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 .
The amendments filed 1/20/26 overcome the objections to the specification and to claim 2 set forth in the office action mailed 7/24/25. The cancelation of claim 9 obviates the rejection of that claim under 35 USC 112(d). The rejections set forth under 35 USC 103 in the office action mailed 7/24/25 are maintained below.
Claim Rejections - 35 USC § 103
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Uptain (U.S. PG Pub. No. 2010/0205851) in view Kurth (WO 2019/140375 A1).
In paragraph 7 Uptain discloses hybrid wax compositions suitable for use in manufacturing wax articles such as candles, comprising a hydrogenated natural oil-based wax and a paraffin wax. In paragraph 69 Uptain discloses that the paraffin wax is typically present in an amount of about 20 to about 49% by weight, within the range recited for the wax material of claims 1 and 5. In paragraphs 74 and 207 Uptain discloses that the composition can also comprise a hydrogenated metathesized natural oil-based wax, meeting the limitations of claim 6, which is typically present in an amount of about 5 to about 20% by weight of the composition, leading to a total combined amount of paraffin wax and hydrogenated metathesized natural oil-based wax still with the range recited for the wax material of claim 1. The composition of Uptain does not require the inclusion of unreacted natural oils, meeting the limitations of claim 7, and even if unreacted natural oils were present in the natural oil-derived components, they would be present in amounts within the broad range recited in claim 7, noting the concentrations of the other components in the wax composition of Uptain, such as the about 20% minimum concentration of the paraffin wax.
In paragraphs 217-224 Uptain discloses that the composition can comprise various additives recited in claim 11, and teaches in paragraph 218 that the colorant (coloring agent) is typically present in an amount of about 0.001 to about 2% by weight, overlapping the range recited for the additive of claim 12, and leaving an amount of wax formulation within the range recited in claim 10. Since the additives of Uptain are optional, the candle wax formulation of Uptain also meets the limitations of claim 10 for the case where the candle wax composition comprises 100% by weight of the wax formulation. In the reference’s claim 27 Uptain discloses a candle comprising the wax composition and a wick, as recited in claim 13.
Uptain discloses in paragraph 61 that the hydrogenated natural oil-based waxes can be present in an amount of about 50 to about 99% by weight of the wax composition, overlapping the range recited for the natural oil-based petrolatum composition of claims 1 and 4. Uptain does not specifically disclose a hydrogenated natural oil-based wax meeting the limitations of the natural oil-based petrolatum composition of the claims.
In paragraphs 8 and 96 Kurth discloses a method of making a flexible wax composition prepared from the transesterification of a mixture of a fatty acid and/r oil, a fatty acid dimer, and glycerin, all as recited in the pre-esterification mixture of claim 1. In paragraph 97 Kurth discloses that the fatty oil can be a natural oil, and discloses in paragraph 26 that the natural oil can be partially or fully hydrogenated. In paragraph 103 Kurth discloses that the reaction mixture typically comprises about 15 to 30% by weight of dimer, within the range recited in claim 1, and leaving about 70 to 85% by weight of glycerin and fatty acid/oil, also within the range recited in claim 1. As the reaction products of Kurth meet the compositional limitations of the natural oil-based petrolatum composition, they will have the cone penetration value and polydispersity meeting the limitations of claim 1, and an iodine value meeting the limitations of claims 2-3. In paragraph 9 Kurth discloses that the flexible wax compositions are useful in candles. The inclusion of the flexible wax composition of Kurth as the hydrogenated natural oil-based wax in the composition and candle of Uptain meets the limitations of claims 1-7 and 9-13. Additionally, Uptain discloses in paragraph 67 that the paraffin wax typically has a melting point of about 130° to about 140° F, and Kurth discloses on paragraph 84 that the flexible wax composition has a drop point of about 122° to about 140° F (50° to 60° C). The overall wax composition of Uptain and Kurth will therefore have a melt point within the range recited in claim 8.
