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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-14, 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Molloy (US 2013/0090238 A1) in view of Gottsche (US 2008/0090886 A1), and optionally further in view of Kanda (US 4923894).
Regarding claim 1, Molloy teaches a composition for increasing the retention of an insecticidal or fungicidal biocide in a glueline-treated glued-wood product that has been hot-pressed and/or block-stacked during manufacture comprising particles of at least one insecticidal or fungicidal biocide, wherein said particles have a mean size of 0.1 to 50 µm, which reasonably suggests a volume mean diameter D [4,3] over about the same range (paragraphs 22, 36, 47, 52, 54-56, 60 and 66). Moreover, Molloy and Applicant both teach similar methods of forming the particles, such as milling (see Molloy, paragraph 53; Examples 2-3), and thus it is reasonable to expect similar particle distributions are provided. Molloy’s range of 0.1 to 50 µm is also considered to overlap or be near the claimed range of greater than about 55 µm. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. As disclosed, the preamble language of increasing retention is satisfied by providing a particle mean diameter in the claimed range. See Applicant’s published application (paragraphs 20-23; Figures 1-7). Molloy teaches the composition may further comprise glue selected from several of the listed resins and the composition may be formulated as a suspension in water (paragraphs 57-58 and 61). A mean size up to 50 µm as suggested by Molloy naturally suggests a Dv90 size of less than about 500 µm, less than about 400 µm or less than about 300 µm since a significant content of particles much above 50 µm would make it difficult or impossible to have a mean size of up to 50 µm. As noted above, a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range.
Molloy differs from claim 1 in that:
i. Molloy does not recite the composition is further formulated as a suspension in one or more water-miscible non-solvent liquids.
ii. Particle size is further discussed.
(i) Molloy teaches the composition may be a suspension and may further comprise antifreeze agents (paragraph 49-50), but does not teach particular agents. In a related water based composition containing biocides for wood, Gottsche suggests ethylene glycol, propylene glycol or glycerol as suitable antifreeze agents (paragraphs 1, 15, 42, 100, 123 and 127). These are all water-miscible non-solvent liquids. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in Molloy because one having ordinary skill in the art would have been motivated to select known suitable antifreeze agents in the composition as suggested by the above noted teachings of Gottsche.
(ii) Kanda is optionally applied to provide further evidence that the particle size of insecticidal and fungicidal particles incorporated in adhesives, glue, wood products and water-based compositions may suitably be in the range of 1 to 250 µm. See Kanda (column 1, lines 6-13 and 64-68; column 2, lines 3-20 and 57-61; column 3, lines 64-68; column 4, lines 10-27 and 60-63; column 5, lines 19-33; Examples 5 and 6). As noted above, a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Thus Kanda suggests particle sizes well within the claimed range may be used to provide effective insecticidal and/or fungicidal properties to adhesives, glue, wood products and water-based compositions. In view of the particle sizes suggested by Kanda, naturally the person having ordinary skill in the art would have engaged in routine experimentation to select suitable particle sizes within this range to provide effective insecticidal and/or fungicidal properties. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide particle sizes in the claimed range in Molloy because one having ordinary skill in the art would have been motivated to use known suitable particle sizes as suggested by the above noted teachings of Kanda.
Claims 3-4, 7 and 18 are satisfied for the reasons provided above.
Regarding claims 5 and 19-20, Molloy teaches providing the biocidal particles in an effective amount (paragraphs 31 and 65-66). While specific amounts are not recited, the person of ordinary skill in the art would have naturally engaged in routine experimentation to discover effective amounts in view of this teaching in Molloy. Furthermore, the recited ranges are rather broad. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide a biocidal particle content in the claimed range because one having ordinary skill in the art would have been motivated to provide effective amounts of the biocide as a matter of routine experimentation for the reasons provided above.
Regarding claims 6, 8-14 and 16, Molloy clearly teaches these additional limitations (paragraphs 36, 47 and 56-66). As noted above, a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 22 June 2026 have been fully considered but they are not persuasive.
Applicant argues the examiner’s primary rationale is that it would have been obvious to optimize the particle size taught in Molloy to arrive at the claimed invention. The examiner respectfully disagrees with this assertion. The examiner has simply taken the position that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
As to improved biocide retention, The examiner acknowledges Molloy does not appear to recognize enhanced retention at larger particle sizes. In response, 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). Molloy clearly indicates the mean particle size may be from about 0.1 to about 50 µm (paragraph 54). Accordingly, Molloy provides a strong suggestion to use particles with a mean size as large as about 50 µm, which overlaps with or is near the currently claimed range. Moreover, Kanda has been optionally applied to provide further evidence that the particle size of insecticidal and fungicidal particles incorporated in adhesives, glue, wood products and water-based compositions may suitably be in the range of 1 to 250 µm. See Kanda (column 1, lines 6-13 and 64-68; column 2, lines 3-20 and 57-61; column 3, lines 64-68; column 4, lines 10-27 and 60-63; column 5, lines 19-33; Examples 5 and 6). A prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Thus Kanda suggests particle sizes well within the claimed range may be used to provide effective insecticidal and/or fungicidal properties to adhesives, glue, wood products and water-based compositions. In view of the particle sizes suggested by Kanda, naturally the person having ordinary skill in the art would have engaged in routine experimentation to select suitable particle sizes within this range to provide effective insecticidal and/or fungicidal properties.
Applicant argues Gottsche teaches smaller particles are preferred. In response, the primary reference is to Molloy. Gottsche was only relied upon for teaching suitable antifreeze agents as the antifreeze agents of Molloy.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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