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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Formal Matters
Receipt of Applicant’s response, dated 11/24/2025, is acknowledged.
Claims 19-20, 22-23, 25-26, and 28-38 are pending.
Claims 1-18, 21, 24, and 27 are canceled.
Claim 38 is new.
Claims 28 and 33-34 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 22 and 31 remain withdrawn from consideration as being drawn to a nonelected species.
Claims 19-20, 23, 25-26, 29-30, 32, and 35-38 are under consideration in the instant Office action and are being examined to the extent that the calcium silicate is in the form of the mixture of calcite, dicalcium silicate, and tricalcium silicate.
REJECTIONS WITHDRAWN
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 19-20, 23, 25-26, 29-30, 32, and 35-37 over Nagar as evidenced by Stutzman et al set forth in the Office action dated 07/24/2025 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below.
NEW GROUNDS OF OBJECTIONS/REJECTIONS
Claim Objections
Claims 20, 23, and 29 are objected to because of the following:
In line 2 of claim 20, “di calcium” should be amended to “dicalcium” and “tri calcium” should be amended to “tricalcium” in order to improve claim readability and consistency (See claim 29);
In line 2 of claim 23, “di calcium” should be amended to “dicalcium” in order to improve claim readability and consistency (See claim 29); and
In order to improve the readability of claim 29, the colon following “wherein” should be deleted, the dash at the beginning of line 2 should be deleted, and the line break and indentation at line 2 should be deleted, resulting in the formatting of the claim being consistent with the formatting with the rest of the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 38 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 38 recites the limitation “wherein the formulation comprises the Fe in a concentration of 1800-2000 mg/kg”. In the remarks dated 11/24/2025, it is stated that “Support for new claim 38 can be found at, for example, page 6, lines 19-22 of the Specification”. Page 6 Lines 19-22 of the specification states that “Portland cement can comprise elements in the form of trace elements, such as Cr, Fe, Cu, Ti, Mn, and Ni in concentrations of 10-2000 mg/kg. It is advantage that the final formulation comprises Fe, in a concentration of 1800- 2000 mg/kg.” This support in the disclosure regards the concentrations of trace elements in Portland cement, however claim 38, dependent on claim 32 dependent on claim 29, is not limited to Portland cement, i.e., claim 29 recites “wherein the calcium silicate powder includes a mixture of calcite (CaCO3), dicalcium silicate and tricalcium silicate, or in the form of Wollastonite (CaOSiO2), or a mixture of those.” Therefore, claim 38 is rejected for containing subject matter not described in the specification.
Claim 38 recites a limitation, which was not clearly disclosed in the specification as filed, and now changes the scope of the instant disclosure as filed. Such limitation recited in new claim 38, which did not appear in the specification, as filed, introduces new concepts and violates the description requirement of the first paragraph of 35 U.S.C 112. Applicant is required to provide sufficient written support for the limitations recited in new claim 38 in the specification or claims, as-filed, or remove this limitation from the claims in response to this Office Action.
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.
The factual inquiries 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.
Claims 19-20, 23, 25-26, 29-30, 32, and 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Nagar (WO 2019/175832 A2, published 09/19/2019, filed 03/14/2019, cited in Notice of References Cited dated 07/24/2025) as evidenced by Stutzman et al (J. Res. Natl. Inst. Stand. Technol., 2016, 121, 47-107, cited in Notice of References cited dated 01/23/2025).
Nagar teaches a detachable adhesive composition for uses including nail polish and gel nail polish for adherence to human nails (e.g., Abstract, [0005], [00129]-[00130]). The adhesive composition comprises an adhesive compound selected from a group including cement mixtures, cement compounds, and Portland cement and comprises selectively activated particles that allow for the adherence of the composition to an object (e.g., Abstract, [0004], [0012]). The detachable adhesive composition can comprise from 1 to 80% by weight of the adhesive compound and the adhesive compound can be formed of a plurality of particulates having a size equal or greater to the selectively activated particles which have a diameter of less than 300 microns, less than 100 microns, or less than 50 microns (e.g., [0009], [0013], [0071]). The adhesive compound may include a cement compound and a hardening mixture configured to harden the cement compound for adhering to the object, e.g., human nail (e.g., [0005], [0011]).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Nagar but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen 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 U.S.C. 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 at 1741). 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 been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed components of a detachable adhesive composition from within the prior art disclosure of Nagar and arrive at an adhesive composition for uses including nail polish and gel nail polish comprising an adhesive compound and selectively activated particles that allow for the adherence of the composition to an object, wherein the adhesive compound is Portland cement present from 1 to 80% by weight and formed of a plurality of particulates having a size equal or greater to the selectively activated particles which have a diameter of less than 300 microns, less than 100 microns, or less than 50 microns.
