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 .
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 solvent [0118] and a drying oil employed for protection and water as a water barrier(claim 1)[0122] wherein the composition does not require the presence of penta or copper and would be considered protective against decay because of its ability to at least prevent water saturation. 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 solvent [0118] and a drying oil employed for protection and water as a water barrier(claim 1)[0122] wherein the composition does not require the presence of penta or copper and would be considered protective against decay because of its ability to at least prevent water saturation. Cobham fails 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 solvent [0118] and a drying oil employed for protection and water as a water barrier(claim 1)[0122] wherein the composition does not require the presence of penta or copper and would be considered protective against decay because of its ability to at least prevent water saturation. 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 composition of Cobham would not be capable of protecting against decay because the material does not include a preservative. However, as shown in the rejection above, Cobham specifically teaches that the drying oil creates a water barrier wherein those of ordinary skill in the art would understand that the prevention of water saturation of the wood would certainly aid in the protection against decay.
Further the applicant argues that Taylor using the hemp seed oil as a drying oil. However Cobham also uses a drying oil as cited above which is why Taylor is pertinent as argued.
Further the applicant argues that there is no motivation to provide the drying of Taylor as a replacement for that of Cobham but the current claims were rejected using the KSR criteria associated with the substitution of components. As such, the examiner did not provide a motivation statement for the reasoning as it is not a part of the rejection criteria. The MPEP clearly indicates the rationale for such a rejection and it is based upon an understanding the one component would have been capable of being substituted for another in a predictable manner rather than arguing why one would find it desirable to replace one with the other (i.e., to provide motivation).
Further the applicant argues that copper absolutely requires the use of a copper compound. However, this is inaccurate at face value. Cobham claims two distinct compositions capable of use each on their own. First, Cobham claims a “carrier formulation” (claim 45) alone. This does not include a preservative. It comprises a drying oil and an extender. Claim 56 clearly claims a preservative and a carrier composition in combination. Clearly Cobham intends his carrier solution as a separate entity from the combination of the two and claims both the combination and carrier formulation separately. Under no circumstance can it be regarded as though Cobham fails to teach a specific composition that comprises only a drying oil and extender. This is the first claim of Cobham. Further it is noted that Cobham clearly indicates that the carrier solution is distinct from the preservative. Further because the “carrier composition” of Cobham in view of Taylor and the protectant solution of the current claims are identical, they would be expected to have exactly the same protective qualities.
Conclusion
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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/ANDREW J BOWMAN/Examiner, Art Unit 1717
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