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 .
Response to Amendment
This office action is in response to the amendment submitted on 29 June 2026. After entry of the amendments claims 1-7, 9-10, 12-13, 17, 19-24, 27-29, 32-33, 36-38, 40, 43-50 are currently pending in the application.
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 (or as subject to pre-AIA 35 U.S.C. 102) 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.
Claims 1, 9-10, 21-22, 27, 32-33, 36-38 and 49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Publication No. WO 2018/183615 A1.
The reference teaches, in paragraphs 1 and 2 on page 3, a wood preservative composition comprising 23% polyurethane polymer solids, 23% DCOIT and 54% Aromatic 200.
The instant claims are met by the reference.
As for claim 1, the polyurethane meets the polymeric resin and the DCOIT meets the 4,5-dichloro-2-octylisothiazol-3-one (DCOI). The reference teaches 1:1 which falls within the claimed range.
As for claim 2, the Aromatic 200 is believed to possess a solubility in the claimed range.
As for claim 9, the reference teaches 1:1 which falls within the claimed range.
As for claim 10, the reference teaches 1:1 which falls within the claimed range.
As for claim 21, the reference teaches Aromatic 200 which is a hydrocarbon solvent.
As for claim 22, the reference teaches Aromatic 200 which is a hydrocarbon solvent.
As for claim 27, the reference appears to have flash point that is at least 50 degrees Celsius.
As for claim 32, the Aromatic 200 is believed to possess a solubility in the claimed range.
As for claim 33, the reference teaches the use of the composition to treat wood (see for instance page 6 and the claims).
As for claims 36 and 37, the reference teaches a treated wood product (see page 6 and the claims).
As for claim 38, as the composition may be the same this property is believed to be possessed by the wood product of the reference.
As for claim 49, the reference teaches Aromatic 200 which is a hydrocarbon solvent.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 3-7, 17, 40 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over International Publication No. WO 2018/183615 A1.
The reference teaches, in paragraph 2 of page 6, a composition comprising 100 ppm to 40,000 wood preservative (DCOIT). The polymer solids (polyurethane) is from 10% to 40%, preferably the polymer solids to biocide ratio is from 2:1 to 1:2 more preferably from 2:1 to 1:2.
The instant claims are obvious over the reference.
As for claims 3-7, the reference teaches an amount that overlaps the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 17, the composition may further contain carnauba or polyethylene waxes (see page 4, line 9+).
As for claim 40, it is within the level of ordinary skill to treat any type of wood product in need of treatment.
As for claim 50, as it may contain various hydrocarbons such as Aromatic 200 it is believed to be an example of an oil-borne preservative.
Claims 1, 9-10, 33, 36-38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Ashmore et al (US Patent No. 7,740,906 B2).
The reference teaches, in claim 5, a composition which comprises 0.05% to 6% polymer solids, 0.01% to 1% of said at least one surfactant, and 500 ppm to 6000 ppm 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one. Based on Table 1, the resins include acrylic resins. Column 6, lines 1+, teaches an aqueous polymer composition used to fix organic preservatives in wood which preferably contains from 100 ppm to 10,000 ppm of an organic wood preservative, such as a halogenated isothiazolone biocide, a halogenated carbamate or an azole fungicide, more preferably from 200 ppm to 6,000 ppm, and most preferably from 300 ppm to 5,000 ppm. Preferably, the composition contains from 0.001% to 3% surfactant, more preferably from 0.005% to 1%, and most preferably from 0.01% to 0.7%. In one embodiment of the invention, the surfactant level is from 0.01% to 0.4%. Preferably, the polymer solids content of the composition is from 0.01% to 10%, more preferably from 0.02% to 6%, and most preferably from 0.03% to 4%. Preferably, the polymer solids to biocide ratio is from 1:1 to 20:1, more preferably from 2:1 to 10:1.
The instant claims are obvious over the reference.
As for claim 1, the amount of the 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one overlaps the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05. The resin meets the solvent borne resin and the ratio of the DCOI to the polymer overlaps the claimed ratios and overlapping ranges are deemed to be obvious.
As for claim 9, the ratio of the DCOI to the polymer overlaps the claimed ratios and overlapping ranges are deemed to be obvious.
As for claim 10, the ratio of the DCOI to the polymer overlaps the claimed ratios and overlapping ranges are deemed to be obvious.
As for claim 33, the reference teaches the treatment of wood with the composition (see the examples).
As for claim 36, the reference teaches the treatment of wood with the composition (see the examples).
As for claim 37, the reference teaches the treatment of wood with the composition (see the examples).
As for claim 38, as the composition may be the same this property is believed to be possessed by the wood product of the reference.
As for claim 40, it is within the level of ordinary skill to treat any type of wood product in need of treatment.
Response to Arguments
Applicant’s arguments with respect to the previous claim rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 12-13, 19-20, 23-24, 28-29, 43-48 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can 18be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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July 15, 2026
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