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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 28, 2026 has been entered.
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 1-6, 8-18, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ambroggio (WO 2023/002401 A1, hereinafter referring to US 2024/0368382 A1 as the United States equivalent) in view of Perez Velez (WO 2021/183330 A1). Shell (Neodene 26+ Technical Datasheet) is included as an evidentiary reference.
Regarding claims 1 and 13, Ambroggio teaches an elastomeric composition comprising at least one elastomeric polymer and at least one long-chain olefin (abstract). Ambroggio teaches that the inventive composition is particularly useful for the formation of tire sidewalls ([0040]), and specifies that the long-chain olefin behaves as an anti-ozonant within the composition ([0025]). Ambroggio specifically teaches vulcanization of the rubber blend which contains wax (e.g., [0046]).
Ambroggio differs from claim 1 because it is silent with regard to the long chain olefins being in the form of dimers, and having the claimed kinematic viscosity range.
In the same field of endeavor, Perez Velez teaches wax compositions obtained by subjecting one or more linear alpha olefins to olefin metathesis and hydrogenation (Abstract). Perez Velez teaches that the inventive compounds are useful within tire compositions ([0106]), teaches that they are useful in tires as anti-ozonants ([0106], likewise to Ambroggio [0025]) and teaches that they may be in the form of dimers (Abstract), formed from alpha olefins each having carbon numbers ranging from about 12 to about 100 ([0005]), and having a central carbon-carbon double bond ([0044]). While Perez Velez teaches hydrogenation of the LAO dimers (which would remove carbon-carbon double bonds), partial hydrogenation is specifically contemplated ([0006]). Therefore, the wax composition of Perez Velez includes those having at least some carbon-carbon double bonds which remain after hydrogenation – thereby meeting the limitation requiring that the internal olefin “remains in the LAO dimers.” Perez Velez further teaches that the inventive compounds may have kinematic viscosities at 100°C ranging from about 2 cSt to about 20 cSt ([0046]), which overlaps the claimed range of “6.5 cSt or less,” establishing a prima facie case of obviousness.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the inventive dimeric LAOs of Perez Velez in place of the LAO of Ambroggio, as Perez Velez teaches them as suitable anti-ozonant additives for tire formulations ([0106]).
Regarding claims 2-3 and 14-15, Ambroggio exemplifies the use of natural rubber and polybutadiene rubber (p. 3, Table 1, Footnote).
Regarding claims 4-5 and 16-17, as described above, Ambroggio exemplifies the use of Neodene 26+, which reads on the claimed “C18+ linear alpha olefins (LAOs).” Neodene 26+ has a kinematic viscosity of about 4.5 mm2/s (equivalent to 4.5 centistokes) (see Shell p. 1), falls within and therefore anticipates the claimed range of “about 4 cSt or less.” While 4.5 cSt is higher than 4 cSt, the claim has been drafted to include the term “about,” which reflects that the value of 4 cSt is not a hard cutoff for included kinematic viscosities. It is the Office’s position that 4.5 cSt is sufficiently close to 4 cSt so as to fall within the claimed range as drafted.
Regarding claims 6 and 18, as described above, Ambroggio teaches the use of Neodene 26+. Neodene 26+ comprises at least 85 wt% of C26+ LAOs (p. 3, Table 1, Footnote).
Regarding claims 8 and 20, Ambroggio teaches that the inventive composition may comprise the long-chain olefin as the only ozone-protective compound ([0025]). Therefore, the inventive composition of Ambroggio may include another anti-ozonant compound.
Regarding claims 9 and 21, Ambroggio teaches the additional incorporation of, inter alia, parrafin wax or microcrystalline wax ([0026]).
Regarding claims 10 and 22, Perez Velez teaches that the wax may comprise total linear olefin dimers of about 70 wt% or more, provided that at least some linear paraffins are present ([0047]). Perez Velez even includes that the same may comprise 100 wt% of the wax, and the specification of “at least some” paraffinics aligns with the teachings above that Perez Velez specifically includes compositions wherein hydrogenation is incomplete (or even the minority of compounds present in the wax composition). The wax composition of Ambroggio as modified by Perez Velez therefore reads on the claimed limitation requiring a “majority” of LAO dimers.
Regarding claims 11-12, Ambroggio teaches the formation of, inter alia, belts, tires, and hoses using the inventive composition ([0040]).
