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
By amendment filed June 02, 2026, claims 1 and 12 through 14 have been amended. Claims 1 through 18 are currently pending.
Response to Arguments
Applicant's arguments filed June 02, 2026 have been considered but they are not fully persuasive. Applicant’s arguments and amendments are persuasive over the 112(b) and 103 rejections of the claims but are not persuasive over the 102 rejection of claim 18. Applicant argues that the taught process formed a wood product with a reduction in bleeding but does not provide any argument or evidence of how this affected the structure of the wooded product and therefore differentiated the claimed wooden product from that of Wood. Furthermore, applicant has not provided any evidence that performing a step of partially draining the preservative from the treatment chamber during an intermediate drying phase would have affected the structure of the wooden product and differentiated it from that taught by Wood.
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 1-18 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of “at least partially draining the oil-based preservative from the treatment chamber”, and the claim also recites draining the oil-based preservative from the treatment chamber after performing the intermediate drying phase which is the narrower statement of the range/limitation. The term “at least partially draining” encompasses fully draining the treatment chamber of the oil-based preservative and is therefore broader in scope then the limitation of “draining the oil-based preservative from the treatment chamber” which is required after performing the intermediate drying phase. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wood (U.S. Patent # 2,382,374).
In the case of claim 18, Wood teaches a wood product which had been pressure treated with an oil-based preservative (Page 1, 1st Column Lines 1-5 and 2nd Column Lines 39-50). Wood does not specifically teach that the wood product was treated to the same method of claim 1. However, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP section 2113.I.
Furthermore, Wood teaches that the treatment process comprised placing a wood product in a treatment chamber/bath of preservation solution followed by applying pressure to impregnate the wood product with the preservation solution. Following impregnation, the pressure was reduced to atmospheric and an “intermediate drying” phase was conducted by heating the wood product while still immersed in the preservative solution to a temperature in the range of 125 to 225 ℉ or about 52 to about 107 ℃, which overlapped with the claimed range (Page 1, 1st Column Line 41 through 2nd Column Line 30 and Page 2, 1st Column Lines 30-37). After “intermediate drying” the impregnated wood product was subjected to a vacuum and then removed from the bath (Page 1, 2nd Column Lines 30-38).
Allowable Subject Matter
Claims 1-17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Both Heckert (U.S. Patent # 1,602,577) and Wood (U.S. Patent # 2,382,374) teach a method for pressure treating a wood product with an oil-based preservative wherein after impregnation the wood dried by being subjected to vacuum to remove excess preservative. However, neither Heckert nor Wood, fairly teach or suggest having performed prior to vacuum drying an intermediate drying phase wherein the treatment chamber was partially drained of oil-based preservative along with one or more of incubating the impregnated wood product with the oil-based preservative at a temperature or no greater than 85 degrees Celsius and applying a vacuum within the treatment chamber after partially draining the oil-based preservative.
Conclusion
Claims 1 through 18 have been rejected. No claims were allowed.
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 MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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