It would have been obvious to one of ordinary skill in the art to include the flexible wax composition of Kurth as the hydrogenated natural oil-based wax in the composition and candle of Uptain, because Kurth teaches in paragraphs 10-11 that it has improved properties in terms of creep stiffness, flexibility, and manufacturing properties.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Uptain in view of Kurth as applied to claims 1-8 and 10-13 above, and further in view of Freeman (U.S. Pat. No. 6,033,210).
The discussion of Uptain and Kurth in paragraph 3 above is incorporated here by reference. Uptain and Kurth disclose a wax composition meeting the limitations of claim 1 and comprising the components recited for the wax formulation of claim 14, and a candle comprising the wax composition. Uptain and Kurth do not disclose the specific method of preparing a wax formulation of claim 14.
In column 3 lines 37-43 Freeman discloses a candle which can contain a mixture of paraffin and petrolatum, which is solid at ambient temperature. In column 4 lines 17-20, Freeman discloses that the mixture is formed by melting the paraffin, melting the petrolatum, and mixing the melted paraffin and melted petrolatum. When the candle of Uptain and Kurth is prepared in this manner, by melting the paraffin wax of Uptain and the natural oil-based flexible wax of Kurth (which meets the limitations of the claimed natural oil-based petrolatum composition, as discussed in paragraph 10 above), and combining the two, the limitations of the method of claim 14 are met, noting that claim 14 does not provide any prohibition on melting the petrolatum composition.
It would have been obvious to one of ordinary skill in the art to prepare the wax formulation of Uptain and Kurth by the method of Freeman, since Freeman teaches that it is a suitable method of combining a paraffin and a petrolatum for use in a candle.
Claims 1-5, 7-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 108690731 A) in view of Kurth.
An English-language machine translation of Lin, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 2 Lin discloses a candle, and in paragraphs 8-10 Lin discloses a candle composition comprising beeswax, which is a wax material as recited in claim 1, and paraffin. The beeswax is present in amounts within the range recited in claim 1 and overlapping the range recited in claim 5, noting that the “about 10%” lower endpoint of the range recited in claim 5 allows for amounts below 10%, as defined in paragraph 20 of the current application. The candles of Lin further comprise cottonseed oil in amounts within the range recited for the natural oil of claim 7. As the composition of Lin meets the compositional limitations of the claims and is capable of use as a candle it meets the limitations of the candle wax of claims 9-10. The compositions of Lin also comprise various additives such as coloring agents (pigment) and scenting agents (essence) recited in claim 11 and which are present in amounts overlapping the range recited in claim 12. In paragraph 4 Lin discloses that candles comprise a wick in a candle composition, meeting the limitations of claim 13.
The difference between Lin and the currently presented claims is that Lin does not disclose the inclusion of the natural oil-based petrolatum in the candle composition.
In paragraphs 8 and 96 Kurth discloses a method of making a flexible wax composition prepared from the transesterification of a mixture of a fatty acid and/r oil, a fatty acid dimer, and glycerin, all as recited in the pre-esterification mixture of claim 1. In paragraph 97 Kurth discloses that the fatty oil can be a natural oil, and discloses in paragraph 26 that the natural oil can be partially or fully hydrogenated. In paragraph 103 Kurth discloses that the reaction mixture typically comprises about 15 to 30% by weight of dimer, within the range recited in claim 1, and leaving about 70 to 85% by weight of glycerin and fatty acid/oil, also within the range recited in claim 1. As the reaction products of Kurth meet the compositional limitations of the natural oil-based petrolatum composition, they will have the cone penetration value and polydispersity meeting the limitations of claim 1, and an iodine value meeting the limitations of claims 2-3. In paragraph 9 Kurth discloses that the flexible wax compositions are useful in candles. In paragraph 4 Kurth discloses that a candle that has a reduced amount of paraffin or no paraffin at all would be preferable, and in paragraph 28 discloses that the wax composition can be substantially free of paraffin. The inclusion of the flexible natural oil-based wax composition of Kurth as a replacement for the paraffin in the composition and candle of Lin therefore meets the limitations of claims 1-5, 7, and 10-13. Additionally, beeswax has a melting point of 144° to 147° F, and Kurth discloses on paragraph 84 that the flexible wax composition has a drop point of about 122° to about 140° F (50° to 60° C). The combined formulation of the beeswax of Lin and flexible natural oil-based wax composition of Kurth will therefore have a melt point within the range recited in claim 8.
