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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/09/2026 has been entered.
Applicants’ arguments, filed 04/09/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “based on the combined weight of the biocide composite, the thermoplastic and the embrittling agent” (emphasis added). It is understood that “the biocide composite” is a typo of “the biocide” because “the biocide composite” comprises a biocide, a thermoplastic and an embrittling agent.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 4-5 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.
Instant claim 4 “wherein said at least one non-biocidal solid is; i) a water-insoluble thermoplastic having a glass transition temperature (Tg) of 45°C or more, or a Vicat softening temperature (VST) of 45°C or more, and ii) an embrittling agent.” This is indefinite because it is unclear if the “water-insoluble thermoplastic” is meant to limit the thermoplastic recited in instant claim 1, or if the “water-insoluble thermoplastic” is in addition to the thermoplastic recited in claim 1. For the purposes of examination, a water-soluble thermoplastic having a glass transition temperature or Vicat softening temperature as claimed will be interpreted to read on the thermoplastic recited in instant claims 1 and 4.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-5, 9 are rejected under 35 U.S.C. 102(1)(a) as being anticipated by Van Voris et al. (WO 02/43487 A2, publication date 06/06/2002; hereinafter Van Voris), as evidenced by Bazhenov (Fillers: their effect on the failure modes of plastics. In: Pritchard, G. (eds) Plastics Additives. Polymer Science and Technology Series, vol 1. Springer; hereinafter Bazhenov; cited previously).
Van Voris discloses premixes prepared according to example 8 are melt extruded (i.e, hot melt mixing according to line 8 of page 49 of the instant specification) and cut into pellets (i.e., granules) [lines 22-25 of page 40]). Example 8 comprises 10 wt% lambda cyhalothrin (i.e., insecticide) and about 11.3 wt% of lamp carbon black and is prepared according to example 7 (see [lines 4-7, page 40]). Example 7 is prepared with lambda cyhalothrin, lamp black carbon and low density polyethylene (i.e., water insoluble thermoplastic having glass transition temperature of 45 deg. C or more or a Vicat softening temperature of 45 deg. C or more according to instant claim 5) [p. 39, lines 15-29]. According to Van Voris “[o]nly sufficient carbon black (filler) is used to produce a friable mixture” [p. 12, lines 30-31].
According to Bazhenov, “fillers also lead to dramatic reductions in the fracture strain of the polymer [1] under tensile load and embrittlement” (see Bazhenov at the second sentence of page 1).
The prior art anticipates instant claims 1, 2, 4-5, 9 because it discloses a granules of a composite comprising 10 wt. % insecticide (lambda cyhalothrin; biocide), 78.7 wt. % thermoplastic (polyethylene), and 11.3 wt. % embrittling agent (lamp carbon black).
Claim Rejections - 35 USC § 103
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.
1) Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Van Voris et al. (WO 02/43487 A2, publication date 06/06/2002; hereinafter Van Voris) as applied to claim 1, 2, 4-5, 9 above.
Van Voris does not anticipate instant claim 3 because it does not discloses one example or embodiment comprising an insecticide and a fungicide.
Van Voris does discloses that “[i]n addition to pesticides which repel and prevent penetration by insects, it may be desirable to include one or more fungicides in the barrier” [p. 24, lines 28-29], suitable fungicides include triazole derivatives (i.e., an azole) [p. 25, line 5].
Given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of Van Voris. MPEP 2143 and 2144.06(I). Therefore it, would have been obvious for one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the composition of example 11, as discussed above, to further comprise an azole fungicide.
2) 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, relates to a composition comprising a polymer and one or more biocides [abstract]. Uhr ‘324 discloses an example composition comprising styrene-acrylonitrile (i.e., instant claims 5 and 27) and diuron (i.e., biocide) [0121]. The styrene-acrylonitrile and biocide was heated and extruded (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 affects 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.
Additionally, the instantly claimed ranges for D10 and D90 (i.e., at least 5 microns and 500microns 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.
