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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 16, 2025, that includes a response to the Final Office Action mailed September 17, 2025, has been entered. Claims 17 and 21 have been amended; and claims 1-8, 18, 19, and 23 have been canceled. Claims 9-16 and 25 have been withdrawn. Claims 17, 20-22, and 24 are under examination.
Withdrawal of Prior Claim Rejections - 35 USC § 103
Whitman et al. (U.S. Patent Application Pub. No. 2011/0312096), the cited primary reference, requires sulfur, which is necessarily excluded by the present claims, as now amended. Therefore, the 35 USC 103 rejection presented in the Final Office Action mailed September 17, 2025 is hereby withdrawn.
Claim Objections
Claims 17, 20-22, and 24 are objected to because of the following:
1. Claims 17 and 21 have been substantially amended. However, claims 17 and 21 are not properly marked up, or even marked up at all, to show the amendment made. Rather, the amended versions of claims 17 and 21 currently presented, which are dramatically different from their respective counterpart claims in the most recently filed prior claim set, are cleanly presented as if no amendment ever took place.
2. The terminology employed in claims 17, 20-22, and 24 is not consistent with the subject matter now claimed. For example, the claims are directed to “an additive composition”. However, after the extensive amendments to claim 17, the composition now being claimed, according to the original specification, should be called “a marker fluid dispersion”, not “an additive composition” (see e.g. paragraph 0013). The term “dispersion phase” appears nowhere in the original specification and claims. The original specification employs the term “discrete phase” (e.g. paragraph 0013). Applicant is advised that “dispersed phase” would be satisfactory as well.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17, 20-22, and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
1. Claim 17 stipulates in a wherein clause that “about 50 ppm to about 1000 ppm of the dispersion phase is dispersed in the continuous phase”, and claim 21 provides that “about 200 ppm to about 600 ppm of the dispersion phase is dispersed in the continuous phase”. As already noted, supra, the original specification and claims say nothing at all about “dispersion phase”. Paragraph [0017] discloses that “when mixed with water, the surfactant is preferably capable of emulsifying about 50 ppm to about 1000 ppm of the hydrocarbonaceous solvent and the bismuth carboxylate in water”. As anyone of ordinary skill in the art would immediately recognize, emulsifying about 50 ppm to about 1000 ppm of the hydrocarbonaceous solvent and the bismuth carboxylate in water is not one and the very same as what is now claimed.
2. Claim 17 stipulates in a wherein clause that “the bismuth carboxylate includes in the range of 6 to 18 moles of carbon per mole of bismuth”. However, the original specification provides that the bismuth carboxylate can contain about 6 to about 24 moles of carbon atoms per mole of the bismuth (e.g. paragraphs 0011, 0016), or preferably the carboxylate includes about 6 to about 12 moles of carbon per mole of bismuth (e.g. paragraph 0036).
2. Claim 17 now stipulates in a wherein clause that “the additive composition is free of sulfur”. The original specification says nothing at all about sulfur. A composition necessarily free of sulfur was not contemplated at the time of filing.
This appears to be new matter.
Claims 20-22 and 24 depend from claim 17.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17, 20-22, and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 stipulates in a wherein clause that “about 50 ppm to about 1000 ppm of the dispersion phase is dispersed in the continuous phase”. In the context of the presently claimed dispersion, one of ordinary skill in the art would not have any understanding of what this means. Indeed, the claims are directed to a dispersion comprising a continuous aqueous phase and a dispersed phase. One of ordinary skill in the art would thus generally understand that 100% of the dispersed phase is dispersed in the continuous phase.
Claim 21 stipulates in a wherein clause that “about 200 ppm to about 600 ppm of the dispersion phase is dispersed in the continuous phase”. Again, in the context of the presently claimed dispersion, one of ordinary skill in the art would not have any understanding of what this means. Indeed, the claims are directed to a dispersion comprising a continuous aqueous phase and a dispersed phase. One of ordinary skill in the art would thus generally understand that 100% of the dispersed phase is dispersed in the continuous phase.
Claim 22, which depends from claim 17, stipulates in a wherein clause that “the additive composition immersed in water solution is suitable to increase resistance of the wood product to microbial attack”. In the context of the newly amended claim 17, one of ordinary skill in the art cannot make heads or tails out of this limitation. The claimed subject matter is a dispersion comprising a continuous aqueous phase and a marker dispersed phase. The marker phase is already in water, and there is no wood product in the water. If claim 22 is attempting to describe adding the dispersion to water, this would essentially represent a dilution of the agents in the dispersed phase, and its unclear what the claim is even saying, e.g. is the claimed dispersion unable to increase the resistance of the wood product to microbial attack until it is diluted?
Claims 20-22 and 24 are (also) indefinite for depending from an indefinite claim.
Obviousness-Type 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 17, 20-22, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-18 of U.S. Patent No. 10,495,626.
Applicant’s elected subject matter is directed to a composition comprising a petroleum distillate, a bismuth carboxylate, and an alkyl polyethoxylate surfactant; wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth, and wherein the composition can further comprise a biocidal metal, e.g. copper.
Claims 1-5 and 7-18 of U.S. Patent No. 10,495,626 disclose a composition comprising a hydrocarbonaceous solvent, a metal carboxylate, and a surfactant, which can be a petroleum distillate, a bismuth carboxylate, and an alkyl polyethoxylate surfactant, respectively, and wherein the composition can further comprise a biocidal metal, e.g. copper.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent disclose that the metal carboxylate can be a bismuth carboxylate and that the carboxylate can have 6-18 carbon atoms, i.e. the bismuth carboxylate can contain about 6-18 moles of carbon per mole of bismuth.
Response to Arguments
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive.
i) Applicant contends, regarding the ODP rejection, that “a double patenting rejection is not permitted where the claimed subject matter is presented in a divisional application as a result of a restriction requirement made in a parent application”, and that “the subject matter of the present divisional application was the subject matter of Group 5 in the restriction requirement made in the parent application (15/143,316; U.S. Patent No. 10,495,626) on May 09, 2018”.
The Examiner, however, would like to point out the following:
1. If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.
2. In parent U.S. Application No. 15/143,316, the claims were restricted to Groups I-V. Applicant elected Group II subject matter.
3. The original claims of the present divisional application were in fact directed to the subject matter of Groups I, III, IV, and/or V only. However, the present claims currently under examination have been extensively amended, and are now directed to Group II subject matter. Since Group II subject matter was the elected invention in the parent application, and not one of the “other inventions” which were not elected, the ODP rejection here is proper.
Therefore, the ODP rejection is hereby maintained.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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/DAVID BROWE/Primary Examiner, Art Unit 1617