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. 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 Amendment
The declaration under 37 CFR 1.132 filed 09 February 2026 is insufficient to overcome the rejection of claims 1, 3-14, 16 and 18-20 based upon Molloy in view of Gottsche as set forth in the last Office action because:
It is noted that the declaration is provided by Dr. Molloy. Use of “Molloy” below refers to the reference relied upon in the prior art rejection, US 2013/0090238 A1.
Dr. Molloy states an opinion that Molloy teaches away from the claims in indicating a preference for particles with a mean particle size of about 0.1 to about 20 µm, more preferably about 0.2 to about 5 µm, with an example of less than 5 µm, and a lower limit of particle size which is well below the claimed range. The examiner respectfully disagrees that Molloy teaches away from using larger particles because there is no teaching in Malloy that larger particles should not be used. Moreover, a reference may be relied upon for all that it reasonably teaches, including nonpreferred embodiments. See MPEP 2123. Molloy explicitly teaches that 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.
Dr. Molloy states an opinion that one having ordinary skill in the art would not look to Schrul because Schrul is directed to a coating composition rather than a glueline biocide, and further, Schrul is silent on particle size providing any biocidal effect. First, it is believed Dr. Molloy meant to reference Gottsche (US 2008/0090886 A1), which was applied in the previous office action. Schrul has not been applied. In response to the opinion, it is noted that the rejection is based on a combination of references. The primary reference to Molloy is directed to a glueline biocide. Molloy teaches the composition may be a suspension and may further comprise antifreeze agents (paragraph 49-50), but does not teach particular agents. Gottsche was only relied upon for suggesting ethylene glycol, propylene glycol or glycerol as suitable antifreeze agents in a water based composition containing biocides for wood (paragraphs 1, 15, 42, 100, 123 and 127). These are all water-miscible non-solvent liquids. The examiner maintains that the person of ordinary skill in the art would have used known suitable antifreeze agents in the composition of Molloy as suggested by the teachings of Gottsche.
Dr. Molloy states, with respect to unexpected results, it was not previously recognized in the art that particle size has an effect on biocide retention. Dr. Molloy points to Figures 3 and 4 of the current application. While the Figures do clearly show a general trend of increasing retention with increasing particle size, this trend starts below the claimed range of greater than about 50 µm. Accordingly, the evidence of unexpected results does not clearly correspond to the claimed range. Moreover, there are not very many data points in the Figures, which makes it difficult to determine a clear range of particle size over which unexpected retention occurs. Additionally, this evidence of unexpected results must be weighed against the evidence of obviousness. 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. The examiner acknowledges Molloy does not appear to recognize enhanced retention at larger particle sizes. However, the examiner’s position is that the above noted strong suggestion to use particles with a mean size as large as about 50 µm outweighs the above noted evidence of unexpected results because the evidence does not establish a clear range of particle sizes at which unexpected retention occurs.
Response to Arguments
Applicant's arguments filed 09 February 2026 have been fully considered but they are not persuasive.
Applicant argues Gottsche teaches away from aqueous suspensions. In response, the primary reference is to Molloy, not Gottsche. Molloy teaches the claimed suspension in water and further teaches it may 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. The examiner maintains that one having ordinary skill in the art would have used known antifreeze agents for water based compositions, as evidenced by Gottsche, in the water based composition of Molloy.
The arguments directed to the declaration are not persuasive for the reasons provided above in the response to the declaration.
Conclusion
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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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745