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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 5/8/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 5/8/2026. In particular, claim 1 has been amended to remove polyester resins from the adhesive Markush group. While the deletion does not appear in the amendment, such was clearly made. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102
Claims 1, 5, 6, 9, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 9,526,678).
With respect to claims 1, 9, and 12, Lee discloses an aqueous cosmetic composition comprising a sucrose fatty acid ester and a film forming polymer (abstract), where the film forming polymer is one that “adheres” to a support and includes styrene-acrylate copolymer (col. 7, lines 1-31). The sucrose fatty acid ester includes sucrose oleate, sucrose polycottonseedate, sucrose polylinoleate, sucrose ricinoleate (col. 6, lines 29-67), i.e., unsaturated fatty acids of sucrose saccharide) in an amount of 0.5-4 wt %. Although Lee discloses the use of other types of sucrose fatty acid ester derived from a saturated fatty acid such as stearic acid, applicant’s attention is drawn to MPEP 2131.02 (A) which states that “..when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named”. Ex Parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).
Lee describes that its film forming polymer “adheres” to a support and therefore reads on claimed “aqueous adhesive composition.” MPEP 2111.02 states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
With respect to claim 5, in one embodiment the film former is a styrene-acrylate copolymer latex (col. 7, lines 12-15).
With respect to claim 6, this claim which further limit the styrene butadiene latex does not exclude the alternative embodiment of styrene acrylate latex. Since the latter embodiment is disclosed by Lee as discussed above, it is proper to include claim 6 in this rejection.
Claim Rejections - 35 USC § 103
Claims 3, 4, 10, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 9,526,678).
The discussion with respect to Lee in paragraph 5 above is incorporated here by reference.
With respect to claim 3, Lee teaches adding cellulose-based thickeners such as carboxymethylcellulose (col. 7, lines 57-60) which reads on claimed at least one adhesive when methylcellulose.
While Lee does not anticipate or require the selection of carboxymethylcellulose, it would have been obvious to one of ordinary skill in the art to select carboxymethylcellulose and use in combination with the unsaturated saccharide fatty acid ester.
With respect to claim 4, Lee teaches adding an optional filler such as kaolin (col. 9, line 24) and calcium carbonate (col. 9, line 31) and other additives such as clay (col. 14, line 57).
While Lee does not anticipate the selection of these ingredients over the plurality of other additives, it would have been obvious to one of ordinary skill in the art to select any of these given that Lee teaches that they are suitable and useful.
With respect to claims 10, 11, and 13, Lee teaches that mixture of sucrose fatty acids can be used, including both saturated and unsaturated fatty acids (col. 6, lines 30-46). A sucrose with different lengths will be expected to provide for different HLB values. Also, the fatty acid sucrose ester reads on polyol fatty acid ester because sucrose is a polyol. Therefore, it would have been obvious to one of ordinary skill in the art to utilize a mixture of sucrose fatty acids having different HLB value and/or (un)saturation.
With respect to claim 14, Lee discloses adding glycol solvents (col. 10, lines 52-57) which read on claimed catalyst. While an optional ingredient, it would have been obvious to one of ordinary skill in the art to select glycols solvents as a suitable addition to Lee’s composition.
Response to Arguments
Applicant's arguments filed 5/8/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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