Regarding claim 23, as described above, Ambroggio as modified by Perez Velez teaches a composition containing all of the claimed components. Regarding the limitation requiring that the blend “consists essentially of” the claimed components, and regarding the limitation requiring that the wax “consists essentially of” the claimed components, the phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristics” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). See MPEP 2111.03.III. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising."
In the case of the claimed “blend” and “wax,” the instant Specification states the requirement of the claimed kinematic viscosity range as a basic characteristic of the wax, and imposes no materially limitations on the blend beyond its ability to be formed into a tire composition. Furthermore, as described above, the wax of Perez Velez which overlaps the claimed composition is indicated as having a kinematic viscosity which likewise overlaps the claimed viscosity range(s). Finally, the instant Specification specifically states that paraffinic components are an optional component within some embodiments of the purported invention ([0056]). Therefore, prima facie, the basic and novel characteristic of the claimed blend and wax are not materially affected by the presence of paraffinic components as wrought by the hydrogenation step within Perez Velez – the resulting mixture of waxes nonetheless meets the claimed viscosity range.
Response to Arguments
Applicant's arguments filed June 28, 2026 have been fully considered but they are not persuasive.
Applicant asserts that the Examiner has failed to establish a prima facie case of obviousness, stating that Perez Velez’s explicit objective is to utilize hydrogenation to increase melting point and viscosity. Assuming arguendo that this is the case, Perez Velez nevertheless specifically contemplates incomplete hydrogenation and teaches a viscosity range which overlaps the claimed range, as described above. Applicant states that the Examiner “misconstrues the fundamental technical disclosure and objective” of the document, however the Examiner has merely pointed out the boundaries set forth by Perez Velez in achieving its inventive goals. While hydrogenation is required by Perez Velez, partial hydrogenation is explicitly included and the viscosity ranges resulting therefrom nevertheless overlap the claimed range. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Applicant’s assertion that Perez Velez only includes unsaturated dimers as some form of an intermediate product is unconvincing in view of the fact that Perez Velez includes partially hydrogenated products as suitable in the inventive wax composition. Some of the double bonds will be hydrogenated to form paraffinics, but it is not required that all double bonds are hydrogenated.
Applicant states that “Perez Velez does not teach selecting an unhydrogenated C20--C24 LAO dimer fraction in which the internal olefin remains in the LAO dimers while maintaining a kinematic viscosity of about 6.5 cSt or less at 100°C.” However, Perez Velez teaches a wax composition which includes unhydrogenated LAO dimers, and whose viscosity overlaps said viscosity range. Importantly, the claimed wax “comprises” LAO dimers (in claim 1) and “consists essentially of” LAO dimers in claim 23. As described above, the presence of paraffinics is contemplated by the specification, and the incorporation thereof within Perez Velez does not prevent the inventive wax from meeting the claimed viscosity range.
Alternatively, the non-hydrogenated LAO dimers of Perez Velez are substantially identical to those as claimed. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscosity range will therefore necessarily be present in the non-hydrogenated LAO dimers of Perez Velez.
Applicant argues that the Examiner has failed to provide a rationale as to why one having ordinary skill in the art would only choose the unhydrogenated fraction within Perez Velez to add into Ambroggio; however, this is not the basis of the rejection applied above. To read on the claimed composition, a person having ordinary skill in the art would merely need to include the wax composition of Perez Velez, not only a portion thereof. See Above.
Applicant’s final arguments are directed towards unexpected results. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d). In this case, the compositions referenced by the Applicant (positive controls 1 and 2, and Experimental compositions 3-5) are each formed using the exact same rubber components in the exact same compositional amounts (50 phr NR and 50 phr BR) despite the claimed composition being open to virtually any mixture thereof, in addition to other rubber components (c.f. claim 2 which includes many additional rubber types). Furthermore, the experimental compositions are composed using a single C20-C24 LAO dimer wax mixture, despite the claims being open to virtually any mixture thereof. The viscosity of this mixture is 2 cSt according to Table 1, and therefore the experimental results likewise fail to provide data for the entirety of the claimed viscosity range. The Applicant need not provide data for every possible composition as claimed, however the experimental data provided is not reasonably commensurate in scope with the claimed composition. Therefore, the evidence provided is insufficient to rebut a prima facie determination of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
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