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
Restriction/Election
Applicant’s election without traverse of group I, claims 1-5, 12-16, 18-22 and 24 in the reply filed on 01/06/26 is acknowledged. Applicant’s election of basic copper carbonate (for Species 1), zinc oxide (for Species 2), boric acid (for Species 3) and an azole (for Species 4). In addition, the Species Election further requires election of a single species of the specific organic biocide of Species 4 and tebuconazole is also acknowledged.
Claims 25-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/26.
Claim Rejections - 35 USC § 103
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 1-2, 4 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al. (WO 01/70472 A1, presented in IDS).
Watkins et al. discloses wood preserving (abstract 'wood preserving compositions') a copper containing biocide (pg. 11, In 20 '200 g of copper sulfate were added'); a zinc containing biocide (pg. 11, In 15-16 '222.5 grams of zinc borate were added'); a boron containing biocide (pg. 11, In 15-16 '222.5 grams of zinc borate were added'); and wherein the copper containing biocide (pg. 11, In '200 g of copper sulfate were added' Cu = 112 g) and the zinc containing biocide (pg. 11, In 15-16 '222.5 grams of zinc borate were added' Zn = 140 g B= 11g) are present in the wood preservative composition such that a ratio of copper (pg. 11 In 20, 112 g) to zinc (pg. 11, In 15-16 140g) is from about 15:1 to about 1:5 (pg. 11, In 15- 20 ratio is 1:1.25) based on weight; wherein the copper containing biocide (pg. 11, In 20, Cu biocide 200 g) and the boron containing biocide (pg. 11, In 15-16 B biocide = 222.5 g) are present in the wood preservative composition such that a ratio of copper to boron containing biocide is from about 15:1 to about 1:5 (200: 222.5 or 1:1.11) based on weight. Watkins et al. discloses a wood preservative composition (abstract 'wood preserving compositions') comprising, in a first embodiment (a) a copper containing biocide (pg 11, In 20 '200 g of copper sulfate were added'): (b) a zinc containing biocide (pg 11, In 15 -16 '222.5 grams of zinc borate were added'); (c) a boron containing biocide (pg 11, In 15-16 '222.5 grams of zinc borate were added"); and (d) at least one organic biocide (pg 25, in 32-36 'Quaternary ammonium salts have long been known to exhibit high surface activity coupled with biological and fungicidal efficacy. Such complex compositions have usually been used to formulate emulsions of cationic nature at low pH. These unique properties have been retained in this complex wood preservative composition. Penetration and distribution in treated timber have been enhanced and complemented by additional efficacy and boron fixation'. The applicant in the instant application identifies quaternary ammonia as an organic biocide; see instant application pg. 4, ln 22. The organic biocide may be a quaternary ammonium compound'). basic copper carbonate (for Species 1), zinc oxide (for Species 2), boric acid (for Species 3) and an azole (for Species 4). Watkins discloses the wood preservative composition of claim 1 or 2. Further, Watkins discloses wherein the zinc containing biocide is independently selected from zinc borate (pg. 1, In 31 'zinc borate is referred"). Watkins discloses the wood preservative composition of claim 1 or 2. Further, Watkins discloses wherein the zinc containing biocide is independently selected from zinc borate (pg. 1, In 31 'zinc borate is referred").
However, Watkins et al. does not specifically disclose all biocides in on embodiment or example. However, based on Watkins teachings, it would have been obvious to one of ordinary skill in the art to identify a composition comprising claimed biocides such as quaternary ammonium along with copper, zinc, boron biocide in a single example or embodiment by routine experimentation in order to improve the overall efficacy of the preservative composition. However, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results of making wood preservative composition comprising a copper biocide, a zinc biocide and a boron biocide, see MPEP 2143 part (I)(A).The prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. MPEP 2144.05 A. Accordingly, since an overlap plainly exists here, it would have been obvious to have selected values within the overlap, consistent with the reasoning of the obviousness above. Additionally, manipulations of the amounts and ratios of various components would have been obvious to one of ordinary skill based on the guidance provided by the generic amounts taught by the reference.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al. (WO 01/70472 A1, presented in IDS) in view of Zhang et al. (US 7,632,567 B1).
