental purposes, or both (col. 18, ln. 1-26).
Regarding claims 13, 25 and 30, Wood ‘793 teach about 0.0001 wt % to 30 wt % cyclodextrin moieties (inclusion compounds and grafted polymers aside) are incorporated in the printable compositions, or about 0.001 wt % to 30 wt %, or about 0.001 wt % to 30 wt %, or about 0.01 wt % to 30 wt %, or about 0.1 wt % to 30 wt %, or about 0.25 wt % to 30 wt %, or about 0.50 wt % to 30 wt %, or about 0.75 wt % to 30 wt %, or about 1 wt % to 30 wt %, or about 2 wt % to 30 wt %, or about 3 wt % to 30 wt %, or about 4 wt % to 30 wt %, or about 5 wt % to 30 wt %, or about 6 wt % to 30 wt %, or about 7 wt % to 30 wt %, or about 8 wt % to 30 wt %, or about 9 wt % to 30 wt %, or about 10 wt % to 30 wt %, or about 12 wt % to 30 wt %, or about 14 wt % to 30 wt %, or about 16 wt % to 30 wt %, or about 18 wt % to 30 wt %, or about 20 wt % to 30 wt %, or about 0.0001 wt % to 28 wt %, or about 0.0001 wt % to 26 wt %, or about 0.0001 wt % to 24 wt %, or about 0.0001 wt % to 22 wt %, or about 0.0001 wt % to 20 wt %, or about 0.0001 wt % to 18 wt %, or about 0.0001 wt % to 16 wt %, or about 0.0001 wt % to 14 wt %, or about 0.0001 wt % to 12 wt %, or about 0.0001 wt % to 10 wt %, or about 0.0001 wt % to 9 wt %, or about 0.0001 wt % to 8 wt %, or about 0.0001 wt % to 7 wt %, or about 0.0001 wt % to 6 wt %, or about 0.0001 wt % to 5 wt %, or about 0.0001 wt % to 4 wt %, or about 0.0001 wt % to 3 wt %, or about 0.0001 wt % to 2 wt %, or about 0.0001 wt % to 1 wt %, or about 0.1 wt % to 15 wt %, or about 0.1 wt % to 10 wt %, or about 0.5 wt % to 15 wt %, or about 0.5 wt % to 10 wt %, or about 0.5 wt % to 7 wt %, or about 1 wt % to 7 wt % cyclodextrin moieties are incorporated in the printable compositions (col. 10, ln. 10-42).
Regarding claims 18, 20-25 and 28, Wood ‘793 teach combinations of 1-MCP/c/CD with a fungicide/c/CD (col. 23, ln. 60; Claims 1, 6, 10, 13 and 17).
Regarding claim 27, Wood ‘793 teach the thermally triggered exclusion of a cyclodextrin inclusion complex (col. 9, ln. 58-61; col. 19, ln. 23-33).
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 determine through routine experimentation the optimum temperature for storing the compositions without undesired release of 1-MCP, as reasonably taught by Wood ‘793.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant asserts that instant claims 18 and 20-25 are not directed to a coated substrate in a water impervious wrapper. Instant claims 26-30 are not directed a method of enclosing a coated substrate in a water impervious wrapper. The cited recitations of Wood '282 are not relevant to claims 18 and 20-30.
The examiner respectfully argues that instant claim 18 states, “A coated substrate”, and instant claim 20 states, “the coated substrate is wrapped in a water impervious wrapper.” Therefore, it is clear that instant claims 18 and 20-25 are directed to a coated substrate in a water impervious wrapper.
The examiner also respectfully argues that instant claim 26 is drawn to a method comprising providing a coated substrate for affixing to an interior surface of a container. The claims recite the transitional phrase “comprising” and do not define the structure of the container. Therefore, the presence of a water impervious wrapper is not outside the scope of the claim, and the broadest reasonable interpretation of a container would include a water impervious wrapper.
