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 .
DETAILED ACTION
The Applicant’s reply filed on 7/6/26 is acknowledged. Claims 1-12, 14 and 17-22 are pending. Claims 13, 15 and 16 are cancelled. No claims are amended. Claims 1-12, 14 and 17-22 are under consideration.
Rejections Maintained and New Grounds of Rejections
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12, 14 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez (US 2020/0129406) in view of Wischhover (Glamour, 2013), and Chen (CN 112089634; cited in IDS).
Martinez teaches varnish compositions which are free or substantially free of clay compounds and water (i.e. 0%) (e.g. abstract, paragraph 0022).
Martinez teaches a method of transforming the color appearance of a nail comprising applying to a nail a composition comprising:
solvent (e.g. Claim 1; Examples);
a color system comprising one or more colorants (e.g. paragraphs 0079-0082), the one or more colorants comprising a pearlescent agent (i.e. one or more effect colorants), wherein the one or more effect colorants are present in the color-transforming composition in a concentration by weight of 2%, and wherein the color system comprises Red 34 (i.e. optionally comprises one or more additional colorants) wherein the color system has a colorant fraction of effect colorants that is at least about 50% by weight with respect to the weight of the color system (math: 10% of a 3% solution of Red 34 is 0.3%, resulting in 2%/2.3% or about 87% effects pigment) (e.g. paragraphs 0079-0082);
a suspending system comprising one or more suspending agents, the one or more suspending agents comprising hydrophilic silica (e.g. paragraphs 0048-0050, 0082, 0083); and
a film-forming system (e.g. Claim 1; Examples).
Martinez teaches that the pearlescent pigments may take the form, for example, of mica or borosilicate particles coated with one or more layers of titanium oxide and/or iron oxide, allowing reflections to be imparted to the dry varnish by reflection and refraction of light (i.e. transforms the appearance to one which varies as a function of observation conditions) (e.g. paragraph 0061).
Martinez teaches that the composition is applied to nails, but does not teach that the nail has a decorative coating with substantially uniform color appearance formed thereon. This is made up for by the teachings of Wischhover and Chen.
Wischhover teaches that you can get brand-new colors just by layering two or three of your existing nail polish colors (e.g. page 1). Wischhover teaches that if you're mixing a cream and a shimmer, make sure you put the cream on the bottom (i.e. substantially uniform color on the bottom) (e.g. page 4).
Chen teaches a color changing nail polish comprising:
-solvent;
-a color system comprising one or more colorants, the one or more colorants comprising one or more effect colorants, wherein the one or more effect colorants are present at 2-5 parts by weight, wherein the color system has a colorant fraction of effect colorants that is at least about 50% by weight (100% by weight); and
-film-forming system (acrylate copolymer or polyurethane) (e.g. abstract).
Chen teaches the method step of applying the color-changing composition to a nail having a decorative coating with substantially uniform color appearance formed thereon which does not comprise an effects color pigment (a dark nail polish with a single color) (e.g. page 2). Chen teaches that after coating the color-changing nail polish, different colors can be seen at different angles (e.g. abstract, page 2). Chen teaches that the layering of a dark polish and the interference polish allows different colors to be seen by human eyes, “namely different colors can be seen at different angles; moreover, because the human nails have radian and are not plane, and the radians and the lines of the nails of different people are different, after the color-changing nail polish is smeared, different color differences exist at different angles, and different fingers are also different in color difference, so the color-changing effect is better and stronger; finally, the dark nail polish with a single color is smeared at the bottom of the color-changing nail polish, and the dark color has strong light energy absorption, so that the color-changing nail polish has stronger light reflectivity.” (e.g. page 2).
Regarding Claims 1-4, 8, 9, 14, and 17-22, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the composition of Martinez to a nail having a decorative coating with substantially uniform color appearance formed thereon, as taught by Wischhover and Chen. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both Chen and Martinez are directed to nail composition comprising interference pigments, and one of ordinary skill would have been motivated in order to provide the benefits of creating new colors, as taught by Wischhover and the benefit of color-changing effect as taught by Chen.
Regarding Claims 5-7 and 10-12, while Martinez exemplify 2% pearlescent agent and 0.3% other pigment, they more broadly teach the pigment, or mixture of pigments, is preferably present in the composition in an amount between 0.001 and 15 wt %, preferably between 0.005 and 12 wt %, more preferentially still between 0.01 and 10 wt % (e.g. paragraph 0061). It would have been obvious to one of ordinary skill in the art at the time of filing to vary the pigment and pearlescent concentrations through routine experimentation in order to optimize the visual effect. It is obvious to optimize within prior art conditions or through routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 7/6/26 have been fully considered but they are not persuasive.
