N D0142ETAILED 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 .
Election/Restrictions
Applicant's election with traverse of Group I and Species II, in the reply filed on June 25, 2026, is acknowledged. The traversal is on the grounds that the search of the product claims necessarily overlaps with the required search for the methods, and that it would not be an undue burden for Examiner to search and consider claim 1-20. This is not found persuasive because at least the inventions have acquired a separate status in the art in view of their different classification.
Additionally, Applicant argues that the scope should be extended to embodiments that are so related as to fall within the same inventive concept and reduction to practice. This is not found persuasive because there is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Applicant has not provided evidence to the contrary.
Claims 7 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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 2-4, 10, and 13-15 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.
Regarding claims 2-4 and 13-15, claim 2 recites that composition includes an odor removal agent, claim 3 recites that the composition includes a complexing agent, claim 4 recites that the composition includes an antioxidant, and claim 13 recites that the composition includes a fragrance. The claims are dependent from claim 1, which recites an alkyd resin in combination with one or more of a complexing agent, an antioxidant, a fragrance, and an odor removal agent. Since claims 2-4 and 13 do not recite back to “the” complexing agent, “the” antioxidant, “the” fragrance, and “the” odor removal agent, it is unclear if claims 2-4 and 13-15 are requiring additional components separate from those claimed in claim 1, or if claims 2-4 and 13-15 are intended to refer back to the recited components of claim 1.
Regarding claims 10 and 15, at least “gnee oil”, “cardamon oil” and “crypress oil” are not oils ordinarily known in the art. Therefore, it is unclear what oils are intended.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-6, 8-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2019/0071576 to Schepers.
Regarding claims 1-6, 8-14, and 16, Schepers teaches use of alkyd resins for disinfecting purposes without any additional external or internal biocides (Schepers, Abstract, paragraph 0012). Schepers teaches that the term “alkyd resin” refers to a polyester modified by the addition of fatty acids, such as a branched polyester containing fatty-acid side groups (Id, paragraphs 0023, 0030). Schepers teaches that the polyester is modified with a fatty acid residue (Id., paragraph 0026). Schepers teaches that the term “fatty acid” refers to a carboxylic acid having either a saturated or unsaturated aliphatic chain, wherein preferably, the number of C-atoms in the aliphatic chain is at least 6 (Id., paragraph 0027).
Regarding the claimed complexing agent, antioxidant, fragrance, and odor removal agent, Schepers teaches additional polyacids such as oxalic acid, malonic acid, and succinic acid among others (Schepers, paragraph 0024), and polyalcohols such as sugar alcohols including mannitol and xylitol, and modification with unsaturated or saturated oils such as peppermint oil and coconut oil (Id., paragraphs 0031-0032), wherein the oils can be present in the alkyd resin as such or as derivatives thereof such as ascorbic acid (Id., paragraph 0033). Note that peppermint oil is ordinarily known in the art as an essential oil having a boiling point higher than 150ºC, that the sugar alcohols are polyalcohols, and that ascorbic acid is ordinarily known in the art as vitamin C. Examiner takes Official Notice of such facts. Schepers teaches that the amount of unsaturated or saturated oil is higher than 60 wt.-% (long-oil alkyd resin), between 40 wt.-% and 60 wt.-% (medium-oil alkyd resin), or lower than 40 wt.-% (short-oil alkyd resin) based on the total weight of the alkyd resin (Id., paragraph 0035).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the alkyd resin of Schepers, wherein the resin includes the claimed components in the claimed amounts, motivated by the desire of forming a conventional alkyd resin composition based on the totality of the teachings of Schepers.
Regarding claim 12, Schepers teaches that the alkyd resin can be further combined with a polymer such as an elastomer, including silicone (Schepers, paragraphs 0050-0052). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the alkyd resin of Schepers, wherein the resin includes a silicone resin, motivated by the desire of forming a conventional alkyd resin composition based on the totality of the teachings of Schepers. Note that Applicants’ specification teaches that hydrophobing agents include silicones.
Claim 15 is rejected under 35 U.S.C. 103 as obvious over Schepers, as applied to claims 1-6, 8-14, and 16 above, in view of USPN 7,514,102 to Overman.
Regarding claim 15, Schepers teaches the inclusion of an oil such as peppermint oil and coconut oil. Schepers does not appear to teach the claimed essential oil. However, Overman teaches admixing plant essential oils to coatings for the purpose of repelling insects (Overman, Abstract). Overman teaches that the plant essential oils are encapsulated in film solids of a dried coating, paint, or stain (Id., column 3 lines 38-47). Overman teaches that the coating will dry or cure via oxidative polymerization in the case of traditional alkyd paints (Id., column 4 lines 4-15). Overman teaches that oils include peppermint oil, rosemary oil, and clove oil (Id., column 4 lines 45-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the alkyd resin of Schepers, and substituting peppermint oil with an oil, such as claimed, as taught by Overman, motivated by the desire of forming a conventional alkyd resin composition having a desirable odor in addition to providing insect repellent properties. Since the prior art combination teaches essential oils as claimed, it is reasonable for one of ordinary skill to expect that the oils inherently have a boiling point within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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