Watkins discloses the wood preservative composition of claim 1 or 2. However, Watkins does not disclose wherein the copper containing biocide is independently selected from the group consisting of basic copper carbonate, a copper oxide, or a combination thereof.
Zhang discloses the use of copper carbonate and a copper oxide (Col 2, In 58-59 'copper compounds include copper carbonate, copper hydroxide, cupric oxide').
In view of the fact that both Watkins and Zhang relate to wood preservatives containing copper and zinc, it would have been obvious to modify the disclosure of Watkins with the disclosure of Zhang and use copper carbonate or copper oxide as the copper biocides in order to use readily available sources of copper for the copper oxide in order to reduce the cost of the material. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Claims 5, 12-16, 18 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al. (WO 01/70472 A1, presented in IDS) in view of Zhang et al. (US 7,632,567 B1) and further in view of Fox et al. (US 2013/0017404 A1).
The teachings of Watkins have been discussed above. Watkins does not teach use of boric acid and tebuconazole.
Zhang discloses a wood preservative composition (col 2, In 19-20 present invention provides compositions for preservation of wood') comprising: a) a copper containing biocide (col 7, In 35-37 'Example 2 1000 g of copper carbonate'); (b) a zinc containing biocide (col 7, In 35-37 'Example 2 295 g zinc oxide') (d) an organic biocide (col 9, In 9-10 0.05% tebuconazole was prepared by mixing the dispersion from Example 2'); and in separate embodiments (c) a boron containing biocide (col 2, In 60 'copper borate' and col 6, In 56-63 'Such organic biocides including and the like, borate compounds'); and wherein the copper containing biocide and the zinc containing biocide are present in the wood preservative composition such that a ratio of copper to zinc is from about 15:1 to about 1:5 based on weight (col 7, In 37 '1000 g of copper carbonate and 295 g zinc oxide' Copper equal 635 g, zinc equals 237 g, which equates to a 2.68:1 which falls within the range), wherein the copper containing biocide comprises a basic copper carbonate (col 7, In 37 '1000 g of copper carbonate'); wherein the zinc containing biocide comprises a zinc oxide (col 7, In 37 '295 g zinc oxide'); and wherein the azole comprises a tebuconazole (col 9, In 9-10 0.05% tebuconazole was prepared). However, Zhang does not disclose wherein the copper containing biocide and the boron containing biocide are present in the wood preservative composition such that a ratio of copper to boron containing biocide is from about 15:1 to about 1:5 based on weight; and wherein the boron containing biocide comprises a boric acid.
It would have been obvious to one of ordinary skill in the art to adjust the level wherein the copper containing biocide and the boron containing biocide are present in the wood preservative composition such that a ratio of copper to boron containing biocide is from about 15:1 to about 1:5 based on weight, based upon routine experimentation.
Fox discloses the use of boric acid (para [0022] 'Copper Azole with boric acid (CBA-A) generally contains as the active ingredients around 46-54% copper') in view of the fact that both Zhang and Fox relate to wood preservatives with copper and zinc, it would have been obvious to one of ordinary skill in the art to modify the disclosure of Zhang with the disclosure of Fox and use boric acid as it is known to perform well in preservative systems with azoles to provide improved preservation properties. Thus, one of ordinary skill would have expected an improved preservative composition by utilizing the known boric acid preservative and come to the claimed invention.
Nonstatutory double patenting rejection
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 1-5, 12-16, 18-22 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10, 12-15 and 17-19 of copending Application No. 18/551218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite a wood preservative composition comprising: (a) a copper containing biocide; (b) a zinc containing biocide; (c) a boron containing biocide; and (d) at least one organic biocide. The patented claims recite a wood preservative composition comprising: (a) a copper containing biocide; (b) a zinc containing biocide; (c) a boron containing biocide comprising boric acid, disodium tetraborate pentahydrate, disodium octoborate tetrahydrate, or combinations thereof; and (d) an azole, wherein the copper containing biocide and the zinc containing biocide are present in the wood preservative composition such that the [[a]] ratio of copper ions to zinc ions is from about 15:1 to about 1:5; and wherein the copper containing biocide and the boron containing biocide are present in the wood preservative composition such that the [[a]] ratio of copper ions to boric acid equivalents is from about 15:1 to about 2:1. The copending claims reciting a biocide composition comprising a wood preservative reads on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612
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