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.
Terminal Disclaimer
The terminal disclaimer filed on 24 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,583,944 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Withdrawn Rejections
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn.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 claim 2 that “the particulate includes α-cyclodextrin in an amount of 15 wt% 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 1-16 and 19-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘793 (US 9,421,793).
Regarding claims 1, 9 and 15-16, 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.
Regarding claim 2, 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 claim 3, Wood ‘793 teach that average particle size is a volume-based average (col. 10, ln. 58-64).
Regarding claims 4, 10 and 19, Wood et al. teach polymers include polyamides, polyesters, polyurethanes, polystyrene, etc. (col. 11, ln. 38 to col. 12, ln. 57).
Regarding claims 5 and 11, Wood et al. teach that polymers include polyamides (col. 11, ln. 39, 46).
Regarding claims 6 and 12, 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; Examples 3-8).
Regarding claims 7 and 13, Wood et al. teach that the substrate includes a solid polymeric sheet including polyvinylchloride, polyvinylidene chloride, polyester, etc. (col. 18, ln. 11-15).
Regarding claims 8, 14 and 26, 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 claim 20, Wood ‘793 teach that the polymer includes vinyl polymers, wherein the vinyl monomers include vinyl acetate (col. 11, ln. 38 to col. 12, ln. 25).
Regarding claims 16 and 21, it is noted that the step of classifying a particulate to obtain a classified particulate is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
The product according to Wood ‘793 comprises a particulate comprising a 1-MCP clathrate of α-CD. It is noted that instant claims 16-26 do not recite a mean particle size. Therefore, the product according to Wood ‘793 is within the scope of the instant claims.
Regarding claims 22-23 and 25, Wood ‘793 teach that useful coating techniques employed to coat the cyclodextrin compositions include, for example, die coating, slot coating, curtain coating, flood coating, gap coating, notch bar coating, wrapped wire bar drawdown coating, dip coating, brush coating, spray coating, pattern coating such as rotogravure coating, and print coating employing printing technologies such as flexographic printing, inkjet printing, lithographic printing techniques, letterset printing, and screen printing. Flexographic printing techniques are particularly well suited for use in conjunction with the cyclodextrin compositions to deliver a highly precise and reproducible amount of cyclodextrin composition to a substrate (Abstract; col. 19, ln. 52 to col. 20, ln. 57). Additionally, the techniques employed to make flexographic plates lend themselves readily to providing a precise amount of material to a substrate in a repeating pattern or a continuous pattern (col. 21, ln. 35-38). Wood ‘793 also teach that the inks typically employed in flexographic printing are either quick drying, such as a solvent based ink, or are radiation curable (col. 20, ln. 58 to col. 21, ln. 3).
Regarding claim 24, Wood et al. teach a total print weight of toner added to the substrate 80 µg/cm2 (0.8 g/m2), 160 µg/cm2 (1.6 g/m2), 550 µg/cm2 (5.5 g/m2) and 680 µg/cm2 (6.8 g/m2) (col. 29, ln. 4-16; col. 30, ln. 42-53).
Regarding claims 27-30, 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). Wood ‘793 also teach that flexographic printing is suitable for applications such as pressure sensitive labels (col. 21, ln. 62 to col. 22, ln. 2).
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant argues that regarding claims 9-15, Wood '793 fails to teach or suggest a bimodal 1-MCP/c/CD particulate, or provide any motivation or suggestion to employ two different particle size 1-MCP/c/CD particulates for any purpose.