Applicant argues, beginning on page 6, that Martinez discloses direct application to nails and therefore cannot teach or suggest the claimed methods.
This is not found persuasive. while Martinez teaches application to nails, they do not teach away from application to a base or other coat, or teach away from the application of more than a single layer. Martinez do not require application to a bare nail. As disclosed by Wischhover and Chen, it was known to one of ordinary skill in the art to apply different nail polish compositions in layers to create a new visual effect. “When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have obvious to have applied the nail composition of Martinez to a nail having a decorative coating with substantially uniform color appearance formed thereon, as suggested by Wischhover and Chen.
Applicant further argues that Chen does not state that any interference pigment-containing composition can be applied on top of a base layer. Applicant argues that Chen only discloses application of its specific water and clay containing composition to a base layer. Applicant further argues substantial differences between Martinez's and Chen's compositions.
This is not found persuasive. Applicant has not explained why a composition which is free from water and clay could not be applied in a manner as disclosed by Chen and Wischhover. Chen does not link the presence of the clay and water to any effect with regard to the layers. Regarding the argument that Chen's compositions are required to have at least 3% of clays (stearalkonium chloride bentonite), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The claims are directed to a method comprising applying two compositions to a nail sequentially. In the instant case, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the composition of Martinez to a nail having a decorative coating with substantially uniform color appearance formed thereon, as taught by Wischhover and Chen. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both Chen and Martinez are directed to nail composition comprising interference pigments, and one of ordinary skill would have been motivated in order to provide the benefits of creating new colors, as taught by Wischhover and the benefit of color-changing effect as taught by Chen. The composition of Chen does not require the ingredients of Martinez, and vice versa.
Further, it is not the Examiner’s position that the compositions of Chen “function” in the same manner as the compositions of Martinez, and such a modification is not required or claimed. As described supra, the combined teachings of Wischhover and Chen suggest that nail polish colors may be layered and experimented with. Chen teaches the method step of applying the color-changing composition to a nail having a decorative coating with substantially uniform color appearance formed thereon which does not comprise an effects color pigment (a dark nail polish with a single color) (e.g. page 2). Chen teaches that the layering of a dark polish and the interference polish allows different colors to be seen by human eyes. The method step of “applying a color-transforming composition to a nail having a decorative coating with substantially uniform color appearance formed thereon” is taught by the combination of Wischhover and Chen, and requires no modification to the composition of Martinez, which is free of water and clays.
Applicant further argues that Chen contradicts the Office Action's interpretation of the asserted art (Chen and Wischhover) and asserted motivation to combine the art because Chen expressly teaches away from such an interpretation and motivation, stating that the problem with prior art nail compositions is that "[i]f you want a different color, you have to remove the original color of nail polish and then apply another color." Applicant further argues Wischhover does not disclose layers which change color depending on observation conditions. Applicant argues that Wischhover is teaching one of ordinary skill in the art how to make the existing color of the creme more "fancy" by adding shimmer (not changing colors).
This is not found persuasive. As described supra, the ingredients of the color-transforming composition (nonuniform and which varies as a function of the condition of observation) are already taught by Martinez, and the combined teachings of Wischhover and Chen suggest that nail polish colors may be layered and experimented with. Wischhover teaches that you can get brand-new colors just by layering two or three of your existing nail polish colors (e.g. page 1). Wischhover teaches that if you're mixing a cream and a shimmer, make sure you put the cream on the bottom (i.e. substantially uniform color on the bottom) (e.g. page 4). Chen teaches the method step of applying the color-changing composition to a nail having a decorative coating with substantially uniform color appearance formed thereon which does not comprise an effects color pigment (a dark nail polish with a single color) (e.g. page 2). Chen teaches that the layering of a dark polish and the interference polish allows different colors to be seen by human eyes, “namely different colors can be seen at different angles; moreover, because the human nails have radian and are not plane, and the radians and the lines of the nails of different people are different, after the color-changing nail polish is smeared, different color differences exist at different angles, and different fingers are also different in color difference, so the color-changing effect is better and stronger; finally, the dark nail polish with a single color is smeared at the bottom of the color-changing nail polish, and the dark color has strong light energy absorption, so that the color-changing nail polish has stronger light reflectivity.” (e.g. page 2). It would have been obvious to one of ordinary skill in the art at the time of filing to apply the composition of Martinez, which does not comprise water or clays, to a nail having a decorative coating with substantially uniform color appearance formed thereon, as taught by Wischhover and Chen. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both Chen and Martinez are directed to nail composition comprising interference pigments, and one of ordinary skill would have been motivated in order to provide the benefits of creating new colors, as taught by Wischhover and the benefit of color-changing effect as taught by Chen.
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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