DETAILED ACTION
This communication responds to the Amendment filed November 03, 2025. Claims 1-20 remain pending. Claims 5-20 were previously withdrawn without traverse in the reply filed on May 9, 2025.
The rejections of claims 1-4 under 35 USC 112 set forth in the Office Action dated 07/03/2025 are WITHDRAWN due to Applicant's responsive amendments.
The rejections of claims 1-4 set forth in the Office Action dated 07/03/2025 are MAINTAINED for the reasons set forth below. To ensure Applicant’s amendments are fully addressed, the rejections are set forth in full.
This action is final.
Claim Analysis
Summary of Claim 1:
A beeswax analogue composition, comprising:
a)
a microcrystalline wax with isoparaffinic (branched) hydrocarbons and naphthenic hydrocarbons, at percentages from 48.55% to 58.55% by weight of the total composition;
b)
a macrocrystalline wax with unbranched alkanes at percentages from 37.45% to 47.45% by weight of the total composition;
c)
an organic resin at percentages from 0.01% to 4% by weight of the total composition; and
d)
an organic pigment at percentages from 0.0001% to 4% by weight of the total composition.
Claim Interpretation
For purposes of examination the preamble, “ A composition constituting a beeswax analogue” is broadly interpreted as a composition that is or acts as a beeswax analogue. Therefore any composition meeting limitations a-d is considered to act as a beeswax analogue.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (U.S. Patent No. 5,063,271) as evidenced by Paraszczak et al. (US 2016/032670 A1) in view of Webster et al. (US2001/0051680 A1).
Regarding claim 1, Jones et al. teach a wax composition comprising from about 1 wt.% to about 80 wt.% of fully refined paraffin wax (which corresponds to the macrocrystalline wax) , from about 1 wt.% to about 50 wt.% of a microcrystalline wax and from about 0.01 wt.% to about 10 wt.% of a hydrocarbon resin derived from a C5 olefin petroleum feedstock or a polyterpene resin (which corresponds to the organic resin) (abstract, claim 16). It is noted that, as evidenced by Paraszczak et al. paraffin (macrocrystalline) wax contains larger crystals and mostly unbranched alkanes compared with microcrystalline wax, which consist of finer crystals and has a higher percentage of isoparaffinic (branched) hydrocarbons and naphthenic hydrocarbons [0057]. Additionally, these microcrystalline and macrocrystalline waxes are known as beeswaxes analogs (see abstract and col.5: 51-60 of US. 6,585,557 B1 listed in the IDS dated 2/28/2022).
Jones et al. and the claims differ in that Jones et al. do not teach the claimed ranges for microcrystalline wax, macrocrystalline wax an organic resin as recited in the instant claim.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Jones et al. overlap the instantly claimed ranges (37.45 wt.% to 47.45 wt.% of macrocrystalline wax, 48.55 to 58.55 wt.% of microcrystalline wax and 0.01 to 4 wt.% of organic resin), and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Jones et al. are silent on the organic pigment as recited in the instant claim.
Referring to the organic pigment, Webster et al. teach colored wax-based articles comprising a blend of waxes including beeswax, paraffin wax, microcrystalline wax among others and an organic colorant such as dyes and pigments (abstract, [0014] [0034]), wherein the pigment include oil soluble organic pigments such as C.I Pigment Yellow 74 and C.I Pigment Yellow 192 [0033]. Webster et al. further teach in the examples 2 and 3 a content of pigment ranging from 0.5 wt.% to 2.18 wt.% ([0117], [0118]), thereby reading on the claimed amount of organic pigment. Considering Webster et al. teach the use of organic pigments compatible with macrocrystalline (paraffin) and microcrystalline wax compositions ([0033], [0034]), therefore it would be obvious to one of ordinary skill in the art, to use the organic pigments of Webster et al. into the wax composition of Jones to achieve a desirable color, thereby arriving to the claimed invention.
Regarding claims 2-4, Jones et al. in view of Webster et al. teach a composition comprising the microcrystalline wax, the macrocrystalline wax, the organic resin and the organic pigment (see rejection of claim 1), which are known materials with stable thermal properties (i.e. microcrystalline wax and macrocrystalline wax have defined melting and softening points, col. 7: table 1 of US Patent 5,063,271 ). Jones et al. teach a process of heating and mixing the wax composition to temperatures ranging from about 220 °F to 320°F (approximately 104°C-160°C) to achieve complete liquefaction (col. 6:38-51,68 and col.7: 1-2), which is similar to the process disclosed in the instant specification (see instant claims 5 and 6). It is noted that Jones’s wax compositions are used in hot melting coatings on fibrous substrates (col.6: 40-42), which implies the composition must maintain structural integrity under various conditions (i.e. storage, shipping and use).
Jones et al. in view of Webster et al. are silent on the claimed properties of the composition as recited in the instant claims.
However, Jones et al. in view of Webster et al. teach a substantially identical composition, wherein the amount of the components a-d overlap with the recited claimed, one of ordinary skill in the art at the time of the invention was made would have expected that the composition properties of Jones et al. in view of Webster et al., will be the same as claimed (freezing temperature of 55-65 °C, composition is stable a temperatures between 40°C to -25°C and the flexibility properties at temperatures as low as -25°C). Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also in re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. See MPEP 2112.01 (I).
Response to Arguments
Applicant's arguments filed 11/03/2025 have been fully considered but they are not persuasive. Regarding the rejection over Jones et al. in view of Webster et al. as evidenced by Paraszczak et al.,
Applicant states “ Jones, Paraszczak, and Webster whether considered individually or in combination, neither teach nor render obvious the composition of any of claims 1-4. Specifically, the Jones, Paraszczak, and Webster all appear to concern industrial hot-melt waxes or colored decorative or casting waxes, while the compositions recited in claims 1-4 are directed to an organic, non-toxic, biologically compatible wax analogue that replicates natural beeswax to restore hive health and enhance honey production.”. In response, attention is drawn to the language of claim 1, wherein Claim 1 is drawn to a beeswax analogue comprising the elements as listed in the instant claim 1. There is not particular requirement for the composition to be a non-toxic organic waxy material for use in a beehive. Further, it is noted that a beeswax analogue can be used in industrial uses such as lubricants and other applications (no just for beehive use). Jones in view of Webster as evidenced by Paraszczak teach a composition including all the claimed elements, therefore reading on a beeswax analogue. It is for these reasons that Applicant's arguments are not found to be persuasive.
Applicant further states “the claimed ranges produce unexpected biological results including a 50% reduction in Varroa mite infestation and a 35% increase in honey production due to the composition of claim 1. Specification at [0032], [0239]”. In response, Examiner acknowledges the Applicant demonstrated this is persuasive based on the use of the claimed composition and a cell size of 4.9 mm compared with original wax with parasites and a cell size of 5.1 mm. However, the Applicant did not provide examples that show that the composition itself commensurate in scope with the composition that is claimed is what yields the unexpected results, thereby excluding the size of the frame being what yields the unexpected results. Applicant should compare a sufficient number of examples including the upper and lower limits of the amounts of the components to show the criticality of the claimed ranges. It is for these reasons that Applicant's arguments are not found to be persuasive.
Further, the composition disclosed by the combination of references is substantially identical to the claimed composition, therefore the properties would be expected to be the same as those required by the instant claim. It is noted that the term "comprising" is considered inclusive and open-ended language and case law has held that the term "comprising" does not exclude additional, unrecited elements or method steps. (Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004), MPEP 2111.03). It is for these reasons that Applicant's arguments are not found to be persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763