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 .
Election/Restrictions
In response to a restriction requirement dated 6/3/2025 the applicant elected to pursue claims drawn to a species wherein the hemp seed oil is 5 percent of the solution and biodiesel is 95 percent of the solution. Claim 8 has been amended to read “wherein said hemp seed oil is at least about 15% of the solution”. This does not read upon the elected species and as such claim 8 is currently withdrawn.
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 1-4, 7, 9-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cobham et al. (USPGPub 2011/0039031) in view of Taylor (US2783159).
Regarding claims 1 and 9, Cobham teaches that it is known to treat wood (abstract) with a composition comprising biodiesel as an extender and a drying oil (claim 1) wherein the composition does not require the presence of penta or copper. Cobham fail to teach wherein the drying oil may be hemp seed oil. However, Taylor teaches that hemp seed oil is a known drying oil (col. 1, lines 34-36) used in the manufacture of protective coatings (claim 7). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hemp seed oil of Taylor as the drying oil of Cobham as a simple substitute of one drying oil for another in a protective coating wherein the substitution would be predictable based on the teachings of Taylor. Further, claiming that an ingredient is an active ingredient in a composition is a recitation of intended use of said ingredient but the claims are not drawn to method of using the composition but rather to the composition itself. Therefore, so long as the prior art composition is capable of being used in a manner such that the components are active ingredients then the prior art would meet the limitations of the current claims. Further the composition of Cobham in view of Taylor would necessarily be as solution as claimed.
Regarding claim 2, the composition of Cobham in view of Taylor would reasonably only necessarily require the hemp seed oil and the biodiesel.
Regarding claims 3-4 and 7, Cobham teaches wherein the components provided read upon the ranges claimed (claims 51-52).
Regarding claim 10, Cobham teaches that it is known to treat wood (abstract) with a composition comprising biodiesel as an extender and a drying oil (claim 1) wherein the composition does not require the presence of penta of copper. Cobham fail to teach wherein the drying oil may be hemp seed oil. However, Taylor teaches that hemp seed oil is a known drying oil (col. 1, lines 34-36) used in the manufacture of protective coatings (claim 7). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hemp seed oil of Taylor as the drying oil of Cobham as a simple substitute of one drying oil for another in a protective coating wherein the substitution would be predictable based on the teachings of Taylor. Further, claiming that an ingredient is an active ingredient in a composition is a recitation of intended use of said ingredient but the claims are not drawn to method of using the composition but rather to the composition itself. Therefore so long as the prior art composition is capable of being used in a manner such that the components are active ingredients then the prior art would meet the limitations of the current claims.
Regarding claim 11, the composition of Cobham in view of Taylor would reasonably only necessarily require the hemp seed oil and the biodiesel.
Regarding claims 12-13 and 16, Cobham teaches wherein the components provided read upon the ranges claimed (claims 51-52).
Regarding claim 17, biodiesel is a “natural compound” as is hemp seed oil, although Cobham teaches the use of other “natural compounds”.
Regarding claim 18-20, Cobham teaches that it is known to treat wood (abstract) with a composition comprising biodiesel as an extender and a drying oil (claim 1) wherein the composition does not require the presence of penta of copper. Cobham fail to teach wherein the drying oil may be hemp seed oil. However, Taylor teaches that hemp seed oil is a known drying oil (col. 1, lines 34-36) used in the manufacture of protective coatings (claim 7). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the hemp seed oil of Taylor as the drying oil of Cobham as a simple substitute of one drying oil for another in a protective coating wherein the substitution would be predictable based on the teachings of Taylor. Further, claiming that an ingredient is an active ingredient in a composition is a recitation of intended use of said ingredient but the claims are not drawn to method of using the composition but rather to the composition itself. Therefore so long as the prior art composition is capable of being used in a manner such that the components are active ingredients then the prior art would meet the limitations of the current claims. Further hemp oil is not required in the composition of Cobham in view of Taylor.
Response to Arguments
The applicant argues that the compositions of Cobham necessarily require copper and therefore do not read upon the current claims. However, this is not accurate. First, in one embodiment, Cobham claims only a carrier composition (claim 45). This composition comprises only biodiesel and an oil. The copper agents of Cobham are preservatives claimed in a separate embodiment (claim 56) and are not a requirement of one of the invention of Cobham that reads upon the current claims. Further the preservative portion of Cobham is not limited to copper compounds and they are not a requirement of the perseverative composition. For example, claim 57-58 provide wherein a plurality of the compounds listed as preservatives are not copper containing compounds. As such, the rejection of the claims remains proper.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717