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
The listing of claims filed 06 December 2024 has been examined.
Claims 1-2, 4-5, 7-12, 14, 17-18, 20-22, 25-26, and 29-30 are pending.
Claims 4, 7-11, 14, 17-18, 20-21, 25-26, and 29-30 are amended.
Claims 3, 6, 13, 15-16, 19, 23-24, and 27-28 are cancelled.
Information Disclosure Statement
The Information Disclosure Statements (IDSs) filed on 09 February 2026, 08 October 2025, 08 July 2024, and 23 May 2024 are acknowledged and have been considered.
Benefit of Earlier Filing Date
The instant application, filed 23 May 2024, is a national stage application of PCT/US2022/050732, filed 22 November 2022, which claims the benefit of an earlier filing date to U.S. Provisional Patent Application Serial No. 63/282,794, filed 24 November 2021. Acknowledgment is made of Applicant’s claim.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains legal phraseology and phrases which can be implied, specifically the terms “comprising” and “The presently claimed and described technology provides,” respectively. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 4, 8, 11-12, 17, 21-22, and 29 are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Ashmore (WO 2013/158410 A1).
Regarding claims 1-2, 4, and 8, Ashmore teaches an exemplary wood preservation mixture containing a commercial wax emulsion, 800 ppm 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one (“DCOIT”), and dipropylene glycol methyl ether (p. 6, ¶ [0034-0037). Among the disclosed commercial wax emulsions is carnauba wax, which a skilled artisan would recognize is a natural wax, having a melting point of 85°C (p. 5, ¶ [0033], Table 1). DCOIT is another name for 4,5-dichloro-2-n-octyl-3-isothiazolone:
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Figure 1. Structure of DCOIT and 4,5-dichloro-2-n-octyl-3-isothiazolone, as drawn by JChem.
In the above compound, Y is an unsubstituted C8 alkyl group, R is Cl, and R1 is Cl. Furthermore, a skilled artisan would recognize dipropylene glycol methyl ether is an organic solvent, specifically a glycol ether.
Regarding claims 11-12, 17, 21-22, and 29, Ashmore teaches all of the claimed elements as stated above. Furthermore, Ashmore discloses a procedure by which the composition is applied to Southern Yellow Pine wood involving pressure treating the wood by reducing the pressure inside the pressure vessel equipment and removing the vacuum to draw the composition into the wood (p. 6, ¶ [0040]).
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, 7-8, 11-12, 14, 17, 21-22, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1).
Regarding claims 1-2, 4, 7-8, 11-12, 14, 21-22, and 26, Ashmore teaches all the claimed elements as stated above. Furthermore, Ashmore teaches organic wood preservatives, including tebuconazole, propiconazole, chlorothalonil, 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one (“DCOIT”), and 2-n-octyl-4-isothiazolin-3-one as well as other isothiazolone wood preservatives (p. 2, ¶ [0013]). The names 2-n-octyl-3-isothiazolone and 2-n-octyl-4-isothiazolin-3-one refer to the same compound:
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Figure 2. Structure of 2-n-octyl-3-isothiazolone and 2-n-octyl-4-isothiazolin-3-one, as drawn by JChem.
In the above compound, Y is an unsubstituted C8 alkyl group, R is H, and R1 is H. Furthermore, Ashmore discloses the wood preservative composition contains a wax having a melting point greater than 75°C and less than 250°C (p. 2, ¶ [0014]). The wax may be a plant wax, vegetal wax, mineral wax, synthetic wax, carnauba wax, and/or polyolefin wax (p. 2, ¶ [0015]). The composition also comprises an oil, which could be propylene glycol monoesters of fatty acids, wherein the amount of oil, by weight based on the weight of the aqueous wood preservative composition, is 0.02% or more and 2% or less (p. 4, ¶ [0026-0027]). Furthermore, Ashmore discloses the wood preservative composition contains a non-aqueous solvent, such as ester and ether solvents and/or glycols and their ethers and esters, like propylene glycol phenyl ether (p. 3-4, ¶ [0025]).
Ashmore does not explicitly teach the wax has an oil content between about 1% to 10%.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to prepare a creosote- and pentachlorophenol-free wood preservative composition comprising a preservative, a wax having a melting point above about 75°C to below 100°C, and an organic solvent because Ashmore discloses a wood preservation composition which may contain the instantly recited components. Thus, a skilled artisan would have been motivated to prepare a composition comprising the instantly claimed components and apply said composition to wood. While Ashmore does not explicitly state the specific oil content within the commercial wax emulsions, Ashmore does indicate oil may be included in the composition (p. 6, ¶ [0036]; p. 7, ¶ [0045], Table 2) and states adding oil to the composition improves DCOIT penetration into wood (p. 8, Bottom Paragraph). Additionally, a skilled artisan would understand the oil content within the wax would depend on the level to which it has been refined, with unrefined wax containing more oil than refined wax. Thus, a PHOSITA would have been motivated to include an oil-containing wax in the composition and would have known to optimize the specific amount of oil according to the desired DCOIT wood penetration based on the teachings of Ashmore (MPEP 2144.05(II)(A)).
