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 .
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 12-14 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.
Claim 12 recites the limitation "the copper". There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the at least one organic co-biocide". There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the at least one organic co-biocide". There is insufficient antecedent basis for this limitation in the claim.
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).
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.
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 1-10 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Heckert (U.S. Patent # 1,602,577) in view of Wood.
In the case of claims 1 and 18, Heckert teaches a method for treating wood products in the form of poles and railway ties (Page 1 Lines 1-12). Heckert teaches having placed the wood product in a treatment chamber (Page 1 Lines 72-88) followed by injecting an oil-based/creosote oil preservative into the chamber and pressurizing the chamber to at least 150 pounds per square inch or at least about 10.3 bar to impregnating the wood product with the preservative (Page 1 Line 89 through Page 2 Line 9). After the wood had been impregnated with the preservative the chamber was drained of preservative and a drying phase was performed on the wood by subjecting the wood to vacuum to remove excess preservative (Page 2 Lines 10-25).
Furthermore, as was discussed previously, the pressurized impregnation of the wood with the preservative was conducted at a pressure of at least 10.3 bar, which overlapped with the claimed range of 0.5 to 12 bar. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Heckert does not teach that after impregnating the wood with the oil-based preservative the treatment chamber was released to atmospheric pressure and an intermediate drying phase was conducted wherein the intermediate drying phase comprised one or more of: incubating the impregnated wood product with the oil-based preservative at a temperature of no greater than 90 ℃, at least partially draining the oil-based preservative from the treatment chamber and/or applying a vacuum within the treatment chamber.
Wood teaches a wood product which had been pressure treated with an oil-based preservative including creosote-based preservative (Page 1, 1st Column Lines 1-5 and 2nd Column Lines 39-50). 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 ℃ (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/chamber (Page 1, 2nd Column Lines 30-38). Wood teaches that the elevated temperatures allowed for recovery of the absorbed preservative and thus controlling the gross impregnation to a desired final net impregnation (Page 2, 2nd Column Lines 16-28).
Based on the teachings of Wood, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have released the pressure of the treatment chamber of Heckert to atmospheric pressure after impregnation and then subjecting the wood to “intermediate drying” by incubating the wood while in the oil-based preservative at a temperature in the range of about 52 to about 107 ℃ in order to recover excess absorbed preservative from the wood product. Furthermore, the taught range of about 52 to about 107 ℃ overlapped with the claimed range of no greater than 90 ℃ and as was discussed previous overlapping ranges are prima facie obvious.
As for claim 2, neither Heckert nor Wood teach that during intermediate drying about 5% to about 30% of the preservative was drained from the chamber. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Furthermore, Wood teaches that the amount of preservative removed during intermediate drying affected the gross amount of preservative impregnated into the wood (Page 2, 2nd Column Lines 16-28).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determine optimal amount of preservative drained/removed from the treatment chamber during intermediate drying through routine experimentation because this affected the final amount of preservative left in the wood.
As for claim 3, as was discussed previously, the wood products of Heckert included poles and railway ties.
As for claim 4, Wood teaches that the types of wood products treated with oil-based preservative included pines (Page 2, 2nd Column Lines 50-60).
As for claim 5, Heckert teaches that the creosote oil preservative when introduced int to the treatment chamber had a temperature of 190 to 200 ℉ or about 88 to about 93 ℃, which was within the claimed range of no less than 40 ℃.
As for claim 6, none of the references teach that the oil-based preservative was about 60 ℃ when impregnated into the wood product. However, as was discussed previously, it would have been obvious to have determined optimal values for relevant process parameters.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal temperature for the oil-based preservative of Heckert in view of Wood through routine experimentation because the temperature of the preservative affected the viscosity and penetration of the oil-based preservative.
As for claim 7, Heckert teaches that during the drying phase to remove excess preservative a vacuum of about 15 inches of mercury or about 0.5 bar was applied (Page 2 Lines 10-17).
As for claim 8, none of the references teach that the pressurization of the chamber was for 5 to 300 minutes during impregnation. However, as was discussed previously, it would have been obvious to have determined optimal values for relevant process parameters. Furthermore, Heckert teaches that the duration of pressurization during impregnation affected the amount of preservative impregnated into the wood product (Page 1 Lines 104-111).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal pressurization duration during the impregnation of Heckert in view of Wood through routine experimentation because the duration of pressurization affected the amount of preservative impregnated into the wood product.
As for claim 9, Heckert teaches that after the preservative was drained from the chamber the vacuum was applied for at least 20 minutes (Page 2 Lines 10-25), which overlapped with the claimed range of at least 30 minutes and as was discussed previously overlapping ranges are prima facie obvious.
As for claim 10, none of the references teach that the impregnated wood product had a temperature of no greater than 60 ℃ when removed from the treatment chamber. However, as was discussed previously, it would have been obvious to have determined optimal values for relevant process parameters.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal temperature for the impregnated wood product prior to removing the product from the chamber by routine experimentation in order to determine a temperature at which the product can be safely removed from the chamber.
As for claims 15 and 16, Wood teaches that the incubation at the elevated temperature was conducted for one hour or 60 minutes (Page 2, 2nd Column Lines 29-38).
As for claim 17, neither reference teaches having applied a second vacuum after the removal of excess preservative from the surface of the impregnated wood product. However, Heckert teaches that the vacuum step was conducted in order to remove surplus or unabsorbed oil preservative (Page 2 Lines 82-88). Furthermore, Heckert teaches having conducted a subsequent or final preservative injection after the vacuum treatment to add additional preservative to the wood product (Page 2 Lines 25-54).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have conducted a second vacuum treatment after the first vacuum treatment of Heckert in view of Wood in order to remove surplus/unabsorbed preservative from the wood product after the subsequent/final impregnation step.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Heckert in view of Wood as applied to claim 1 above, and further in view of Marx (U.S. Patent Publication No. 2013/0022829).
The teaching of Heckert in view of Wood have been discussed previously and are incorporated herein.
In the case of claims 11-14, though Heckert and Wood teach having used a creosote/oil-based preservative neither references specification teach that the preservative comprised copper and at least one organic co-biocide. However, as was discussed previously, the process of Heckert was directed to applying an oil-based preservative to poles and ties.
Marx teaches an oil-based wood preservative composition for poles and ties comprising copper and an organic co-biocide (Abstract). Marx teaches that the copper was present in the composition in the amount of about 1% to about 10% by weight (Page 2 Paragraph 0022). Marx further teaches that the co-biocide included isothiazolone and pyrethroid compounds (Page 3 Paragraph 0027) and was present in the amount of about 0.01% to 5% by weight (Page 3 Paragraph 0030). Furthermore, Marx teaches that the composition provided good penetration and distribution within wood/timber (Page 5 Paragraph 0052).
Based on the teachings of Marx, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used the oil-based preservative of Marx as the preservative composition of Heckert in view of Wood because Marx taught a known oil-based wood preservative for poles and ties which had good penetration and distribution within the wood.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rawson (U.S. Patent # 1,756,797) teaches an oil/creosote-based wood preservative process wherein after applying pressure to impregnate the wood with the preservative the wood was incubated within the preservative at an elevated temperature while a vacuum was applied to “dry” the wood by removing excess preservative after which the treatment chamber/retort was drained of preservative and a vacuum was applied.
Conclusion
Claims 1 through 18 have been rejected. No claims were allowed.
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