Applicant further argues that the references fail to teach or suggest the high purity, reduced size particulates claimed throughout the claims, or provide any motivation to reduce the particle size of a high purity particulate, or incorporate a reduced size particulate in a coating affixed to a substrate. Applicant further argues that the cited disclosures of Wood '793 are related to the mean particle size of printable compositions, not 1-MCP/c/CD particulates. The printable compositions of Wood '793 require a polymer component and are defined at column 10, lines 10-13 to include 0.0001 wt% to 30 wt% cyclodextrin. The polymer component in Wood '793 is combined with a cyclodextrin clathrate first, to form a printable composition; then the particle size of the printable composition is reduced. The printable compositions of Wood ‘793 do not consist of 1-MCP/c/CD and optionally a cyclodextrin, as claimed throughout the instant claims.
The examiner respectfully argues that Wood ‘793 teach that in some embodiments the cyclodextrin complex has a particle size ranging from a median size of about 5 µm to 150 µm, or about 6 µm to 100 µm, or about 6 µm to 80 µm (col. 9, ln. 41-44). Wood ‘793 teach that the compositions are suitable for electrostatic printing (col. 6, ln. 31-33), and that printable composition average particle size ranges between about 4 µm to 16 µm, wherein the average particle size is varied depending on the particular printer and toner source targeted. The average particle size is determined by a volume-based method (col. 10, ln. 48-61). Average particle sizes of about 8 µm to 10 µm are required for electrostatic printing with good resolution at 600 dpi (col. 10, ln. 48-67). Wood ‘793 teach that the compositions are prepared by compounding ingredients using melt blending, cooling, crushing or pelletizing, then turned into a fine powder with a controlled particle size range by air jet milling or ball milling (col. 11, ln. 1-6).
Therefore, it would have been prima facie obvious for a person having ordinary skill in the art prior to the effective filing date of the instant claims to prepare a 1-MCP/α-CD complex according to Wood ‘793 wherein the clathrate has a mean particle size of between 4 µm to 16 µm, followed by combining with a polymer. Such would have been obvious because Wood ‘793 teach that the cyclodextrin complex has a particle size ranging from a median size of about 5 µm to 150 µm, or about 6 µm to 100 µm, or about 6 µm to 80 µm, and further teach that printable composition average particle size ranges between about 4 µm to 16 µm. Wood ‘793 further teach that particle sizes can be adjusted by grinding, pulverizing, jet milling and ball milling. A person having ordinary skill in the art would reasonably expect to be able to prepare printable compositions comprising 1-MCP/α-CD complexes with a particle size of about 4 µm to 16 µm, and a polymer since Wood ‘793 teach electrostatic printing of compositions comprising cyclodextrin complexes and a polymer, wherein the particle size is preferably about 4 µm to 16 µm.
The examiner also respectfully argues that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Applicant further argues that the printable compositions of Wood ‘793 do not even include a discrete 1-MCP/c/CD particulate. The cyclodextrin or cyclodextrin clathrates of Wood '793 are melt mixed or solution blended with a polymer, or grafted to a polymer to form the printable compositions. Applicant asserts that one of ordinary skill in the art understands that when a cyclodextrin or cyclodextrin complex is melted or dissolved, it is no longer a discrete particulate. Similarly, one of ordinary skill in the art understands that when individual cyclodextrin molecules or cyclodextrin complexes are covalently bonded to a polymer (as disclosed in US Patents 7,166,671; 7,385,004; and 8,148,466, referenced by Wood ‘793 at col. 8, In. 26-29), the cyclodextrin or cyclodextrin complex is consumed in the reaction. That is, a cyclodextrin-grafted polymer, which is one of the printable compositions of Wood '793, does not include any discrete 1-MCP/c/CD particles, since the cyclodextrin clathrate is bonded to a polymer backbone.
The examiner respectfully argues that Wood ‘793 teach that in some embodiments the cyclodextrin complex has a particle size ranging from a median size of about 5 µm to 150 µm, or about 6 µm to 100 µm, or about 6 µm to 80 µm (col. 9, ln. 41-44). Wood ‘793 further teach that in other embodiments, the cyclodextrin or cyclodextrin inclusion complex, or a particulate containing the cyclodextrin or cyclodextrin complex as described above, is admixed with polymer particles commonly employed in toner compositions, and the admixture is a printable composition (col. 9, ln. 25-30). Therefore, Wood ‘793 teach that in one embodiment the particulate comprising the cyclodextrin inclusion complex is admixed with a polymer.