The examiner respectfully argues that the particle size range for the first particulate is 5 µm to 20 µm, and the particle size range for the second particulate is 5 µm to 20 µm. A mixture of particles having a mean particle size within the range of 5 µm to 20 µm can be reasonably considered as two or more mixtures of particles each having a mean particle size within the range of 5 µm to 20 µm, wherein the two or more mixtures of particles have different mean particle sizes within the range of 5 µm to 20 µm. For example, a mixture of 10 particles having a mean particle size of 10 µm wherein each particle size is not exactly the same (e.g., 10 particles each having a size of 8, 8.5, 9, 9.5, 9.75, 10.25, 10.5, 11, 11.5 and 12 µm) also necessarily includes two mixtures of particles, the first mixture having a different mean particle size than the second mixture (e.g., the first mixture comprises the particles having a size of 8, 8.5, 9, 9.5 and 9.75 µm for a mean particle size of 8.95 µm; and the second mixture comprises the particles having a size of 10.25, 10.5, 11, 11.5 and 12 µm for a mean particle size of 11.05 µm). Therefore, the 1-MCP/c/CD particulate according to Wood ‘793, which 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, preferably about 4 µm to 16 µm, necessarily includes a mixture of two different particulates with different mean particles sizes, but each having a mean particle size within the range of preferably about 4 µm to 16 µm, and the mixture of the two different particulates results in a composition comprising a 1-MCP/c/CD particulate having a mean particle size within the range of about 4 µm to about 16 µm.
Applicant further argues that regarding claims 1-8 and 27-30, Wood '793 fails to teach or suggest any high purity, reduced size 1-MCP/c/CD particulates, or provide any motivation to reduce the particle size of a high purity 1-MCP/c/CD particulate, or incorporate a reduced size 1-MCP/c/CD particulate in a coating affixed to a substrate. Applicant argues that the cited disclosures of Wood '793 relate 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. However, the printable compositions of Wood ‘793 that are subjected to particle size reduction do not include discrete 1-MCP/c/CD particles. 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. One of ordinary skill in the art understands that when a particulate cyclodextrin or a cyclodextrin complex becomes 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, ln. 26-29), the cyclodextrin or cyclodextrin complex is consumed in the reaction. That is, the cyclodextrin-grafted polymers of Wood '793, also do not include any discrete 1-MCP/c/CD particles, since the cyclodextrin clathrate is bonded to a polymer backbone.
Applicant argues that Wood '793 only discloses modifying the particle size of printable compositions that do not include discrete 1-MCP/c/CD particles. One of ordinary skill in the art would not find any suggestion in Wood '793 to modify the particle size of a 1-MCP/c/CD particulate, since such particulates are expressly not printable compositions. Further, Wood '793 supplies no motivation to one ordinary skill in the art to modify the particle size of a 1-MCP/c/CD particulate, since there is no discernible benefit to doing so, for example in preparation for making a printable composition, since the 1-MCP/c/CD particulate will be subsequently dissolved, melt mixed, or grafted to make the printable composition.
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.
The examiner further 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).
Applicant also argues that regarding claims 16 and 19-26, Wood '793 also fails to teach or suggest a coated substrate having a classified 1-MCP/c/CD particulate, wherein the classified particulate has a mean particle size that differs by at least 20% from the mean particle size of the unclassified particulate.
The examiner respectfully argues that, in absence of evidence to the contrary, the particulates of Wood ‘793 will necessarily have a size distribution wherein two separate mixtures of particles have a mean particle size that differs by at least 20%.
The examiner further argues that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. The product according to claims 9, 16 and 28 comprise a combination of a first particulate and a second particulate with a polymer, wherein the first and second particulates consist of the same ingredients but have different mean particle sizes. Therefore, the combination of the first particulate and the second particulate yields a single mixture of particulates, all consisting of the same ingredients, wherein the combined mixture of particulates has a mean particle size that is within the claimed range. Wood ‘793 also teach a mixture of particulates consisting of the same ingredients as instantly claimed and having a mean particle size within the claimed range. Therefore, the product of the instant claims is obvious in view of the product according to Wood ‘793.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wood ‘793 (US 9,421,793) as applied to claims 1-16 and 19-30, above, further in view of Park et al. (US 2012/0108717 A1).
The teachings of Wood ‘793 are discussed above.
Regarding claims 17-18, Wood ‘793 teach that the flexographic inks typically employed are either quick drying, such as a solvent based ink, or are radiation curable, but do not explicitly disclose the claimed alcohols.
