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 Applicant’s amendment filed August 4, 2026 in reply to the First Office Action on the Merits mailed May 4, 2026. Claims 1 and 5 have been amended; and claims 2, 4, 6, 8, 14-16, and 18-20 have been canceled. Claims 9-13, 17, and 21-24 have been withdrawn. Claims 1, 5, 7, and 25-27 are under examination.
Election/Restrictions
Applicant’s elections of i) “light petroleum distillate” as the species of hydrocarbonaceous solvent, and ii) “surfactant” as the species of further constituent are both acknowledged.
Withdrawal of Prior Claim Rejections - 35 USC § 112(b)
Claims 2, 4, and 6 have been canceled. Claims 1 and 5 have been satisfactorily amended to overcome the indefiniteness issues raised. Therefore, the 35 USC 112(b) rejection presented in the First Office Action on the Merits mailed May 4, 2026 is hereby withdrawn.
Abstract
The abstract of the disclosure remains 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 merely informs the reader that the invention is a metal carboxylate, which can be employed to mark wood. Metal carboxylates are not new to the art at all. Employing metal carboxylates to mark wood may be a new use for a known compound, but the abstract does not appear to highlight the novelty of the invention as the abstract discloses that the metal carboxylate can be detected by “known analytical methods”. Known analytical methods are not new to the art at all. The abstract does not appear to adequately inform the reader of the key technical aspects of the invention which are new to the art.
3. The abstract merely informs the reader in a rather generic manner that the inventive composition is a metal carboxylate with a carboxylate anion. This is rather redundant since one of ordinary skill in the art would readily recognize that a metal carboxylate will have an anionic carboxylate. The abstract says nothing further, such as the metal is bismuth and the carboxylate anion includes about 6 to about 18 carbons.
Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5, which depends from claim 1, stipulates that “the marker is bismuth carboxylate”. However, claim 1 is already limited to the marker being bismuth carboxylate. In fact, claim 1 further limits the bismuth carboxylate to one in which the carboxylate anion has about 6 to about 18 carbon atoms. Therefore, claim 5 fails to further limit claim 1 from which it depends.
Claim Interpretation
Claim 1 is directed to “a composition” which is “for marking wood”, stipulates that the composition comprises a metal carboxylate, and then recites in a wherein clause that “the marker is dispersed within the wood”. Since the claim is directed to a composition, and not to a method of using a composition, the claim is being interpreted as if the phrases “for marking wood” and “wherein the marker is dispersed within the wood” are merely statements of intended use for the actual claimed composition. The statement about “the marker is dispersed within the wood” is not being interpreted as a required active step, and thus no 35 USC 112(b) rejection for a mixed claim type is being made.
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, 5, 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, 5, 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, 5, 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.
Response to Arguments
Applicant's arguments filed August 4, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “the present invention addresses the problem of durably marking and subsequently identifying wood products, where the marker is dispersed within the wood product and survives weathering, fire, or microbial attack”; that “the purpose of the components in the cited art is the opposite of Applicant’s purpose”; that “Whitman and Cavallin use bismuth compounds as reactive agents…to induce a chemical change” whereas “Applicant uses bismuth compound as a stable, inert marker that does not react” and thus “the references teach away from the present invention”; moreover, “Whitman’s composition requires elemental sulfur and a water-soluble base” and “Cavallin’s composition requires un unsaturated polyurethane polymer”.
The Examiner, however, would like to point out the following:
1. The present invention is simply a composition comprising a bismuth carboxylate, wherein the carboxylate has about 6 to about 18 carbon atoms. The cited prior art discloses the actual composition itself, and this is sufficient to preclude the patentability of the claimed composition itself.
2. The cited prior art need not disclose Applicant’s intended use for the composition, nor is a known or an obvious composition rendered novel and patentable merely because Applicant may have found a new use for the known composition.
3. Moreover, the cited prior art need not disclose Applicant’s own reasons for including the bismuth carboxylate in the composition, or the benefits the bismuth carboxylate may confer in Applicant’s intended method of use. Again, the cited prior art need only disclose the actual composition itself.
4. The claimed composition does not necessarily exclude sulfur, a water-soluble base, and an unsaturated polyurethane polymer.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
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.
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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