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 11/20/2025, 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 Rejections and/or objections not reiterated from previous office action are hereby withdrawn.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 § 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.
Claims 1-9 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).
Regarding instant claims 1, 4-6 and 9, Uhr ‘324 discloses a biocide polymer matrix comprising styrene-acrylonitrile (i.e., instant claims 5 and 27) and diuron (i.e., biocide) [0121]. Wherein “[t]he active ingredient content of the pelletized extrudate was 25.5% by weight” [0122] with a glass transition temperature of 58°C [0122]. The composition was finely ground (i.e., powder) [0125] such that the particle size was measured to be: D90 = 45.6µm and D10 = 10.2 µm [0126]. Uhr ‘324 also discloses that “[f]or controlling the release kinetics, it is also possible for inorganic extenders, such as natural finely ground minerals . . . to be present in the biocidal substance” (i.e., embrittling agent according to instant claim 6) [0032].
Uhr ‘324 does not anticipate the claims insofar as it does not disclose a single embodiment or example a composition comprising at least one biocide in the claimed amounts, a thermoplastic and an embrittling agent.
However, the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, at the time of filling, to have selected and combined known components for their established functions with predictable results by following the teachings of Uhr ‘324. MPEP 2143 and 2144.06(I).
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 instantly claimed range of biocide (6-50%) overlaps with the mount of biocide disclosed in the prior art (25.5% w/w) 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 composition comprising at least on biocide in the claimed amounts, a thermoplastic and an embrittling agent. Wherein the thermoplastic is a styrene acrylonitrile copolymer. Since the prior art composition contains substantially the same components, i.e., biocide, a thermoplastic and an embrittling agent (e.g., ground minerals), 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 has 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 on biocide in the claimed amounts, a thermoplastic and an embrittling agent, wherein the biocide comprises azaconazole as fungicide and a pyrethroid as an insecticide.
Regarding instant claim 8, Uhr ‘324 also discloses that “[f]or controlling the release kinetics, it is also possible for inorganic extenders, such as natural finely ground minerals . . . to be present in the biocidal substance” (i.e., embrittling agent according to instant claim 6) [0032].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have reached the claimed amounts through routine optimization. One would have been motivated to optimize the amounts of ground minerals, biocide and thermoplastics because one an artisan’s normal desire to improve upon what is already known. One would have had an expectation of success because Uhr ‘324 discloses the composition may comprise ground minerals, biocide and thermoplastics and teaches a wide range for the amount of biocide present in the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have to have formulated a biocide-composite comprising a biocide, a thermoplastic and an embrittling agent (ground minerals) within the claimed amounts.
Double Patenting – Non-Statutory
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9 and 12-31 of copending Application No. 17/358,250 (reference application).
The claims of ‘250 and the present application both claim a biocide-composite comprising at least one biocide and at least one non-biocidal solid selected from the group consisting of a combination of a thermoplastic and an embrittling agent [claim 1]. Wherein the biocide-composite comprises from about 7 to about 30 wt. % to biocide, from about 45 wt.% to about 85 wt. % thermoplastic and from about 4 wt. % to about 45 wt.% embrittling agent, based on the combined weight of the biocide, the thermoplastic and the embrittling agent [claim 1 and instant claim1 and 8].
Additionally, both the claims of ‘250 and the instant claims disclose the biocide comprises one or more insecticides, or one or more fungicides, or a combination thereof [claim 2 and instant claim 2]. Both the claims of ‘250 and the instant claims also disclose the non-biocidal solid is 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 embrittling agent [claim 4 and instant claim 4]. Finally, both the claims of ‘250 and the instant claims disclose the same embrittling agents [claim 6 and instant claim 6], the same particle size [claim 7 and instant claim 7] and the same solid and liquid formulations [claim 9 and instant claim 9].
With respect to instant claims 3, 5 and 27, the claims of ‘250 disclose suitable insecticides include neonicotinoids, suitable fungicides include azoles [claim 3] and suitable thermoplastic polymers include polyvinyl chloride [claim 5].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Therefore, it would have been obvious to have selected a neonicotinoid as the insecticide, an azole as the fungicide and a polyoxymethylene as the thermoplastic because the claims of ‘250 disclose they are suitable options.
Since the composition of the copending claims contains substantially the same components, i.e., biocide, a thermoplastic and an embrittling agent (e.g., ground minerals), 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
1) On pages 11 and 13 of their remarks, Applicant argues the addition of an embrittling agent would not have been obvious because Uhr ‘324 discloses ground minerals (i.e., embrittling agent) in the context release kinetics, not friability.
This argument is not persuasive. 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). In the present case the Uhr ‘324 discloses ground minerals can be added to control the release kinetics [Uhr ‘324, para. 32]. Thus, even though it is for a different reason, the prior art nevertheless suggest a composition with ground minerals, which the instant claims consider an embrittling agent.
Additionally, the claims recite a biocide-complex with improved retention of a biocide. This appears to be the same reason for which Uhr ’324 discloses a ground minerals (i.e., embrittling agents).
