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 .
DETAILED ACTION
This action is in response to papers filed February 18, 2026. Applicant’s response to the restriction/election requirement filed on December 19, 2025 has been entered. Claims 8, 14-16, and 18-20 have been canceled; and claims 21-27 have been newly added. Claims 1-7, 9-13, 17, and 21-27 are pending in the application.
Priority
Applicant’s claim for the benefit as a division of prior-filed U.S. Patent Application No. 16/674,528, filed November 5, 2019, which claims the benefit as a division of prior-filed U.S. Patent Application No. 15/143,316, filed April 29, 2016, which claims the benefit of prior-filed U.S. Provisional Patent Application No. 62/265,822, filed December 10, 2015 under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions - Noncompliant
Applicant’s election without traverse of Group I, claims 1-8, is acknowledged. Applicant’s elections of i) “bismuth carboxylate” as the species of metal carboxylate, and ii) “alkyl polyethoxylate” as the species of surfactant are also acknowledged. The Examiner has determined that claims 17-21 read on the elected subject matter.
Applicant’s reply filed February 18, 2026 is non-compliant. Applicant failed to elect a single disclosed species of hydrocarbonaceous solvent, as required. However, as a courtesy, and in the interest of furthering compact prosecution, Applicant’s response has been entered. Nevertheless, Applicant should make this required species election for hydrocarbonaceous solvent in their next response.
Further, in view of the presently amended claims filed February 18, 2026, Applicant is further required under 35 U.S.C. 121 to further elect the following species to which the claims shall be restricted if no generic claim is finally held to be allowable:
1. A single disclosed species of further constituent (e.g. a biocidal metal fire retardant, a copper-based preservative, or a surfactant).
It appears Applicant has pre-emptively elected “surfactant” as the species of further constituent in the response filed February 18, 2026.
Accordingly, claims 9-13, 17, and 21-24 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected subject matter, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on February 18, 2026. Claims 1-7 and 25-27 are under examination.
Abstract
The abstract of the disclosure is objected to for the following:
1. The abstract should be a concise summary of the key technical aspects of the invention which are new to the art to which the invention pertains. If the invention pertains to a composition, the abstract should recite the key requisite ingredients. If the invention pertains to a method, the abstract should recite the key requisite active steps.
2. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. Most of the current abstract, however, is doing this very thing. The abstract is advertising the merits and speculative applications of the invention rather than disclosing the invention itself.
Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112(b)
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 2-6 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.
Claim 2, which depends from claim 1, stipulates in a wherein clause that “the selected metal is in Period 3, Period 4, or Period 5 of the Periodic Table of the elements”. Claim 1, however, specifies that the metal of the metal carboxylate is bismuth. Claim 2 effectively renders bismuth merely an optional metal “selection”. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 3, which depends from claim 1, stipulates that “the wood is Southern Yellow Pine”. There is insufficient antecedent basis in the claim for any wood. Claim 1 is directed to a composition comprising a bismuth carboxylate in which the carboxylate anion includes 6-18 carbons. That’s it. There is no wood.
Claim 4, which depends from claim 1, stipulates that “the marker is dispersed within the wood”. Again, there is insufficient antecedent basis in the claim for any wood. Claim 1 is directed to a composition comprising a bismuth carboxylate in which the carboxylate anion includes 6-18 carbons. That’s it. There is no wood.
Claim 5, which depends from claim 1, stipulates that the marker is selected from those recited, which include bismuth carboxylate, and other metal carboxylates that are not bismuth carboxylate. Claim 1, however, specifies that the metal of the metal carboxylate is bismuth. Claim 5 effectively renders bismuth merely an optional metal. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 6, which depends from claim 1, stipulates that “the selected metal is a rare earth metal or a mixture of rare earth metals”. Claim 1, however, specifies that the metal of the metal carboxylate is bismuth, which is not even a rare earth element at all. One of ordinary skill in the art cannot make heads or tails out if the claim, and thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Obviousness-Type Double Patenting
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7 and 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-18 of U.S. Patent No. 10,495,626.
Applicant’s elected subject matter is directed to a composition comprising a petroleum distillate, a bismuth carboxylate, and an alkyl polyethoxylate surfactant; wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth, and wherein the composition can further comprise a biocidal metal, e.g. copper.
Claims 1-5 and 7-18 of U.S. Patent No. 10,495,626 disclose a composition comprising a metal carboxylate and a surfactant, which can be a bismuth carboxylate and an alkyl polyethoxylated, respectively.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent disclose that the metal carboxylate can be a bismuth carboxylate and that the carboxylate can have 6-18 carbon atoms, i.e. the bismuth carboxylate can contain about 6-18 moles of carbon per mole of bismuth.
Claim Rejections - 35 USC § 103 (I-III)
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 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.
I. Claims 1-7, 25, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Whitman et al. (U.S. Patent Application Pub. No. 2011/0312096).
I. Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising a bismuth carboxylate and a surfactant; wherein the carboxylate anion includes about 6 to about 18 carbon atoms, and wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth.
I. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Whitman et al. disclose an indicator composition comprising e.g. a bismuth compound, a solvent, and a surfactant; wherein the bismuth compound can be e.g. a bismuth carboxylate, and the solvent can be a hydrocarbon such as e.g. toluene (i.e. a petroleum distillate); wherein the composition is coated onto a substrate and changes color in response to steam exposure (abstract; paragraphs 0004-0006, 0054, 0055, 0076, and 0077).
I. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Whitman et al. do not explicitly anticipate the presently claimed subject matter with one specific example or preferred embodiment. However, the Whitman et al. disclosure is sufficient to render the presently claimed subject matter prima facie obvious within the meaning of 35 USC 103.
I. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Whitman et al., outlined supra, to devise Applicant’s claimed composition.
Whitman et al. disclose an indicator composition comprising e.g. a bismuth carboxylate, a surfactant, and a hydrocarbonaceous solvent, e.g. toluene (i.e. a petroleum distillate); wherein the composition is coated onto a substrate and changes color in response to steam exposure. Since Whitman et al. disclose that the bismuth carboxylate can be e.g. bismuth 2-ethylhexanoate, which has the chemical formula C24H45BiO6, and thus contains 24 moles of carbon per mole of bismuth, and which 2-ethylhexanoate anion itself has 8 carbon atoms; one of ordinary skill in the art would thus be motivated to employ bismuth 2-ethylhexanoate as the bismuth carboxylate compound, with the reasonable expectation that the resulting composition will successfully serve as an indicator that changes color upon steam exposure.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
II. Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Whitman et al. (U.S. Patent Application Pub. No. 2011/0312096), in view of Anonymous (Dow Chemical [online]; 2002).
II. Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising a bismuth carboxylate and a surfactant; wherein the carboxylate anion includes about 6 to about 18 carbon atoms, wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth, and wherein the surfactant can be an alkyl polyethoxylate.
II. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Whitman et al. disclose an indicator composition comprising e.g. a bismuth compound, a solvent, and a surfactant; wherein the bismuth compound can be e.g. a bismuth carboxylate, and the solvent can be a hydrocarbon such as e.g. toluene (i.e. a petroleum distillate); wherein the composition is coated onto a substrate and changes color in response to steam exposure (abstract; paragraphs 0004-0006, 0054, 0055, 0076, and 0077).
Anonymous discloses that nonylphenol polyethoxylated surfactants, such as TERGITOL NP-4 and NP-6, which are oil-soluble; readily solubilize kerosine, mineral oil, and aliphatic hydrocarbons to form emulsions with water; act as a defoamer, and can be employed in coating compositions.
II. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Whitman et al. do not explicitly disclose that the surfactant can be an alkyl polyethoxylate. This deficiency is cured by the teachings of Anonymous.
II. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Whitman et al. and Anonymous, outlined supra, to devise Applicant’s claimed composition.
Whitman et al. disclose an indicator composition comprising e.g. a bismuth carboxylate, a surfactant and a hydrocarbonaceous solvent, e.g. toluene (i.e. a petroleum distillate); wherein the composition is coated onto a substrate and changes color in response to steam exposure. Since Whitman et al. disclose that the bismuth carboxylate can be e.g. bismuth 2-ethylhexanoate, which 2-ethylhexanoate anion includes 8 carbon atoms; and since Anonymous discloses that nonylphenol polyethoxylated surfactants, such as TERGITOL NP-4 and NP-6, which are oil-soluble; readily solubilize kerosine, mineral oil, and aliphatic hydrocarbons to form emulsions with water; act as a defoamer, and can be employed in coating compositions; one of ordinary skill in the art would thus be motivated to employ nonylphenol polyethoxylated surfactants in the Whitman et al. composition, with the reasonable expectation that the resulting composition will successfully function as a color-changing indicator in response to steam exposure.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
III. Claims 1-7 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Cavallin et al. (U.S. Patent Application Pub. No. 2012/0171470).
III. Applicant Claims
Applicant’s elected subject matter is directed to a composition comprising a bismuth carboxylate and a surfactant; wherein the carboxylate anion includes about 6 to about 18 carbon atoms, wherein the bismuth carboxylate contains about 6-24 moles of carbon per mole of bismuth, and wherein the surfactant can be an alkyl polyethoxylate
III. Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Cavallin et al. disclose a composition comprising a “metal drier”, a solvent, and a surfactant; wherein the “metal drier” can be e.g. bismuth octoate (i.e. a bismuth carboxylate), and the surfactant can be e.g. an alkyl phenol ethoxylate.
III. Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Cavallin et al. do not anticipate the instantly claimed subject matter with one specific example or preferred embodiment. However, the Cavallin et al. disclosure is sufficient to render the claimed subject matter prima facie obvious within the meaning of 35 USC 103.
III. Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to employ the teachings of Cavallin et al., outlined supra, to devise Applicant’s presently claimed composition.
Cavallin et al. disclose a composition comprising a “metal drier”, a solvent, and a surfactant; wherein the surfactant can be e.g. an alkyl phenol ethoxylate, and wherein the composition is useful in coating a variety of substrates. Since Cavallin et al. expressly disclose that the “metal drier” can be bismuth octoate (i.e. a bismuth carboxylate), and since one of ordinary skill in the art would know that bismuth octoate, i.e. bismuth 2-ethylhexanoate, which carboxylate anion includes 8 carbon atoms, and which has the chemical formula C24H45BiO6, and thus contains 24 moles of carbon per mole of bismuth; one of ordinary skill in the art would thus be motivated to employ bismuth octoate as the “metal drier”, with the reasonable expectation that the resulting composition will be useful in coating a variety of substrates.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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