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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/16/2023 has been considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claim 10 recites the limitation “a ratio of a mass of treated wood and a mass of pretreatment wood” No wood has previously been treated or recited as such there is no support for any ratio thereof. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation is 10 % by mass or less and also recites “does not substantially comprise” (as defined in the instant specification at [0040] meaning no more than a detection limit in a case with the content is measured by known means) where 10 % or less is materially broader than does not substantially comprise making the metes and bounds of the claimed range indefinite. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 112
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 10 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 10 is directed to properties of treated wood and not to the claimed composition. No further compositional limitations are recited. The properties recited do not appear to be directed solely to the composition but rather to treated wood. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim Interpretation/Introduction
The following introduction and claim interpretation is expressly incorporated into each and every rejection below as though fully set forth therein.
As below identified the prior art teaches overlapping ranges and ratios and properties/values of the claimed compositional components. See MPEP 2144.05(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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
As below identified the prior art teaches the claimed compositional components as such they will necessarily perform and possess the claimed functionality in ranges which meet and/or overlap the instantly claimed ranges esp. when used to treat wood. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The intended use of the composition as a wood preservative does not further limit the claimed composition which fully recites the chemical components thereof as such the body of the claim fully sets for the limitations of the invention. The body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) MPEP 2111.02.
“wood preservative” is a broad term. This limitation is directed to various species/genus of various chemicals. Giving the claims the broadest reasonable interpretation in view of the specification, where the prior art teaches said species/genus it will be interpreted to meet the claim limitation for a wood preservative.
As below set forth the prior art teaches isomers of chloro tetra fluoro propene and various halo olefins used for the same purpose rendering obvious to one of ordinary skill in the art at the time of filing the invention to try the instantly claimed isomers. See also secondary reference cited in support thereof.
MPEP 2144.09. Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979) Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.)
102
Claim(s) 1-2, and 5-6 is/are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Tasaka et al (US 2018/0044567)
REGARDING CLAIMS 1-2 and 5-6:
Tasaka et al (US 2018/0044567) discloses a composition for a heat cycle system comprising 1-chlorro-2,3,3,3-tetrafluoropropene, an oxidation resistance improver, a ehat resistance improer a metal deactivator and a stabilizer (Abstract)
SOLVENT: The compsotion comprises a base oil such as a nephtene or cycloopentate or cyclohexane [0161]] (i.e. an organic solvent see instant specification at [0016-0021] where hydrocarbons are organic solvents)
HCFO:
The composition comprises two geometric isomers: [0057] As for HCFO-1224yd, two geometric isomers: (E)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd(E)) being an E-isomer; and (Z)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd(Z)) being a Z-isomer exist. In the present invention, HCFO-1224yd without description of (E), (Z) indicates HCFO-1224yd(E), HCFO-1224yd(Z), or a mixture of HCFO-1224yd(E) and HCFO-1224yd(Z) mixed at an arbitrary ratio. Further, compounds each having a carbon-carbon double bond in its molecule and containing an E-isomer and a Z-isomer are also described similarly.
PRESERVATIVE:
Tasaka et al (US 2018/0044567) discloses a compositon for a heat cycle system comprising 1-chlorro-2,3,3,3-tetrafluoropropene, an oxidation resistance improver, a heat resistance improver a metal deactivator and a stabilizer (Abstract)
The metal deactivator includes [0101-103] Further, examples of the metal deactivator include heterocyclic nitrogen-containing compounds such as an imidazole compound, a thiazole compound, and a triazole compound, an amine salt of an alkyl acid phosphate, and a derivative thereof. [0102] As the imidazole compound and the thiazole compound, imidazole, benzimidazole, 2-mercaptobenzothiazole, 2,5-dimercaptothiadiazole, salicylidene-propylenediamine, pyrazole, 3,5-dimethylpyrazole, 2-mercaptobenzimidazole, 2-methylbenzamidazole, or triazoles may be contained. [0103] The triazole compound is selected from 2-(2′-hydroxy-5′-methylphenyl)benzotriazole, 2-(2′-hydroxy-3′-tert-butyl-5′-methylphenyl)-5-chloro-benzotriazole, 1,2,3-benzotriazole, 1-[(N,N-bis-2-ethylhexyl)aminomethyl]benzotriazole, methylenebisbenzotriazole, tolyltriazole, and so on. Further, an organic acid or its ester, a primary, secondary or tertiary aliphatic amine, an amine salt of an organic acid or inorganic acid, a derivative thereof, or the like may be added.