Regarding claims 17 and 29, Ashmore teaches all of the claimed elements as stated above. Furthermore, Ashmore teaches a method by which the wood preservation composition may be applied to wood, specifically Southern Yellow Pine (p. 6, ¶ [0040]). The method involves placing the wood in a 2 L pressure vessel, sealing the vessel, and reducing the pressure (p. 6, ¶ [0040]). Subsequently, the vacuum is released and the composition is absorbed by the wood.
Ashmore does not explicitly indicate which specific, exemplary composition was applied to the wood.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to apply the wood preservation mixture to pine wood and/or pressure-treated wood because Ashmore describes applying a wood preservation mixture to pressure-treated Southern Yellow Pine. Furthermore, a skilled artisan could have predicted a wood preservation composition which is effective in preserving one type of wood would also be effective in preserving other types of wood.
Claims 5 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1) in view of Endo (EP 1982590 A1).
Regarding claims 5 and 25, Ashmore teaches all of the claimed elements as stated above.
Ashmore does not explicitly teach a wax blend comprising a microcrystalline wax and a Fischer Tropsch wax.
Endo teaches a resin composition containing an agricultural chemical, which can include agents like tebuconazole and copper naphthenate (¶ [0031]) as well as propiconazole and chlorothalonil (¶ [0025]). Endo indicates the composition may be used as a wood pest control agent and/or mildewproofing agents for wood (¶ [0020]). The composition contains a hydrocarbon-based lubricant, which can be a mixture of microcrystalline wax and Fischer-Tropsch wax (¶ [0067]).
Endo does not explicitly teach an exemplary composition containing an instantly claimed preservative.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to prepare and use a wood preservative composition containing microcrystalline wax and Fischer Tropsch wax based on the teachings of Endo because both Ashmore and Endo disclose wax-containing wood preservation compositions and Endo suggests the wax could be a mixture of microcrystalline wax and Fischer Tropsch wax.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1) in view of Langroodi (Langroodi et al., (2012), “Efficacy of Pentachlorophenol in Biodiesel versus Diesel,” Forest Products Journal, Vol. 62(6), p. 467-473.).
Regarding claim 9, Ashmore teaches all of the claimed elements as stated above.
Ashmore does not explicitly teach an organic solvent which is a blend of diesel and biodiesel.
Langroodi teaches a diesel/biodiesel mixture as a pentachlorophenol (PCP) carrier for wood preservation (Abstract), including various ratios of diesel to biodiesel like 70 g diesel and 30 g biodiesel (p. 468, Table 1, Sample no. 11-20). Langroodi observed similar PCP retention in diesel/biodiesel- and diesel/KB3-treated wood samples, but saw lower toxicity in the diesel/biodiesel samples (p. 470-471, “Toxicity” Paragraph). Langroodi states KB3 is, “…a ketone still-bottom petroleum by-product that is used as a cosolvent to enhance solubility and effectiveness of PCP…” (p. 468. “Sample Preparation”).
Langroodi does not explicitly teach an exemplary composition containing an instantly claimed preservative, a wax, and an organic solvent.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to prepare a wood preservation composition using a diesel and biodiesel blend based on the teachings of Langroodi because Langroodi discloses a blend containing 70 parts diesel and 30 parts biodiesel which represents an environmentally-preferable alternative to using diesel alone, specifically a diesel/KB3 blend. Thus, a PHOSITA would have been motivated to substitute PCP for a different wood preservative, such as DCOIT as disclosed by Ashmore, and use an organic solvent comprising diesel and biodiesel as a more environmentally-friendly option, as indicated by Langroodi.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1) in view of Endo (EP 1982590 A1) and further in view of Frazer (WO 2010/082840 A1).
Regarding claim 10, Ashmore teaches all of the claimed elements as stated above. Furthermore, Ashmore discloses up to 5% wax solids (p. 3. ¶ [0020]), up to 2% non-aqueous solvents (p. 3-4, ¶ [0025]), and 400-4000 ppm DCOIT (p. 5, ¶ [0030]).
