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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 01/06/2026 has been entered.
Status of claims
Claims 1-16 and 27-32 have been canceled. Claims 17-26 are under examination in the instant office action.
Rejections withdrawn
Applicant’s arguments and affidavit filed on 01/06/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are maintained for reasons of record and the following.
Claim Rejections - 35 USC § 103
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, 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
Claims 17 and 22-26 are rejected under 35 U.S.C. 103(a) as being unpatentable over Chipman et al. (US 2022/0338585 A1) in view of Lotti (US 2023/0284724 A1) and Raineau (US 2011/0146702 A1).
Chipman et al. teach a method for applying an artificial eyelash to a natural eyelash comprising
applying a liquid adhesive to a group of natural eyelashes (plurality); then applying an artificial eyelash in form of a strip to the underside of the natural eyelash (abstract, figure 32B and 33, and paragraph 7, 11, 37, and 151);
wherein the liquid adhesive comprises styrene/acrylates/ammonium methacrylate copolymer (the claimed acrylic polymer in the instant claims 17, 25, and 26 and the claimed film-forming polymer in the instant claim 17), water, a color component, etc., (paragraph 39 and 139).
A latex with glass transition temperature (Tg) <0 is not taught by Chipman et al.
Chipman et al. do not specify the weight percentages of water and styrene/acrylates/ammonium methacrylate copolymer, respectively, in the instant claims 23 and 24, the adhesive composition further comprising wax and liquid polybutene and their weight percentages in the instant claims 17 and 22 and two non-ionic surfactants and an anionic phosphate ester surfactant in the instant claim 17.
This deficiency is cured by Lotti who teaches an adhesive for attaching cluster of artificial lash extension on a base (strip) to natural eyelashes being mascara having adhesive property (abstract and paragraph 47);
Raineau who teaches mascaras (paragraph 20) comprising
15-60% by weight of aqueous phase (water) (paragraph 159);
5-30% by weight of oils including polybutylene oil (liquid polybutene) (paragraph 281, 283, 284, 380, and 381);
film-forming polymer including Syntran 5760 (styrene/acrylates/ammonium methacrylate copolymer, the claimed acrylic polymer with Tg≥0 °C in the instant claims 17, 25, and 26), Daitosol 5000 AD, etc., (paragraph 457);
wax (paragraph 165); ethanol and ethylene glycol (paragraph 158); butter (paragraph 278-279); a pigment (paragraph 395); behenyl alcohol as a thickener (title); a preservative (paragraph 498); and
a combination of potassium cetyl phosphate (anionic phosphate ester surfactant), steareth-2 (HLB≤8 nonionic surfactant), and steareth-20 (HLB≥8 nonionic surfactant) (paragraph 104); and
exemplified in example 2 a composition comprising 5% by weight of Daitosol 5000 AD (paragraph 530 which is 50% solid content and thus 2.5% by weight of and thus provide guidance for 2.5% by weight of solid content of styrene/acrylates/ammonium methacrylate copolymer (the instant claim 23); and
the rationale that optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Chipman et al., Lotti, and Raineau to specify the liquid adhesive for attaching an artificial lash extension strip to natural eyelashes taught by Chipman et al. being mascara having adhesive property comprising 15-60% by weight of water, 5-30% by weight of polybutene, 2.5% by weight of solid content of styrene/acrylates/ammonium methacrylate copolymer, wax, ethanol, ethylene glycol, butter, a pigment, a combination of potassium cetyl phosphate, steareth-2, and steareth-20, a thickener; and a preservative. Mascara suitable as an adhesive for attaching an artificial lash extension strip to natural eyelashes comprising 15-60% by weight of water, 5-30% by weight of polybutene, 2.5% by weight of solid content of styrene/acrylates/ammonium methacrylate copolymer, wax, ethanol, ethylene glycol, butter, a pigment, a combination of potassium cetyl phosphate, steareth-2, and steareth-20, a thickener; and a preservative was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying these flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
A prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection. All numbers expressing quantities of ingredients and/or reaction conditions being modified by “about” which can encompass ±10%, etc., according to the instant specification paragraph 8.
The claimed range of water is about 25-35% by weight (the instant claim 24) and the range of water taught in the prior art is 15-60% by weight and therefor, includes the claimed range.
The claimed range of liquid polybutene is about 20-25% by weight (the instant claim 22) and the range of liquid polybutene taught in the prior art is 5-30% by weight and therefor, includes the claimed range.
Claims 18-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Chipman et al. (US 2022/0338585 A1), Lotti (US 2023/024724 A1), and Raineau (US 2011/0146702 A1), as applied to claims 17 and 22-26, and further in view of Wang et al. (Caramel stickiness: Effects of composition, rheology, and surface energy, Journal of Food Engineering, Volume 289, January 2021, 110246) and Go et al. (JP 2020084058 A).
The teachings of Chipman et al., Lotti, and Raineau are discussed above and applied in the same manner.
None of Chipman et al., Lotti, and Raineau specify the adhesive further comprising caramel adhesive, the weight percentage, and the weight ratio between acrylic polymer and caramel.
This deficiency is cured by Wang et al. who teaches caramel having pressure-induced adhesive forces (abstract) and Go et al. who teach water based caramel adhesive having improved water resistance (abstract and paragraph 13) and rationale that optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Chipman et al., Lotti, Raineau, Wang et al, and Go et al. to add caramel adhesive into the eyelash extension adhesive taught by Chipman et al. in view of Lotti and Raineau. Caramel being adhesive with improve water resistance was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for adding it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose of being adhesive and with improved water resistance.
Weight percentages of caramel adhesive and weight ratio between acrylic polymer and caramel in an adhesive for bond artificial eyelashes to eyelashes of a wearer is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize or, alternatively obvious to try to reach another workable product or process. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal weight percentages of wax and liquid polybutene in order to best achieve the desired results as an effective adhesive for bond artificial eyelashes to eyelashes of a wearer.
Response to Applicants’ arguments:
Applicant’s arguments based on the declaration is addressed in the Response to applicants’ 37 CFR 1.132 declaration below.
Response to applicants’ 37 CFR 1.132 declaration:
The affidavit under 37 CFR 1.132 filed 01/06/2026 is insufficient to overcome the rejection of all pending claims as set forth in the last Office action because: applicant alleges the experimental results in the table in paragraph 10 and the figure in paragraph 12 demonstrating criticality of 20% by weight of polybutene for the adhesion of formulas (the table in paragraph 8 with the base formulation in the table in paragraph 7).
The table in paragraph 7 does appear to show formations E and F having better adhesion with 20% liquid polybutene; however,
the scopes of formulas E and F (including 75% by weight of the base formula) is much narrower than the scope of claim 17, especially the species of acrylic polymer and saccharide adhesive and their weight percentages. There is no adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the single tested composition. In other words, Applicant has not shown that based on this single example, it is reasonable to expect that other embodiments falling within the scope of the claims will behave similarly. Please refer to MPEP 716.02(b) III:
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Applicant’s allegation of one skilled in the art starting from 1% by weight of polybutene would never consider 20% by weight of polybutene is basically the same as the previous response, thus the response discussed previously applies here as well and is not persuasive for reason discussed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
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/HONG YU/
Primary Examiner, Art Unit 1614