The composition is a liquid [0051][0197]
103
Claim(s) 3-4 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tasaka et al (US 2018/0044567) as applied to claims 1-2 and 5-6 above.
REGARDING CLAIM 3:
See claim 12 of reference. The composition for a heat cycle system according to claim 11, wherein a content of the 1-chloro-2,3,3,3-tetrafluoropropene with respect to 100 mass % of the working medium for heat cycle is 20 to 95 mass %. (overlapping the range of claim 3)
REGARDING CLAIM 4:
See Claim 2 of reference for E and Z The composition for a heat cycle system according to claim 1, wherein the 1-chloro-2,3,3,3-tetrafluoropropene contains (Z)-1-chloro-2,3,3,3-tetrafluoropropene and (E)-1-chloro-2,3,3,3-tetrafluoropropene at a ratio of 51:49 to 100:0 by mass ratio represented by (Z)-1-chloro-2,3,3,3-tetrafluoropropene:(E)-1-chloro-2,3,3,3-tetrafluoropropene. (emeting the limitations of claim 4 with overlapping range/ratio of isomer)
REGARDING CLAIM 8:
The stabilizer is in an amount of 1ppm to 10 mass % [0088] (overlapping the range of claim 8)
REGARDING CLAIM 9:
The composition does not require water meeting and/or rendering obvious the range of instant claim 9.
REGARDING CLAIM 10:
The prior art teaches the claimed composition as such it would be expected to possess the claimed properties.
This reference does not teach applying to wood of instant claim 11 or the chemicals of instant claim 7. There is no motivation to alter the teachings thereof to encompass same in the absence of improper hindsight.
103
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020059162A (published 4/16/2020 vs. instant effective filing date 6/10/2021) further in view of Kenaga et al (US 2,785,984)
Hiroaki Mitsuoka JP 2020 discloses a wood preservation treatment liquid comprising an organic solvent comprising an organic solvent and a halogenated olefin for wood preservation (Abstract)
The composition comprises an organic solvent (L331-340) and commercially available or synthesized halogenated olefins such as (L365-L392)
Each substance used in the examples was obtained by using a commercially available product or was prepared by synthesis, as described below. 1233yd was synthesized by the method described in WO 2017/018412. That is, 1-chloro-2,2,3,3-tetrafluoropropene (CHF 2 —CF 2 —CHFCl, HCFC-244ca) was defluorinated at a temperature of 50 to 80 ° C. using potassium hydroxide as a reactant. By reacting with hydrogen, 10 kg of a reaction product containing 1233yd at a purity of 99.5% was obtained. The obtained 1233yd was an isomer mixture in which the Z isomer (1233yd (Z)) was 95% by mass and the E isomer (1233yd (E)) was 5% by mass.(overlapping the ranges/ratios of the instant claims)(L365-400)
The Z-form of 1233zd (1233zd (Z)) was synthesized by the method described in JP2013-87066A. That is, 3-chloro-1,1,1,3-tetrafluoropropane (HCFC-244fa), 2-chloro-1,1,1,3,3-pentafluoropropane (HCFC-235da) and 1233zd (Z). Crude 1233zd (Z) containing was mixed with triethylamine and reacted at 150 ° C. for 3 hours to obtain a reaction product containing 1233zd (Z). The reaction product was further purified to obtain purified 1233zd (Z) having a purity of 99.5%. In the following tests, the purified 1233zd (Z) is referred to as 1233zd (Z). .(overlapping the ranges/ratios of the instant claims) 1223yd was synthesized by the method described in GB7099887. Specifically, granular zinc (39 g) was placed in a flask equipped with a reflux condenser, and the surface was covered with 50 cc of absolute ethanol. 1,1,2,3-Tetrachloro-2,3,3-trifluoropropane (118 g) was dissolved in 75 cc absolute ethanol and the resulting solution was added dropwise to the zinc / ethanol mixture in the flask. The drip rate was controlled to prevent vigorous reflux. After the addition was complete, the reaction mixture was refluxed for about 90 minutes. Excess ethanol was dissolved in water, the organic phase was separated from the aqueous phase, and dried with anhydrous calcium chloride to obtain 1223yd. The obtained 1223yd was an isomer mixture in which the Z isomer (1223yd (Z)) was 95 mass% and the E isomer (1223yd (E)) was 5 mass%. (overlapping the ranges/ratios of the instant claims)(L373-392)