It would have been obvious to one of ordinary skill in the art to use the flexible natural oil-based wax composition of Kurth as a replacement for the paraffin in the composition of Lin, since Kurth teaches in paragraph 4 that paraffins emit smoke, particles, and odor when burning and that a candle that has a reduced amount of paraffin or no paraffin at all would be desirable. Kurth further teaches in paragraphs 10-11 that the flexible wax composition has improved properties in terms of creep stiffness, flexibility, and manufacturing properties.
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive. Regarding the rejection over Uptain and Kurth, applicant argues that Uptain is directed to a freestanding compression candle which passes a slump test, and argues that Uptain requires hardness and compression strength that would not allow for the inclusion of the claimed natural oil-based petrolatum composition. It is noted that the currently presented claims except for claim 13 are drawn to a wax formulation or candle wax composition rather than specifically to a candle, and claim 13 just generically recites a candle comprising a wick in the wax formulation. The claims do not recite any specific type of candle, and paragraphs 109-110 of the specification indicate that the candle can be unmolded, and can be formed by a broad range of methods, including those not specifically disclosed in the application (“Other methods for producing a candle are known to those of skill in the art”.). The claim limitation regarding cone penetration value applies specifically to the natural oil-based petrolatum composition and not the candle as a whole, and applicant has not provided evidence that the candle formed by the combination of Uptain and Kurth would not function as a freestanding and/or compression candle. In paragraphs 66 and 216 Uptain indicates that the hybrid wax of the reference has a drop point in line with the drop point disclosed in paragraph 69 of the current application and several of the exemplified natural oil-based petrolatums, as well as the melting points recited in claim 8 of the current application.
Regarding Kurth, applicant argues that the flexible wax of Kurth is stiffer than the claimed natural oil-based petrolatum. However, as discussed in the rejection, the flexible wax of Kurth is prepared by esterifying an esterification mixture comprising the claimed reactants in the claimed amounts. The examples of Kurth indicate that the reactants include the same T18 Dimer used in the examples of the current application, the same stearic acid reactants used in some of the examples of the current application, and glycerin (glycerol), as used in some of the examples of the current application. and paragraphs 26 and 97 or Kurth, as well as the examples, indicate that the reactants can same fully hydrogenated fatty acids used in the examples of the current application. Table 6 of Kurth indicates that the flexible waxes have drop points within the range taught in paragraph 69 of the current specification for the natural oil-based petrolatum. In paragraph 107 Kurth discloses that the "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, applicant has not provided any evidence that the flexible wax of Kurth would differ from the those of the claimed natural oil-based petroleum or would have a cone penetration value or polydispersity index outside the claimed range.
Regarding the rejection over Uptain, Kurth, and Freeman, applicant argues that Freeman does not disclose a natural oil-based petrolatum, and is directed to a container candle. The claim, however, does not recite a candle or any steps other than combining a wax in molten form with the natural oil-based petrolatum, and Freeman discloses combining a wax and a petrolatum in the claimed manner, outside of the candle container. Freeman therefore provides motivation to combine the paraffin wax of Uptain and the natural oil-based flexible wax of Kurth (which meets the limitations of the claimed natural oil-based petrolatum composition, with no indication that this method of combining is specific to the intended use of Freeman or the specific petrolatum of Freeman.
Applicant indicates that the same arguments made regarding Uptain and Kurth would apply to the rejection over Lin and Kurth, and the examiner maintains the positions taken above.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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