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 .
Applicants’ arguments, filed 08/17/2026, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 – New by Amendment
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 1-7, 9 and 27 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.
The term “unified solid form” in claim 1 is a relative term which renders the claim indefinite. The term “unified solid form” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what is meant by this term such that the artisan would reasonably appreciate the metes and bound of what is encompassed by it. It is not clear how far from the base composite structure one can deviate and still meet the requirement of the claim. For the purposes of examination “unified solid form” will be interpreted as a solid material comprising each claimed element. This interpretation appears to be supported by the instant specification on page 24, lines 5-6: “Within the finished composite, the individual ingredients are associated together in a unified form.”
Claim Rejections - 35 USC § 103 – New by Amendment
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-7, 9 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Uhr et al. (US 2012/0071324 A1, publication date 03/22/201; hereinafter Uhr ‘324; cited previously) in view of Van Voris et al. (WO 02/43487 A2, publication date 06/06/2002; hereinafter Van Voris)
Regarding instant claims 1, 4-7, 9 and 27, Uhr ‘324 relates to a composition comprising a polymer and one or more biocides [abstract]. Uhr ‘324 discloses an example composition comprising styrene-acrylonitrile (i.e., water insoluble according to instant claims 5 and 27) and diuron (i.e., biocide) [0121]. The styrene-acrylonitrile and biocide was heated and extruded at a temperature of 200 deg. C (i.e., hot melt mixing according to instant specification at line 8, page 49) [0121]. “The active ingredient content of the pelletized extrudate was 25.5% by weight” (i.e., 74.5 wt. % thermoplastic polymer) [0122] and the glass transition temperature was 58°C (i.e., instant clam 4) [0122]. The composition was finely ground (i.e., powder; instant claim 9) [0125] such that the particle size was measured to be: D90 = 45.6µm and D10 = 10.2 µm (i.e., instant claim 7) [0126]. Uhr ‘324 also discloses that “[f]or controlling the release kinetics, it is also possible for inorganic extenders, such as … aluminum oxide . . . to be present in the biocidal substance” (i.e., alumina; embrittling agent according to instant claim 6) [0032]. According to Uhr ‘324 the “the use of the particulate biocidal substances or of the biocidal compositions of the invention [is] for protecting technical materials, and also provides technical materials comprising the biocidal compositions or particulate biocidal substances of the invention” [0111]. Technical materials are, for example, building materials, wood, woodbased materials, wood-plastic composites” [0113].
Uhr ‘324 does not disclose an amount of embrittling agent (e.g., aluminum oxide).
Van Voris relates to a “multi-layer wood pest barrier having a prolonged lifetime that can be as long as the life of a building or structure to be protected. The lifetime protection is achieved by binding at least one pesticide within a continuous or discontinuous polymer matrix layer” … The release rate of the pesticide from the matrix can be controlled by the use of a carrier such as carbon black” [abstract]. More specifically “The inclusion of the binding filler and/or carrier permits greater amounts of insecticide for a given release rate or permits a lower release rate for a given amount of pesticide” [p. 12, lines 21-24]. Furthermore, according to Van Voris “alumina, silicoaluminate, hydroxyapatite and combinations thereof may be comparable to carbon for binding bioactive chemicals” (i.e., comparable effects on release rate) [p. 12, lines 26-28]. Finally, Van Voris discloses that “[o]verall, in order to maintain an equilibrium concentration of pesticide in the exclusion zone for an extended period of time, the composition of this embodiment of the invention should comprise from about 70 to about 95 parts by weight of polymer, from about 0 to about 30 parts by weight of carbon [binder filler/carrier carbon black], and from about 5 to about 30 parts by weight of pesticide” [p. 15, lines 26-30].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have to have combined the amounts of binder filler/carrier of Van Voris with the biocidal thermoplastic disclosed by Uhr ‘324. One would have been motivated to make this combination because Van Voris discloses 0-30% w/w is an appropriate range for fillers that effect release kinetics of an insecticide in a polymeric composition for the protection of building materials. One would have had an expectation of success because Van Voris teaches carbon black is expected to have a comparable effect on the release of the biocide as alumina, a filler (extender) desired by Uhr ‘324. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
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(I). In the present case, the prior art teaches 25.5% w/w biocide, 0-30% alumina (embrittling agent) and the remainder thermoplastic polymer (i.e., 44.5-74.5% w/w). Therefore, the instantly claimed ranges of 7-30 %w/w biocide, 45-85% w/w thermoplastic and 4-45% w/w embrittling agent overlap with the ranges disclosed in the prior art and a prima facie case of obviousness exists.
Also, the instantly claimed ranges for D10 and D90 in instant claim 1 (i.e., at least 5 microns and 500microns or less, respectively) and instant claim 2 (i.e., at least 5 microns and 400 microns or less, respectively) overlap with the values of the prior art (D90 = 45.6µm and D10 = 10.2 µm) and so a prima facie case of obviousness exists for each range.
Also, the instantly claimed range of Tg temperature (45 deg. C or more) overlaps with the value of the prior art (58 deg. C) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious for one of ordinary skill in the art, at the time of filling, to have formulated a powdered composition comprising at least one biocide, a thermoplastic and an embrittling agent (alumina), wherein each component is present within the instantly claimed amounts and the particle sizes are within the instantly claimed range (instant claims 1, 6, 7 and 9). Wherein the composite is a hot melt mixed (hot melt extruded) composite. The composition of the prior art is a unified solid form because it comprises the biocide, the thermoplastic and the embrittling agent together in a solid form. Wherein the thermoplastic is a styrene acrylonitrile copolymer (water insoluble) and has a Tg within the instantly claimed range (instant claims 4, 5, and 27).