The composition of Nagar renders obvious the nail formulation of instant claims 19-20, 23, 25-26, 29-30, 32, and 35-38. Regarding the ranges of the instant claims, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The Portland cement in the composition of Nagar necessarily comprises calcite, dicalcium silicate and tricalcium silicate as evidenced by Stutzman et al (See, e.g., Table 4 on Page 70 wherein components of 3-70 (i.e., Portland cement, See “Applications to Portland Cement Powders” on Page 62) include alite (i.e., Ca3SiO5, See Table 2 on Page 59), belite (i.e., Ca2SiO4, See Table 2 on Page 59) and calcite). Regarding instant claims 32 and 38, the Portland cement in the composition of Nagar, identical to that claimed, would necessarily comprises trace elements including Fe in concentrations of 10-2000 mg/kg, as evidenced by Page 6 Lines 19-20 of the instant specification. Regarding instant claim 19, the Portland cement in the composition of Nagar necessarily releases calcium and silicon ions to nails from the dicalcium silicate and tricalcium silicate that are present. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Response to Applicant’s Arguments
Applicant’s arguments filed 11/24/2025 have been considered.
Applicant traverses the obviousness rejection over Nagar as evidenced by Stutzman for the reasons set forth in the response filed 10/24/2025. The Examiner’s responses to these arguments are contained in the Advisory Action dated 10/29/2025.
Applicant argues that Nagar discloses multiple embodiments, one of which is a nail treatment application and another of which is a construction cement, and Nagar only discloses that Portland cement is an adhesive in the context of construction cements and not the nail treatment application, and therefore the skilled artisan would not reasonably select elements from the very different embodiments within Nagar to achieve the claimed subject matter. Applicant argues that the skilled artisan would not have had motivation or reasonable expectation of success selecting these elements from multiple embodiments from within Nagar, and the selection of elements from completely disparate embodiments of Nagar is unreasonable and based on impermissible hindsight. Applicant argues that Nagar does not teach or even suggest the usage of Portland cement as adhesive compound in connection with a detachable adhesive composition to be used in nail applications, such as in the form a (gel) nail polish that is detachably applied to a human or mammal nail, and in clear contrast, Portland cement as an adhesive is only disclosed in the context of construction cements comprising concrete at a solid state. Applicant argues that there is no disclosure in Nagar of any nail formulation in the form of a nail oil, a nail polish, a nail gel, a nail cream, a nail serum or a nail hardener that comprises Portland cement, and in clear contrast, the adhesive compound of the detachable adhesive composition deployed in nail treatment applications is said to be the film forming polymer, in particular nitrocellulose, in combination with the adhesive polymer, in particular sylamide-formaldehyde resin. Applicant argues that there is no disclosure or suggestion in Nagar or any combination of Nagar and Stutzman that the selectively activated particles added to the nail formulation are in the form of calcium silicate powder having a grain size of 10 nm to 300 microns.
The argument that the adhesive compound of the detachable adhesive composition deployed in nail treatment applications is said to be the film forming polymer, in particular nitrocellulose, in combination with the adhesive polymer, in particular sylamide-formaldehyde resin has been fully considered by the Examiner but is not found persuasive because, firstly, the teaching of Nagar that the nail polish comprises a film forming polymer such as nitrocellulose and further comprises adhesive polymers such as sylamide-formaldehyde resin regards some embodiments and is not a requirement of all nail polishes (See Par. [00131] of Nagar), and rather, Nagar broadly teaches that in some embodiments the detachable adhesive composition forms a gel nail polish for adhering to a human nail (See Par. [0005] of Nagar). The arguments regarding Portland cement being taught in an embodiment different from the discussion of a nail treatment application and that a skilled artisan would not have had motivation or reasonable expectation of success selecting these elements from the different embodiments have been fully considered by the Examiner but are not found persuasive because Applicant is reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)). Further, Nagar does not limit Portland cement to construction cement applications as argued by Applicant; See Par. [0033] of Nagar wherein suitable adhesive compounds are listed, including Portland cement, for which the list is not limited to use in particular applications or prohibited from use in particular applications. Based on the entire disclosure of Nagar, it would have been prima facie obvious to one of ordinary skill in the art to test the adhesive compounds taught by Nagar for the applications taught by Nagar, which includes testing Portland cement as an adhesive compound for a gel nail polish. Applicant is reminded that "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. "KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. "Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ. "Id. at 418, 82 USPQ2d at 1396. The argument that there is no disclosure or suggestion in Nagar or any combination of Nagar and Stutzman that the selectively activated particles added to the nail formulation are in the form of calcium silicate powder having a grain size of 10 nm to 300 microns has been fully considered by the Examiner but is not found persuasive because, firstly, the rejection is not based on the combination of the teachings of Nagar and Stutzman et al, but rather Stutzman is merely relied upon for evidence that Portland cement necessarily comprises calcite, dicalcium silicate, and tricalcium silicate. Secondly, as can be seen in the new grounds of rejection under 35 USC 103 above, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed components of a detachable adhesive composition from within the prior art disclosure of Nagar and arrive at an adhesive composition for uses including nail polish and gel nail polish comprising an adhesive compound and selectively activated particles that allow for the adherence of the composition to an object, wherein the adhesive compound is Portland cement present from 1 to 80% by weight and formed of a plurality of particulates having a size equal or greater to the selectively activated particles which have a diameter of less than 300 microns, less than 100 microns, or less than 50 microns.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619