Lastly, 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 on biocide, a thermoplastic and an embrittling agent. Wherein each component is present within the instantly claimed amounts. Wherein the thermoplastic is a styrene acrylonitrile copolymer and has a Tg within the instantly claimed range. Wherein the particle size of the powder is within the instantly claimed ranges. 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 pages 8-9 of their Remarks, Applicant asserts that Uhr ‘324 does not discloses a composite which is defined as, for example, two or more ingredients after hot melt mixing (see instant specification at [0220-0221]) that comprises an embrittling agent. Applicant argues that the compositions of Uhr ‘324 are different from the inventive compositions because the embrittling agent is added after milling.
This argument is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., embrittling agent added to composite before milling) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
2. On pages 9-10 of their Remarks, Applicant argues that it would not have been obvious to reached the claimed amounts of embrittling agent through routine optimization in view of the allegedly unexpected results. Applicant cites Figure 8, Sample 14 and Sample 8 of the instant disclosure for support.
This argument is not persuasive. Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
However, the Examiner will respectfully note that overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the prior art, (ii) the results must truly be unexpected and (iii) the claims must be commensurate in scope. MPEP §716.02. The burden rests with Applicant to establish results are unexpected and significant. MPEP §716.02(b). Applicant's showing of allegedly unexpected results does not satisfy any of these requirements.
i. Applicant has not compared the results to the closest prior art. The closest prior art is Example 11 of Van Voris, as discussed above. MPEP 716.02(e).
ii. With respect to the results, improved friability with the addition of a filler such as ground minerals does not appear to be truly unexpected in view of the prior art. For example, Bazhenov (Fillers: their effect on the failure modes of plastics. In: Pritchard, G. (eds) Plastics Additives. Polymer Science and Technology Series, vol 1. Springer) discloses “[t]hermoplastic polymers filled with rigid inorganic particles display higher values of Young's modulus, better thermal stability, and lower wear under friction than do unfilled polymers. Unfortunately, fillers also lead to dramatic reductions in the fracture strain of the polymer.” In other words, one of ordinary skill in the art would have expected thermoplastics to become more brittle (dramatic reduction in fracture strain) with the addition of fillers. Additionally, one of ordinary skill in the art would have appreciated that brittle polymers break more easily, and therefore have increased friability.
Finally, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support" (see MPEP 716.02(d) quoting In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)). In the present case the evidence demonstrate increase friability for compositions comprising on polymer and on embrittling agent. Additionally, there is not an explanation as to why these two examples reasonably represent all thermoplastics and all embrittling agents. Similarly, the evidence provides compositions comprising 20% w/w biocide and the claims recite 7-30% biocide. Accordingly, the claims are not commensurate in scope with the objective evidence.
3. On page 12 of their Remarks, Applicant argues that the Uhr provides for
inclusion of finely ground minerals, they are not included in the biocide composite as claimed and these formulations further teach away from a composition having the constituents in the weight percentages provided in amended claim 1.
These arguments are not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., embrittling agent added to composite before milling) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In the present case Uhr ‘324 discloses a biocidal substance comprising polymers and biocides [abstract] and that extenders, such as alumina, can “be present in the biocidal substance” [0032]. Therefore, Uhr ‘324 teaches the combination of thermoplastic polymer, biocide and embrittling agent as instantly claimed.
In regard to the assertion that Uhr ‘324 teaches away from the instantly claimed range of embrittling agent, the prior art’s mere disclosure of more than one alternative does not constitute teaching away from any of these alternative because such disclosure does not criticize, discredit or otherwise discourage the solution. See MPEP 2123. There is nothing directly stated in Uhr ‘324 would have discredited or discouraged the solution as claimed therefore this argument has not been found persuasive.
4. Regarding the double patenting rejections, as of 02/25/2026 the copending application has been abandoned and so the double patenting rejections are moot.
Conclusion
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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