Since the prior art composition contains substantially the same components, i.e., biocide, a thermoplastic and an embrittling agent (e.g., alumina), in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as being achieving higher biocide retention in a glueline-treated glued-wood product after hot-pressing or hot-pressing and block-stacking in comparison to a wood protectant composition comprising the at least on biocide alone.
Regarding instant claims 2 and 3, Uhr ‘324 discloses that “[b]iocides may be, for example, fungicides, algicides, insecticides, acaricides, nematicides, radicides and herbicides or mixtures thereof” [0036]. Wherein the fungicides include azaconazole [0040] and insecticides include bifenthrin (i.e., a pyrethroid according to instant specification at page 29, line 10) [0041].
The examiner is interpreting instant claim 3 as requiring both an insecticide and fungicide to be present in the composition.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the fungicides and insecticides disclosed by Uhr ‘324 with the biocidal composition disclosed at paragraphs 121 through 126 of Uhr ‘324. One would have been motivated to make this combination because Uhr ‘324 suggests mixtures of these biocidal compounds. One would have had an expectation of success because Uhr ‘324 discloses these are appropriate biocides to use in the disclosed compositions. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising at least one biocide, a thermoplastic and an embrittling agent, as discussed above, wherein the biocide comprises azaconazole as fungicide and a pyrethroid as an insecticide.
Response to Arguments
1) On page 11 of their Remarks, Applicant argues that “Uhr fails to provide that that the at least one biocide and the at least one non-biocidal solid comprising a combination of a thermoplastic and an embrittling agent are melt-mixed together in unified solid form.”
This argument is not persuasive. The melt extrusion of Uhr ‘324 reads on the hot melt extrusions, i.e., hot melt mixing, of the instant application. Specifically, Uhr ‘324 discloses “2.00 kg/h of a polystyrene (PS, Polystyrene 145D from BASF SE) and 0.857 kg/h of diuron were metered continuously into the intake hopper of a twin-screw extruder of type ZSK34 (in-house design, Bayer Technology Services GmbH) and jointly melted. The speed of the extruder was 110 rpm, the heating temperature was 200°C., and the emerging extrudate had a temperature of 194° C. The extrudate was
cooled with an air lance and then pelletized” (see Uhr at [00123]). On the other hand, the instant specification discloses “The methods used in the present invention are known and include but are not limited to, for example thermomechanical processes broadly categorized as hot melt mixing and including heated batch mixing, solid dispersion kneading, heat compounding, hot melt extrusion, etc.,” (see instant specification at page 49, lines 5-10). On page 50, the instant specification exemplifies this general method:
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Therefore, the product taught by Uhr ‘324 and Van Voris is “melt-mixed” because the instant specification classifies hot melt extrusion as melt-mixing, and because the prior art methods read on the exemplified methods in the instant application.
2) On pages 11 (and 9-10) of their Remarks, Applicant argues that “as discussed with respect to the rejection under 35 U.S.C. § 102, Van Voris fails to cure” the deficiencies regarding the hot melt mixing methods. The pertinent arguments appear to be from paragraphs 2 and 3 of page 10. Specifically, applicant argues “Melt-extruding a pre-existing carrier/biocide mixture into a polymer film [as discloses by Van Voris] does not constitute melt-mixing the biocide, thermoplastic, and embrittling agent together simultaneously into a unified solid form as required by amended claim 1. In fact, the physical structure of the resulting composition further highlights the differences between the processes of formation.”
This argument is not persuasive. Example 11 on page 40 of Van Voris discloses melt-extruding the mixtures of low density polyethylene, carbon black and lambda cyhalothrin discloses in Examples 8 (page 40) and 7 (page 39). Even though the components are pre-mixed, the melt extrusions nevertheless reads on the instantly claimed melt-mix according to the instant specification. Beyond defining melt extrusion as a type of melt mixing and disclosing general methods of melt-mixing that do not exclude pre-mixing (see instant specification at page 49, lines 5-10 and page 50 as discussed above), the instant specification also discloses “For the hot melt mixing process, the ingredients may be combined in any order. For example, the thermoplastic and/or the biocide may be melted before or after combining these ingredients” (see instant specification at page 51, lines 24-25).
Furthermore, the Examiner respectfully notes that the physical differences allegedly resulting from melt extruding a pre-mix have not been substantiated by objective evidence. “Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” See MPEP 716.01(C)II. In fact, the specification appears to teach against this premise, disclosing: “ingredients may be combined in any order. For example, the thermoplastic and/or the biocide may be melted before or after combining these ingredients” (see instant specification at page 51, lines 24-25). Here the specification suggests that the mixing order is not critical to the invention, as long as the biocide, thermoplastic and embrittling agent are melt-mixed (e.g., hot melt extruded) together. In both cases, Uhr ‘324 and Van Voris discloses hot melt extruding (i.e., melt-mixing) the components of the compositions disclosed therein together (see Uhr ‘324 at paragraph 123 and Van Voris at page 40, Example 11).
Finally, and purely arguendo, "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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.). In this case, the prior art product appears to be the same or obvious as claimed, despite not teaching melt-mixing without premixing, insofar as the biocide, the thermoplastic and the embrittling agents of Uhr and Van Voris melt extruded together.
3) On page 11 of their Remarks, Applicant argues the prior art composition cannot inherently have the instantly claimed properties because “there are clear structural and physical distinctions between two compositions” because Van Voris and Uhr do not disclose the instantly claimed melt-mixing.
This argument is not persuasive for the reasons above and of record.
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 COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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