Applicant further argues that there is nothing in the disclosures of Wood ‘793 or Wood '282 to give rise to any reasonable expectation, in the mind of one of ordinary skill in the art, that reducing the particle size of a MCP/c/CD particulate would obtain any benefit or lead to any changes in observable behavior. At paragraph [0072] of the Application, Applicant discloses that the rate of humidity-mediated release of 1-MCP from a coating affixed to a substrate can be modified by modifying a particle size of a high purity 1-MCP/c/CD particulate present within the coating. This finding is not reported elsewhere in connection with any cyclodextrin complex, and modifying the particle size of a cyclodextrin complex has not previously been associated with any observations of a change in the rate of release of a complexed compound.
The examiner respectfully argues that Wood ‘793 provides motivation to prepare 1-MCP/c/CD particulates with a particle size of 4-16 µm. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘793 (US 9,421,793) in view of Wood ‘282 (US 9,353,282) as applied to claims 1-18 and 20-30 above, further in view of Wood ‘288 (US 9,320,288).
Regarding claim 19, Wood ‘288 teach that the inclusion complex may also include fungicides such as benomyl, imazalil, and sulfur dioxide (col. 9, ln. 61-62; col. 10, ln. 27-28 and 49-57).
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 the compositions according to Wood ‘793 wherein the fungicides are benomyl, imazalil or sulfur dioxide, as reasonably suggested by Wood ‘288.
Response to Arguments
Applicant's arguments are the same as above. Therefore, the examiner’s response above is repeated herein.
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 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,583,944 in view of Kostansek (US 6,548,448). Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘944 claims the same coated substrate as instantly claimed. US ‘944 does not claim that the coated substrate is wrapped in a water impervious wrapper, as instantly claimed.
Kostansek teaches 1-methylcyclopropene encapsulated within α-cyclodextrin and incorporated into packaging materials (Abstract; col. 1, ln. 9-13 and 58-65). The packaging material includes cardboard, plastic, wooden box, paper bag, thermoplastic packaging plastics, coated papers, etc. (col. 5, ln. 45-58). The container can be impermeable to the cyclopropene gas, or water, or both (col. 6, ln. 8-20). The 1-MCP clathrate with α-cyclodextrin can also be incorporated into an adhesive component of packaging materials or incorporated into package labels (col. 5, ln. 55-58; col. 6, ln. 12-20). See also claims 1-10.
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 incorporate the coated substrate of US ‘944 in a packaging material that is impermeable to the cyclopropene gas, or water, or both, as reasonably suggested by Kostansek. Such would have been obvious because Kostansek teaches that placing the 1-MCP clathrate of α-cyclodextrin on a substrate in a packaging material releases the cyclopropene gas as a result of the moisture from humid air surrounding the produce inside the package.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant argues that the combination of claims 1-11 of US '944 with Kostansek fails to reach the instantly claimed feature of wrapping the coated substrate in a water impervious wrapper, since the instant claims do not require a plant to be included within the wrapper.
The examiner respectfully argues that the instant claims recite the transitional phrase comprising and do not exclude the presence of a plant. Also, Kostansek teaches packaging material comprising a substrate and encapsulated cyclopropenes, wherein fruits, vegetables, or ornamental plants may be contained (col. 5, ln. 45-58). Kostansek further teaches that because cyclopropenes are known to release from packaging materials by diffusion or by displacement by water, particularly when the cyclopropene is encapsulated in a molecular encapsulation agent, this invention also contemplates articles in which the composition of this invention is enclosed in a container which is impermeable to the cyclopropene gas, or water, or both. Such an article of manufacture includes, for example, labels in which the cyclopropene is incorporated into the label material itself or the label adhesive (col. 6, ln. 12-20). Therefore, Kostansek teaches packaging material that is prepared prior to enclosing a plant.
Claims 1-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 37-44 of copending Application No. 17/921,414 in view of Kostansek (US 6,548,448). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘414 Application claims a method of modifying a particulate, wherein the particulate consists of a 1-MCP clathrate of α-cyclodextrin and optionally α-cyclodextrin having a mean particle size between 1 µm and 20 µm, wherein the modified particulate is affixed to a substrate with a polymer.