The composition further comprises triazole based wood preserving agents (L260-269) include (2RS, 3RS; 2RS, 3SR) -2- (4-chlorophenyl) -3-cyclopropyl-1- (1H-1,2,4-triazole-1. -Yl) butan-2-ol, (RS) -1-p-chlorophenyl-4,4-dimethyl-3- (1H-1,2,4-triazol-1-ylmethyl) pentan-3-ol, 1- [[2- (2,4-Dichlorophenyl) -4-propyl-1,3-dioxolan-2-yl] methyl] -1H-1,2,4-triazole may be mentioned (L270-280)(meeting claim 7)
The reference teaches the composition reduces corrosion and controls fungi and erosion by insects (L69-73) and is used as a fungicide and insecticide to preserve wood L251-259)
The composition is applied to wood (L429-440 – meeting claim 11)
Using the obtained four types of wood preservation treatment liquids of Examples 25 to 28, wood was treated by the following method. 2.35 g of Japanese cedar wood pieces cut out from a 5 mm-thick wood board were placed in a pressure-resistant airtight container and subjected to a pressure-reducing treatment at -0.097 MPaG for 20 minutes until the pressure-reduced state reached equilibrium with atmospheric pressure. The wood preservation treatment liquid was sucked into the container. In a nitrogen gas atmosphere, the pressure was increased to 0.76 MPaG and the mixture was allowed to stand for 30 minutes. Then, after releasing the pressure in the container to atmospheric pressure, the wood treatment solution in the container was extracted to obtain wood with a chemical agent for preserving wood before drying. (L429-445 rendering obvious the limitations of claim 10)
While the reference teaches various E and Z halogenated olefins for use as wood treatment composition it does not expressly teach the 1-chloro-2,3,3, tetrafluorpropene.
However analogous art Kenaga teaches treating biomass materials to fumigate control insects’ bacteria fungi etc. using halo olefins.
Kenaga et al (US 2,785,984) discloses fumigation such as for grain and its milled product control of infesting insects, nematodes, bacteria and fungi (C1 L12-19) using monochloro-tetrafluoropropene and dichlorotetrafluoropropene (C1 L45-50) such as 1-chloro-2,3,3,3-tetrafluoropropene and 1,1,dichloro2-3,3,3-tetrafluoropropene, 1,2-dichloror1,3,3,3-tetrafluoropropene, 1,3, dichloro12,3,3-tetralfuorpropene etc. (C1 L60-73) The compounds are soluble in organic solvents and have low solubility in water (C2 L1-10) and is used in amounts such as 1- 90 % by weight (C2 L60-63) the compositon may be in a petroleum distillate (C2 L62-70) Other materials may be combined with the fluoring compunds such as solvents, toxicants, etc. (C3 L10-23)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the E and Z form of 1-chloro-2,3,3,3, tetrafluoropropene of Kenaga as the halo olefin of JP 2020 as it will aid in reducing insects, bacteria and fungi in the wood of JP 2020 esp. Further JP 2020 contemplates one or more halo olefins such as those commercially available as well as those that are known – as such the use of the 1-chloro-2,3,3,3 tetrafluoropropene of Kenaga in JP 2020 amounts to nothing more than use of a known halo olefin in a known environment of an biomass treating fluid and of a insecticide/antifungal composition to achieve an entirely expected result of improved wood/biomass preservation and reduced fungus and reduced insects and damage associated therewith.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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