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 .
Status of the Claims
Claims 1-3, 5-10, 12-15, 17-22 and 24 are pending. Claims 17, 18, 20-22, and 24 stand withdrawn without traverse.
Claims 1-3, 5-10, 12-15, and 19 are under current examination.
All rejections not reiterated have been withdrawn.
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.
Claims 1-3, 5-10, 12-15, and 19 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.
Each of claims 1, 13, 14, 15, and 19 recite "...a ratio…” without indicating the type of ratio (e.g. mass or molar). As the relative amounts of each substance permitted in the claim differ depending upon the type of ratio, the scope of the claim is uncertain.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive. Applicant’s comments on page 7 that the amendments have addressed the rejection of the claims under 35 USC 112(b) is noted; however, only one of the two rejections set forth in the Office action mailed on 12/01/2025 has been addressed by the amendment.
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.
Claims 1-3, 5, 6, 10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fox et al. (US20130017404; publication date: 01/17/2013; cited in the IDS filed 04/21/2025).
With respect to claims 1, 5, 6, 13-15, Fox teaches a composition for treatment of wood (title) comprising copper and zinc (abstract). In some embodiments the copper ion source is a copper azole, wherein the copper azole typically tebuconazole and/or propiconazole (limitations of instant claims 5 and 6) and may further comprise boric acid. Thus Fox’s composition must contain copper and zinc and may contain an azole and boric acid.
With regard to the ratio of each substance recited in instant claims 1 and 13-15 as well as the percentages of the substances recited in instant claim 10, Fox provides the general guidance that the active components are present in amounts up to 10% of the composition (0016). This range overlaps with the ranges for each agent recited in instant claim 10 and also the ratios of each active implicit in these percentages overlaps with the ratios recited in the instant claims. The examiner considers it merely routine for one of ordinary skill to have optimized preservative efficacy of the inorganic metals and the antifungal agent, absent evidence of unexpected results. See MPEP 2144.05: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Also in general, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With regard to claim 2, Fox discloses CuO (i.e. copper oxide; 0017).
With regard to claim 3, Fox discloses zinc oxide (0015).
With respect to claim 12, the composition can contain ethanolamine (i.e. an alkanolamine; 0022).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fox et al. (US20130017404; publication date: 01/17/2013; cited in the IDS filed 04/21/2025) as applied to claims 1-3, 5, 6, 10, and 12-15 above, and further in view of Li et al. (New J Chem 36, 9550; publication year: 2015).
The relevant disclosure of Fox is set forth above. Fox is silent with respect to a complex between the azole and the copper containing biocide.
Li discloses a synergistic anti-fungal effect of copper complexed with tebuconazole (title).
It would have been prima facie obvious to use a copper tebuconazole complex in Fox’s formulation. The skilled artisan would have been motivated to do so to provide synergistic antifungal activity and would have had reasonable expectation of success because the complex had already been synthesized and investigated for this synergy.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fox et al. (US20130017404; publication date: 01/17/2013; cited in the IDS filed 04/21/2025) as applied to claims 1-3, 5, 6, 10, and 12-15 above, and further in view of Strid et al. (Treated Wood Fact Sheet; National Pesticide Information Center, Oregon State University Extension Services; publication year; 2019).
The relevant disclosure of Fox is set forth above. Fox is silent with respect to micronization of the azole or the size thereof.
Strid discloses that micronized copper azole was known in the art to have the benefit of small particles that fit into the small holes in the structure of wood, such that they are lodged (page 1).
It would have been prima facie obvious to use micronized copper azole particles in Fox’s invention. The skilled artisan would have been motivated to do so in order to enhance retention in the wood and had reasonable expectation of success because this benefit of small particles had been understood of as of the instant effective filing date. With regard to the size, micronization indicates approximately micron sized particles and it would have been a matter of routine to establish the size that would suitably lodge into a particular type of wood.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fox et al. (US20130017404; publication date: 01/17/2013; cited in the IDS filed 04/21/2025) as applied to claims 1-3, 5, 6, 10, and 12-15 above, and further in view of Fengchen Group (website, Basic Copper Carbonate or Copper(II)Carbonate Basic; available online from at least 01/29/2018).
The relevant disclosure of Fox is set forth above and renders obvious all of the limitations of independent claim 1, from which claim 9 depends. Fox also renders obvious all of the limitations of independent claim 19, with the exception that Fox is silent with respect to using basic copper carbonate as the copper containing biocide. Fox discloses further that typically the copper ion source is present as copper (II) (0016).
Fengchen Group discloses that Heavy Copper Carbonate is also called Cupric carbonate, Basic Copper Carbonate. In recent years, Heavy Copper Carbonate (Cupric carbonate, Basic Copper Carbonate) has been widely applied in wood preservation field. Basic copper carbonate is a chemical compound, more properly called copper(II) carbonate hydroxide. It is an ionic compound consisting of the ions copper(II) Cu2+ , carbonate CO2− 3, and hydroxide HO− (page 2).
It would have been obvious to use basic copper carbonate as the copper ion source in Fox’s invention because one having ordinary skill would have recognized this substance as a source of copper (II). See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
On page 8, Applicant argues that Fox does not teach the claimed ratio of coper ions to boric acid equivalents. Applicant argues that the only instances where a boron containing biocide is mentioned is para 0022 and examples 5 through 8. On page 9, Applicant describes Fox’s examples and argues that none of the example compositions contain the claimed ratio of copper ions to boric acid equivalents.
This argument is not persuasive because determining the optimal amounts of each preservative by experimentation within the teachings of Fox would have been merely routine for the artisan of ordinary skill, e.g. an individual with a Ph.D. in agrochemical formulations science. "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). See MPEP 2141.03 and 2144.05(II)(A). Moreover, determining the optimal concentrations for a combination of ingredients to provide the effect they were recognized in the art at the time of filing as providing would have been merely combining prior art elements according to known methods to yield predictable results (see MPEP 2143(A)). Nowhere has Applicant identified a teaching away from the claimed ratios of copper ions to boric acid equivalents. In order to teach away, the prior art reference must “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Finally, with regard to Applicant’s citation of Fox’s example compositions, Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "
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 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 1-3, 5-10, 12-15, and 19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 12-16, 18-22, 24-28 of copending Application No. 18551209 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘209 application embrace a wood preservative composition comprising copper carbonate, boric acid, and zinc oxide as well as an azole, wherein the azole has been micronized and/or wherein the azole is in a complex with the source of copper (the copper containing biocide). The substance are present at ratios and in percentages that overlap with or embrace the ranges for the ratios and percentages of the substances required by the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants’ request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
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