The ‘414 Application does not explicitly claim that the substrate with 1-MCP/α-cyclodextrin is wrapped in a water impervious wrapper, as instantly claimed.
Kostansek teaches 1-methylcyclopropene encapsulated within α-cyclodextrin and incorporated into packaging materials (Abstract; col. 1, ln. 9-13 and 58-65). The packaging material includes cardboard, plastic, wooden box, paper bag, thermoplastic packaging plastics, coated papers, etc. (col. 5, ln. 45-58). The container can be impermeable to the cyclopropene gas, or water, or both (col. 6, ln. 8-20). The 1-MCP clathrate with α-cyclodextrin can also be incorporated into an adhesive component of packaging materials or incorporated into package labels (col. 5, ln. 55-58; col. 6, ln. 12-20). See also claims 1-10.
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 incorporate the 1-MCP clathrate with α-cyclodextrin affixed to a substrate in a packaging material that is impermeable to the cyclopropene gas, or water, or both, as reasonably suggested by Kostansek. Such would have been obvious because Kostansek teaches that placing the 1-MCP clathrate of α-cyclodextrin on a substrate in a packaging material releases the cyclopropene gas as a result of the moisture from humid air surrounding the produce inside the package.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional rejection be held in abeyance until the rejection is made the sole remaining issue in the application. Therefore, the rejection is maintained.
Claims 1-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 19/539,381 in view of Kostansek (US 6,548,448). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘381 Application claims the same coated substrate as instantly claimed. The ‘381 Application does not claim that the coated substrate is wrapped in a water impervious wrapper, as instantly claimed.
Kostansek teaches 1-methylcyclopropene encapsulated within α-cyclodextrin and incorporated into packaging materials (Abstract; col. 1, ln. 9-13 and 58-65). The packaging material includes cardboard, plastic, wooden box, paper bag, thermoplastic packaging plastics, coated papers, etc. (col. 5, ln. 45-58). The container can be impermeable to the cyclopropene gas, or water, or both (col. 6, ln. 8-20). The 1-MCP clathrate with α-cyclodextrin can also be incorporated into an adhesive component of packaging materials or incorporated into package labels (col. 5, ln. 55-58; col. 6, ln. 12-20). See also claims 1-10.
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 incorporate the coated substrate of the ‘381 Application in a packaging material that is impermeable to the cyclopropene gas, or water, or both, as reasonably suggested by Kostansek. Such would have been obvious because Kostansek teaches that placing the 1-MCP clathrate of α-cyclodextrin on a substrate in a packaging material releases the cyclopropene gas as a result of the moisture from humid air surrounding the produce inside the package.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional rejection be held in abeyance until the rejection is made the sole remaining issue in the application. Therefore, the rejection is maintained.
Claims 1-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-11 of copending Application No. 19/451,112 in view of Kostansek (US 6,548,448). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘112 Application claims the same coated substrate as instantly claimed. The ‘112 Application does not claim that the coated substrate is wrapped in a water impervious wrapper, as instantly claimed.
Kostansek teaches 1-methylcyclopropene encapsulated within α-cyclodextrin and incorporated into packaging materials (Abstract; col. 1, ln. 9-13 and 58-65). The packaging material includes cardboard, plastic, wooden box, paper bag, thermoplastic packaging plastics, coated papers, etc. (col. 5, ln. 45-58). The container can be impermeable to the cyclopropene gas, or water, or both (col. 6, ln. 8-20). The 1-MCP clathrate with α-cyclodextrin can also be incorporated into an adhesive component of packaging materials or incorporated into package labels (col. 5, ln. 55-58; col. 6, ln. 12-20). See also claims 1-10.
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 incorporate the coated substrate of the ‘112 Application in a packaging material that is impermeable to the cyclopropene gas, or water, or both, as reasonably suggested by Kostansek. Such would have been obvious because Kostansek teaches that placing the 1-MCP clathrate of α-cyclodextrin on a substrate in a packaging material releases the cyclopropene gas as a result of the moisture from humid air surrounding the produce inside the package.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional rejection be held in abeyance until the rejection is made the sole remaining issue in the application. Therefore, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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