Park et al. teach that solvents used in flexographic printing include ethanol, wherein as an alcohol content of a substance increases, the substance more rapidly dries and the alcohol may be used to control (or improve) a drying rate of the ink composition ([0012], [0018]-[0019], [0047]; Claims 7-8 and 10). Park et al. also teach that the binder may include polyvinyl pyrrolidone, polyvinyl butyral, polyacrylate, phenol resin, ketone resin, pine resin, maleic resin, dammar gum, balsam resin, alkyd resin and siloxane resin, trocellulose, polyamide resin, vinyl chloride, vinyl acetate copolymer resin, chloride rubber, chlorinated propylene, acryl resin, polyurethane resin, melamine resin and epoxy resin ([0010]).
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 select an alcohol, such as ethanol, as the solvent in the flexographic printing method according to Wood ‘793. Such would have been obvious because Park et al. teach ethanol as a suitable solvent and the alcohol may be used to control (or improve) a drying rate of the ink composition.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive. Applicant argues that Wood '793 is directed to methods of electrostatic printing, which is specifically carried out in the absence of solvents. Accordingly, Wood '793 cannot be combined with Park to provide a solvent based formulation since such formulation is inoperable for the purpose of the electrostatic coating and affixing of Wood '793.
The examiner respectfully argues that Wood ‘793 teach that the flexographic inks typically employed are either quick drying, such as a solvent based ink. Therefore, the inks according to Wood ‘793 optionally comprise a solvent. Park et al. teach that solvents used in flexographic printing include ethanol, wherein as an alcohol content of a substance increases, the substance more rapidly dries and the alcohol may be used to control (or improve) a drying rate of the ink composition. Therefore, a person of ordinary skill in the art would have been motivated to utilize an alcohol, such as ethanol, in the flexographic ink according to Wood ‘793 in order to control (or improve) a drying rate of the ink composition.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-16, 26-31, 35-44 and 46-47 of copending Application No. 17/921,414. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘414 Application claims a coating composition comprising a mixture of a polymer, a solvent, and a particulate consisting of 85% or more by weight of a 1-MCP clathrate of α-CD and 0% to 15% by weight of α-CD having a mean particle size between 3 µm and 15 µm, as well as 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 further claims affixing the coating composition to a substrate.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional ODP rejection be held in abeyance until it becomes 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. 19/539,311. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘311 Application claims the same coated substrate as instantly claimed plus an additional water impervious wrapper. However, the coated substrate of the ‘311 Application comprises all the components as instantly claimed.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional ODP rejection be held in abeyance until it becomes the sole remaining issue in the application. Therefore, the rejection is maintained.
Claims 1-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-11 of copending Application No. 19/451,112. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘112 Application does not explicitly claim a first particulate comprising a 1-MCP clathrate of α-CD having a first mean particle size of between 5 µm and 20 µm, and a second particulate comprising a 1-MCP clathrate of α-CD having a first mean particle size of between 5 µm and 20 µm, wherein the second mean particle size is different from the first mean particle size, as instantly claimed. However, it is noted that the first and second particulates instantly claimed comprise the same components, a 1-MCP clathrate of α-CD and are within the same particle size range. The ‘112 Application claims a coated substrate comprising a coating affixed to a substrate surface, the coating comprising a mixture of: a particulate consisting of a 1-methylcyclopropene clathrate of α-cyclodextrin and optionally α-cyclodextrin, the particulate having a mean particle size between 1 µm and 20 µm; and a polymer. The particulate according to the ‘112 Application having a mean particle size between 1 µm and 20 µm can be divided into two separate groups comprising a first particulate consisting of a 1-methylcyclopropene clathrate of α-cyclodextrin having a mean particle size between 1 µm and 20 µm, and a second particulate consisting of a 1-methylcyclopropene clathrate of α-cyclodextrin having a mean particle size between 1 µm and 20 µm, wherein the second mean particle size is different from the first mean particle size.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant requests that the provisional ODP rejection be held in abeyance until it becomes 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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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