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 § 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 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]). 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, Neodene 26+, within the exemplified formulation of Ambroggio (p. 3, Table 1, Footnote), which reads on the claimed “unsaturated wax” as described in the rejection of claim 1, above, contains linear alpha olefins of 26 or more carbons in amounts of at least 85 wt%, which reads on the claimed “majority.”
Regarding claims 11-12, Ambroggio teaches the formation of, inter alia, belts, tires, and hoses using the inventive composition ([0040]).
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed April 8, 2026, with respect to 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) rejection of claims 1-6, 8-18, and 20-22 has been withdrawn.
Applicant's remaining arguments, with respect to 35 U.S.C. 103, have been fully considered but they are not persuasive.
Applicant asserts that Perez Velez fails to teach the use of its inventive compounds within the field of tire manufacturing because the majority of the disclosure relates to other uses such as candles, coatings, adhesives, etc., and states that “it provides no example, no data, and no guidance on using the unsaturated dimer (internal olefin intact) as the anti-ozonant wax;” however, as stated previously, Perez Velez specifically points out the suitability of the inventive compounds within tire manufacturing and explicitly states that they are suitable in rubber formulations where they may be used as an ozone protecting barrier (i.e., anti-ozone waxes) ([0106]). While this may not be the prevailing focus of the inventive disclosure, Perez Velez nonetheless mentions the suitability for tire manufacturing and specifically states the use as an anti-ozonant. 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).
While Perez Velez does mention hydrogenation, it is important to note that partial hydrogenation is specifically contemplated therein (e.g., [0006]). Therefore, while the waxes of Perez Velez are partially paraffinic, the waxes of Perez Velez include unsaturated linear alpha olefin dimers. Therefore, the reference in Perez Velez which mentions the suitability of the inventive wax compositions as being suitable for tire manufacturing includes the non-hydrogenated linear alpha olefin dimers as anti-ozonant waxes.
Applicant states that there is no teaching of the claimed low viscosity or specific C20-C24 LAO feed; however, as described above, Perez Velez teaches the use of C12-C100 LAOs ([0052]), and teaches a viscosity of 2 to 20 cSt ([0046]). While applicant contends that the range of LAO carbon chain lengths is huge, it is important to note that Perez Velez further specifies a preferred range of C12 to C26 ([0052]), which encompasses the claimed range with a high degree of precision.
Applicant asserts that the viscosity taught by Perez Velez refers to that of the wax composition as opposed to the claimed dimer; however, as described above, the composition of Perez Velez contains the claimed unsaturated dimers and, arguendo, teaches that the overall wax composition has an overlapping viscosity range. 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 characteristic would therefore necessarily be present in Perez Velez.
Applicant asserts that the teachings of Perez Velez concern only the hydrogenated products, however Perez Velez specifically and explicitly points out that hydrogenation may be optionally incomplete (e.g., the Title includes “partially hydrogenated;” also see abstract, [0005], [0006], [0017], etc.).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, as described above, Perez Velez specifically teaches the incorporation of LAO dimers which are not hydrogenated (i.e., the composition is merely partially hydrogenated). Furthermore, the specifically claimed carbon chain lengths are indicated within Perez Velez within the preferred ranges with a high degree of precision ([0052]). Finally, the claimed viscosity range is present with in Perez Velez, being specifically disclosed as 2-20 cSt ([0046]). Assuming arguendo that said viscosity range only refers to the overall wax composition, the same LAO dimers are present within Perez Velez and would therefore possess the same viscosity characteristic as claimed. The instant specification states that the claimed olefinic dimer may be formed using a metal carbene/Grubbs catalyst ([0136]), the same as described by Perez Velez ([0052] and [0147]).
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.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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