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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 3, 2025 has been entered.
Claims 1-3, 5-13, 15-33 are pending. Claims 7-13, 15-16, 25-33 are withdrawn.
Claims 1-2, 17-19, 21-22 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al.
Claims 1-3, 5-6, 17-24 stand rejected under 35 U.S.C. 103 as being unpatentable over Straetmans et al.
Claim Rejections - 35 USC § 112
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.
Claim 1 is 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. There is no support found in the instant specification for the composition is free of metconazole and 1,5-diamino-2-methylpentane. Claims 2-3, 5-6, 17-24 are subsumed under the rejection.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 17-19, 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al (US Patent Application 2014/0364308 (already of record)).
Regarding claims 1-2, 17-19, 21-22, Tanaka et al teaches a thickener solution/composition comprising a biocidal component and preservation agent and 6.16g of Jeffamine T-403 (which satisfies formula I) and 0.99g of Proxel GXL (which is 20% active ingredient) (which satisfies a weight ratio of about 1:30) (Example 15).
Tanaka et al teaches the limitations of the instant claims; hence, Tanaka et al anticipates the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-6, 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Straetmans et al (US Patent Application 2010/0264359 (already of record)).
Regarding claims 1-3, 5-6, 17-24, Straetmans et al teaches a biocidal mixture composition comprising at least one biocide that is not a polyamine and at least one polyamine used in material protection or for preventing discoloration of industrial materials (which satisfies claimed preservation composition) (Abstract). Straetmans et al further teaches polyamines having the formula II
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wherein n, m and o in each is a number from 1-10, preferably 2-5; Polyetheramine T403 as an example (Paragraphs 25-28). Straetmans et al further teaches biocides are preferably fungicides and bactericides (Paragraph 18) wherein preferred fungicides and bactericides include benzisothiazolinone (Paragraph 20). Straetmans et al further teaches the ratio of the biocides to polyamine is preferably 1:5-2:1 (which overlaps the claimed weight ratios of (a):(b) and overlaps the claimed ratio of 1-45wt% of (a)) (Paragraph 29). Straetmans et al further teaches 20wt% or 45wt% of benzisothiazolinone or biocide in the composition (Paragraphs 72,77). Straetmans et al further teaches the addition of 0.01-5wt%sodium pyrithione (Paragraph 63). However, Straetmans et al fails to specifically disclose a preferred composition comprising Polyetheramine T403 and benzisothiazolinone at a weight ratio of 1:50-2:3, 1-45wt% of (a) in the composition and the composition is free of 1,5-diamino-2-methylpentane.
With regard to a preferred composition comprising Polyetheramine T403 and benzisothiazolinone at a weight ratio of 1:50-2:3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a composition comprising Polyetheramine T403 and benzisothiazolinone at a weight ratio of 1:50-2:3 as Straetmans et al teaches preferred fungicides and bactericides include benzisothiazolinone and preferred polyamine including Polyetheramine T403 in order to provide a biocidal composition at a weight ratio of preferably 1:5-2:1, which overlaps the claimed ratios. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to 1-45wt% of (a) in the composition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 1-45wt% of (a) in the composition in Straetmans et al as Straetmans et al teaches 20wt% or 45wt% of benzisothiazolinone or biocide in the composition (Paragraphs 72,77) and Straetmans et al teaching of 1:5-2:1 overlaps 1-45wt% of (a), as both (a) and (b) are the only required components of the composition. For example, a ratio of 1:3 of (a):(b), would satisfy a composition comprising 33.3wt% of (a) and 66.6wt% of (b).
With regard to the composition is free of 1,5-diamino-2-methylpentane and metconazole, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a composition free of 1,5-diamino-2-methylpentane and metconazole in Straetmans et al as Straetmans et al does not require 1,5-diamino-2-methylpentane or metconazole in the composition; the composition can include 1,5-diamino-2-methylpentane or a polyetheramine (Paragraphs 25, 28).
Response to Arguments
Applicant's arguments filed September 3, 2025 have been fully considered but they are not persuasive.
With respect to Applicant’s arguments over 35 U.S.C. 112(a), the Examiner maintains the same position provided in the previous office action. Applicant asserts the support is found in paragraph 6 of the present application, there is no support found for the composition being free of 1,5-diamino-2-methylpentane and metconazole.
With respect to Applicant’s arguments over Tanaka et al, Applicant argues that the composition is free of metconazole and 1,5-diamino-2-methylpentane. The Examiner respectfully disagrees with the above argument because a thickener solution comprising Kelzan S, Proxel GXL, propylene glycol and ion exchange water (Paragraph 196).
With respect to Applicant’s arguments over Straetmans et al, Applicant argues that when properly viewed as a whole there is simply no motivation to combined the references in the manner suggested. Applicant further argues that the mixture contains 1,5-diamino-2-methylpentane, 1,3-bisaminomethylcyclohexane and 1,3-cylylenediamine and also polyetheramines. The Examiner respectfully disagrees with the above argument because Straetmans et al teaches a composition comprising at least one biocide that is not a polyamine and at least one polyamine (Abstract). Straetmans et al further teaches the composition can include 1,5-diamino-2-methylpentane or a polyetheramine (Paragraphs 25, 28). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Likewise, a reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982).
Applicant further argues unexpected results. The Examiner respectfully disagrees with Applicant’s argument as it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 November 10, 2025