DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/18/2025, has been entered.
Status of Application
Receipt of the amendments to the claims and applicant arguments/remarks, filed 08/18/2025 (Response After Final Action), is acknowledged. No amendments and/or applicant’s arguments have been filed with the Request for Continued Examination.
Claims 1-3, 5-6, 11-27 are pending in this action. Claim 4 has been cancelled. Claims 7-10 have been cancelled previously. Claim 14 has been amended. New claims 26, 27 have been added. No new matter was added. Claims 1-3, 5-6, 11-27 are currently under consideration.
Any rejection or objection not reiterated in this action is withdrawn. Applicant's amendments necessitated new ground(s) of rejection presented in this office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application is a 371 of PCT/IB2020/000654, filed July 27, 2020, which claims benefit of provisional U.S. Application No. 62/880,684, filed July 31, 2019.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5-6, 11-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “(meth)acrylate-functionalized monomer” that is unclear and indefinite, because the structure of compounds that should be used in the claimed composition/product is not clearly delineated. As stated previously, it is unclear if said “(meth)acrylate-functionalized monomer” is a constitute/part of an additional polymer (i.e., monomer) or a specific compound that should be present in the claimed compositions. To this point, it is noted that the instant specification teaches the use in the disclosed compositions specific compounds modified with (meth)acrylate monomers or oligomers, e.g., as terminal groups (Para. 0081-0083). Therefore, the metes and bounds of the claimed subject matter are not reasonably clear, and one of ordinary skill in the art would not be reasonably appraised of the scope of the invention. It is also noted that “[i]f a claim is amenable to two or more plausible constructions, applicant is required to amend the claim to more precisely define the metes and bounds of the claimed invention or the claim is indefinite under §112, ¶ 2. Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (expanded panel).” Similar is applied to the limitation (meth)acrylate-functionalized oligomer, as well as to claims 12, 13, 19, 21, 24, and to claim 5 regarding the limitation “non-reactive solvent”. Clarification is required
As stated previously, claim 1 recites the limitation “particles of at least one core/shell copolymer comprising a core comprised of styrene and butadiene in copolymerized form and a shell comprised of methyl methacrylate in polymerized form” that is unclear, because the structure of the claimed constituents is not clearly delineated. Does this limitation disclose particles comprising a core comprised of a 1st copolymer and a shell comprising of a 2nd (co)polymer, OR it discloses a graft copolymer structure, wherein a core copolymer is surrounded by graft (co)polymers attached to it (i.e., a shell)? This limitation was interpreted as best understood as “particles of at least one core/shell copolymer, wherein said core/shell copolymer comprises a core comprised of styrene and butadiene in copolymerized form and a shell comprised of methyl methacrylate in polymerized form”. Similar is applied to claims 2-3, 6, 11, 19, 21, 24. Clarification is required.
Claim 1 recites the limitation “a core comprised of styrene and butadiene in copolymerized form” that is not reasonably clear. Does this limitation imply the use of a copolymer of styrene and butadiene, OR a copolymer comprising styrene and butadiene monomer units. Similar is applied to the limitation “a shell comprised of methyl methacrylate in polymerized form” recites in claim 1, as well as to claims 2, 16, 19, 21, 24. Clarification is required.
New claim 26 (dependent on claim 1) recites the limitation “the core is comprised of styrene, butadiene, and at least one additional co-monomer in copolymerized form”. In the present case, it is noted that independent claim 1 discloses “a core comprised of styrene and butadiene in copolymerized form”. To this point, it is noted that the open language of the instant claims (i.e., comprised of) allows the presence of additional, unrecited monomers/constituents even in a large amount. Therefore, it is unclear how claim 26 narrows the scope of the claim upon which it depends. Similar is applied to claim 27. Clarification is required.
Claims 5, 14-15, 17-18, 20, 22-23 are rejected as being dependent on rejected independent claims 1, 19 and 21 and failing to cure the defect.
Response to Arguments
Applicant's arguments, filed 08/18/2025 (see Response After Final Action), have been fully considered, and they were not found to be persuasive (see Advisory Action filed 09/09/2025). No claim amendments and/or applicant’s arguments have been filed with the Request for Continued Examination. New arguments and rejections have been added to the record to clarify the position of the examiner and/or to address newly introduced amendments (new claims 26, 27). Applicant is advised to clarify the claim language, the structure of the claimed product and clearly point out the patentable novelty, which the applicant thinks the claims present in view of the state of the art, to place the application in condition for allowance.
As best understood, the applicant discloses photocurable nail coating compositions, wherein said compositions comprise (i) particles of core-shell copolymer, wherein said core/shell copolymer comprises a core comprising styrene and butadiene in copolymerized form and a shell comprising methyl methacrylate in polymerized form; and (ii) compounds modified with (meth)acrylate monomers or oligomers. Applicant teaches that said nail coating compositions provide nail coatings with enhanced durability and resistance to external forces such as impact forces.
Conclusion
Claims are 1-3, 5-6, 11-27 are rejected, but would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA V. TCHERKASSKAYA whose telephone number is (571)270-3672. The examiner can normally be reached 9 am - 6 pm, Monday - Friday.
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/OLGA V. TCHERKASSKAYA/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615