Ashmore does not explicitly teach 0.5-5% of a 3-isothiazolone compound, 20-60% wax, and 35-79.5% organic solvent based on the total weight of the wood preservation composition.
Endo teaches all of the claimed elements as stated above. Furthermore, Endo discloses the agricultural chemical ingredient comprises 1-80% by weight and the release-controlling agent, which includes a hydrocarbon-based lubricant like wax, comprises 1-80% by weight (¶ [0079], [0073], [0067]).
Endo does not explicitly teach a particular amount of the organic solvent.
Frazer teaches wood preservative compositions comprising an active ingredient, which could be propiconazole or tebuconazole (p. 5, Paragraph 2), and at least 10% w/w of an ester solvent (Abstract). Furthermore, Frazer discloses an exemplary composition comprising 5.5% propiconazole, 5.5% tebuconazole, and 63.8% n-Propyl ethanoate (p. 17, Paragraph 3). A skilled artisan would recognize n-Propyl ethanoate as an organic solvent.
Frazer does not explicitly teach an exemplary composition containing a wax.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to prepare a wood preservation composition comprising the instantly claimed 3-isothiazolone compound, wax, and organic solvent amounts based on the teachings of Endo and Frazer because Endo and Frazer disclose amounts which overlap or are within the instantly recited ranges. Thus, a PHOSITA would have known to optimize preservative compound, wax, and organic solvent amounts based on the desired wood preservative effect via routine experimentation (MPEP 2144.05(II)(A)).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1) in view of Preston (CA 2359536 C).
Regarding claim 18, Ashmore teaches all of the claimed elements as stated above.
Ashmore does not explicitly teach the vacuum-pressure treatment is conducted at a temperature of about 80°C to about 100°C.
Preston teaches a process for improving the water repellency of wood using a water-based formulation containing wax, which may be a natural or synthetic wax (p. 2, Lines 22-26; p. 5, Line 23). Preston discloses the formulation is applied to wood at a temperature which is at or above the temperature required to cause the wax to change to a molten state (p. 4, Lines 15-18). Preferably, the temperature is 2-10°C higher than the melting point of the wax. Furthermore, Preston discloses a pressure treatment wherein both the treatment vessel and the wood preservation formulation are pre-heated to about 65-75°C (p. 10, Lines 7-10). Preston states applying the formulation at 65-75°C resulted in improved uptake of the formulation as opposed to when the formulation was applied at ambient temperature (p. 10, Lines 18-21).
Preston does not explicitly teach an exemplary composition containing an instantly claimed preservative, a wax, and an organic solvent.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to carry out the vacuum-pressure treatment at about 80-100°C based on the teachings of Preston because Preston teaches carrying out the treatment at or above the melting point of the wax results in greater uptake of the wood preservation composition into wood. The instant Specification defines “about” as an interval of accuracy which is +/- 10% (Specification, p. 6, ¶ [0036]). Thus, the temperature discloses by Preston partially overlaps the instantly claimed temperature range. Furthermore, based on the teachings of Preston, a PHOSITA would have been motivated to adjust to temperature according to the particular wax present in the composition as Preston suggests conducting the pressure treatment at a temperature at or above the melting point of the wax.
Claims 20 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Ashmore (WO 2013/158410 A1) in view of Zhang (WO 2018/175767 A1).
Regarding claims 20 and 30, Ashmore teaches all of the claimed elements as stated above. Furthermore, Ashmore indicates treating wood using a wax having a melting point above 75°C imparts the wood with beneficial characteristics, including improved water repellency over time and lower cost (p. 1, ¶ [0001]).
Ashmore does not explicitly teach the wood is a railroad tie, bridge timer, utility pole, a post, a piling, or a cross arm.
Zhang teaches wood preservative compositions, which can be, “…used for supplemental or remedial treatment of wood in service, such as utility poles and railroad ties.” (¶ [0088]).
Zhang does not explicitly teach an exemplary composition containing a wax.
Prior to the filing of the instant application, a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to use the wood preservation composition on a railroad tie, bridge timer, utility pole, a post, a piling, or a cross arm based on the teachings of Endo because Ashmore indicates the composition improves water repellency, an important characteristic for wooden structures which may be exposed to rain or extreme weather conditions, and Zhang discloses wood preservation compositions are beneficial for “service” wood, specifically mentioning utility poles and railroad ties.
Non-Statutory 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 1-2, 4, 7-8, 11-12, 14, 17, 21-22, 26, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-51 of U.S. Patent No. 7,850,771 B2 and Claims 1-4 and 10-11 of U.S. Patent No. 7,264,886 B2 in view of Ashmore (WO 2013/158410 A1).