2) In the second paragraph on page 13 of their remarks, Applicant sates that a person of ordinary skill in the art would not be motivated to optimize a parameter if there is no evidence that the cited reference recognized that that particular parameter affected the result. Here, Applicant argues a skilled artisan would not have been motivated to optimize the parameter of the claimed embrittling agents because Uhr ‘324 does not teach, motivate or suggest ground minerals as embrittling agents, only disclosing them in the context of release kinetics
This argument is not persuasive. 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). In the present case the Uhr ‘324 discloses ground minerals can be added to control the release kinetics [Uhr ‘324, para. 32]. Thus, one of ordinary skill in the art would have been motivated to optimize this parameter because it affects the release kinetics.
3) In the paragraph spanning pages 11 and 12 of their remarks, applicant argues that the addition of an embrittling agent yields an unexpected and significant increase in friability, allowing milling at ambient temperature without significant heating or sieve blockage. For support applicant cites Figure 8, specifically samples 14 and 8 of the instant specification.
This argument is not persuasive. Uhr ‘324 discloses ground minerals can be added to control the release kinetics [Uhr ‘324, para. 32]. Thus, even though it is for a different reason, the prior art nevertheless suggest a composition with ground minerals, which the instant claims consider an embrittling agent. Therefore, the prior art would have inherently possessed the properties alleged to be unexpected by applicant.
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 the polymers and embrittling agents instantly claimed. Similarly, the evidence provides compositions comprising 20% w/w biocide and the claims recite 6-50% biocide. Accordingly, the claims are not commensurate in scope with the objective evidence.
4) On page 12, paragraphs 2-4, of their remarks, Applicant argues that unexpected retention of biocide after hot pressing and after hot pressing and simulated block stacking. Applicant cites Figure 11 for support. The results displayed by Figure 11 are from Example 10, pages 90-92 in the instant specification as originally filed.
This argument is not persuasive. To begin Figure 11 does not demonstrate improved retention for all compositions will the addition of an embrittling agent. For example, Sample 24 comprising 5% w/w embrittling agent results in lower retention than comp 16, which does not comprise an embrittling agent. Additionally, while Example 10 compares compositions with and without an embrittling agent, it does not hold the polymer constant in these comparisons. As a result, the Examiner can not determine if the changes to retention are the result of adding an embrittling agent, or the result of changing the polymer. For, example Applicant states “Samples 25 and 26 gave large improvements in recoveries compared to Comp 16, especially after simulated block stacking” [p. 12, penultimate paragraph]. Because “Comp 16” and “Samples 25 and 26” differ by both the presence of an embrittling agent and the polymer, it is unclear what is causing the improved retention. The examiner respectfully notes that one result of this, is that the broad recitation of thermoplastics in the independent claim is not commensurate in scope with the evidence provided because it is not clear if all polymers provide the alleged unexpected results.
The burden is on applicant to establish that the results are in fact really unexpected and of statistical and practical significance. Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). See also MPEP § 716.02. In the present case the results appear to be directly addressed by the prior art. Uhr ‘324 discloses ground minerals can be added to control the release kinetics [Uhr ‘324, para. 32]. Thus, adjusting the release of the biocide through ground minerals is an optimizable parameter and entirely within the scope of Uhr ‘324, not an unexpected result.
Additionally, 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 improved retention for compositions four different polymers and on embrittling agent. Additionally, there is not an explanation as to why these examples reasonably represent all the polymers and embrittling agents instantly claimed. Similarly, the evidence provides compositions comprising 10% w/w and 20% w/w biocide and the claims recite 6-50% biocide. Accordingly, the claims are not commensurate in scope with the objective evidence.
5) On page 12 of their remarks, Applicant argues that “the claimed biocide-composites allow for the biocide application rates and/or loadings to be reduced and/or more consistent biocide retentions may be obtained in the different regions of hot-pressed or hot-pressed and block-stacked glued-wood products. (See specification, [0229])” [Remarks, p. 12, para. 3].
This argument is not persuasive. The instant specification reads “[m]oreover, the biocide-composites of the invention allow that the biocide application rates and/or loadings may be reduced and/or more consistent biocide retentions may be obtained in the different regions of hot-pressed or hotpressed and block-stacked glued-wood products” (emphasis added) [0229]. Thus, this does not appear to be disclosing an aspect of the invention which is critical to the biocide retention and loading rates.
6) on pages 12 and 13 of their remarks, Applicant argues the addition of ground minerals would not have been obvious because Uhr ‘324 only briefly mentions ground minerals and because Uhr ‘324 does not disclose any examples comprising ground minerals.
This argument is not persuasive. Uhr ‘324 desires the addition of ground minerals to control the release kinetics. One of ordinary skill in the art would have appreciated this as a desirable parameter to control and would have been motivate the add the ground minerals. Additionally, Uhr ’324 discloses “2.5g of the formulation from example 5 were incorporated into 100 g of an emulsion paint based on a straight acrylate” [0140]. Wherein the straight-acrylate-based paint used in examples 5 to 8 comprises Durcal 5 [0148]. DURCAL 5 by Omya is calcium carbonate (limestone) based mineral filler according to SpecialChem (Durcal 5, 06/26/2024 [retrieved 11/23/2026], https://www.specialchem.com/polymer-additives/product/omya-durcal-5).
7) Applicant argues that for the reasons above, the double patenting rejections should be withdrawn.
The instant claims continue to read on the copending claims and the double patenting rejections stand for the reasons above and of record.
Conclusion
THIS ACTION IS MADE FINAL. 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