Patent ‘771 claims a wood preservative composition comprising an organic preservative and an organic acid, which are solubilized in an organic phase substantially free of volatile organic compounds, as well as an emulsifier (Claim 1). The organic preservative may be 3-iodo-2-propynyl butyl carbamate, chlorothalonil, an isothiazolone, or a triazole (Claim 2) or propiconazole, tebuconazole, hexaconazole, cyproconazole, or diniconazole (Claim 3). The organic phase can contain a hydrophobe (Claim 5), said hydrophobe may be a wax (Claim 6).
Patent ‘771 does not claim the wax which may be included in the organic phase has a melting point between about 75°C and 100°C.
Patent ‘886 claims a wax emulsion water repellant composition comprising wax, surfactants (Claim 1), wherein the wax emulsion may also include a wood preservative (Claim 4). Patent ‘886 also claims a method of treating wood, comprising treating wood with the wax emulsion of claim 1 (Claim 11).
Patent ‘886 does not claim the wax emulsion composition contains an organic solvent or that the wax has a melting point between about 75°C and 100°C
Ashmore teaches an exemplary wood preservation mixture containing a commercial wax emulsion, 800 ppm 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one (“DCOIT”), and dipropylene glycol methyl ether (p. 6, ¶ [0034-0037). Among the disclosed commercial wax emulsions is carnauba wax, which a skilled artisan would recognize is a natural wax, having a melting point of 85°C (p. 5, ¶ [0033], Table 1). Ashmore discloses a procedure by which the composition is applied to Southern Yellow Pine wood involving pressure treating the wood by reducing the pressure inside the pressure vessel equipment and removing the vacuum to draw the composition into the wood (p. 6, ¶ [0040]). Furthermore, Ashmore discloses the wood preservative composition contains a wax having a melting point greater than 75°C and less than 250°C (p. 2, ¶ [0014]). The wax may be a plant wax, vegetal wax, mineral wax, synthetic wax, carnauba wax, and/or polyolefin wax (p. 2, ¶ [0015]). The composition also comprises an oil, which could be propylene glycol monoesters of fatty acids, wherein the amount of oil, by weight based on the weight of the aqueous wood preservative composition, is 0.02% or more and 2% or less (p. 4, ¶ [0026-0027]). Furthermore, Ashmore discloses the wood preservative composition contains a non-aqueous solvent, such as ester and ether solvents and/or glycols and their ethers and esters, like propylene glycol phenyl ether (p. 3-4, ¶ [0025]).
Ashmore does not explicitly teach the wax has an oil content between about 1% to 10%.
A PHOSITA would have been motivated to prepare a wood preservation composition as disclosed by Ashmore because a person having ordinary skill in the art (PHOSITA) following the teachings of Ashmore would have found it prima facie obvious to prepare a creosote- and pentachlorophenol-free wood preservative composition comprising a preservative, a wax having a melting point above about 75°C to below 100°C, and an organic solvent because Ashmore discloses a wood preservation composition which may contain all the aforementioned components. Thus, a skilled artisan would have been motivated to prepare a composition comprising the instantly claimed components and apply said composition to wood. While Ashmore does not explicitly state the specific oil content within the commercial wax emulsions, Ashmore does indicate oil may be included in the composition (p. 6, ¶ [0036]; p. 7, ¶ [0045], Table 2) and states adding oil to the composition improves DCOIT penetration into wood (p. 8, Bottom Paragraph). Additionally, a skilled artisan would understand the oil content within the wax would depend on the level to which it has been refined, with unrefined wax containing more oil than refined wax. Thus, a PHOSITA would have been motivated to include an oil-containing wax in the composition and would have known to optimize the specific amount of oil according to the desired DCOIT wood penetration based on the teachings of Ashmore (MPEP 2144.05(II)(A)). Furthermore, a skilled artisan could have predicted a wood preservation composition which is effective in preserving one type of wood would also be effective in preserving other types of wood.
Because claims 1-2, 4, 7-8, 11-12, 14, 17, 21-22, 26, and 29 in the instant application would have been obvious over Claims 1-51 of U.S. Patent No. 7,850,771 B2 and Claims 1-4 and 10-11 of U.S. Patent No. 7,264,886 B2 in view of Ashmore, claims 1-2, 4, 7-8, 11-12, 14, 17, 21-22, 26, and 29 in the instant application are not patentably distinct from Claims 1-51 of U.S. Patent No. 7,850,771 B2 and Claims 1-4 and 10-11 of U.S. Patent No. 7,264,886 B2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA L BAUER whose telephone number is (571)272-5752. The examiner can normally be reached 8am-5pm.
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/B.L.B./Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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