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 .
Formal Matters
Receipt of Applicant’s response, dated 04/28/2026, is acknowledged.
Claims 19, 22, 25-26, 28, and 33-37 are pending.
Claims 1-18, 20-21, 23-24, 27, 29-32, and 38 are canceled.
Claims 19 and 22 are amended.
Claims 28 and 33-34 remain withdrawn from consideration as being drawn to a nonelected invention.
Previously the claims under consideration were being examined to the extent that the calcium silicate was in the form of the mixture of calcite, dicalcium silicate, and tricalcium silicate based on the species election made in the reply filed on 01/10/2025 and clarified in the telephone conversation with Peter Jay on 01/14/2025, however, based on Applicant’s amendments to the claims in the reply filed on 04/28/2026, claims 19, 22, 25-26, and 35-37 are under consideration in the instant Office action to the extent that the calcium silicate powder is in the form of Wollastonite (CaOSiO2).
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 20, 23, and 29 set forth in the Office action dated 02/02/2026 are hereby withdrawn in light of Applicant’s cancelation of claims 20, 23, and 29.
Claim Rejections - 35 USC § 112(a)
The written description rejection of claim 38 set forth in the Office action dated 02/02/2026 is hereby withdrawn in light of Applicant’s cancelation of claim 38.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 19-20, 23, 25-26, 29-30, 32, and 35-38 over Nagar set forth in the Office action dated 02/02/2026 is hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF REJECTION
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.
Claim 22 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 is indefinite in the recitation of “wherein the nail formation further includes 0.01 to 3 wt.% calcium silicate (CaOSiO2)” because claim 19, to which claim 22 depends, earlier recites “A nail formulation, comprising 0.01 to 3 wt.% Wollastonite (CaOSiO2)”. Because both the calcium silicate of claim 22 and the Wollastonite of claim 19 are represented in parentheses as meaning “CaOSiO2”, it is unclear whether claim 22 further includes calcium silicate including Wollastonite, further includes calcium silicate other than in the form of Wollastonite, or whether something else is meant by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims.
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, 22, 25-26, and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Shooter et al (EP 3066166 B1, published 03/28/2018) in view of Sheard et al (US 5,330,750 A, published 07/19/1994, cited in IDS dated 09/26/2022).
Shooter et al teach a composition comprising from 1 to 95% by weight of particulate solid, wherein particulate solids may be inorganic solids selected from a list including calcium silicate and wollastonite (See entire document, e.g., [0081], [0086], [0101]). The particulate solid may have an average particle size measured by light scattering measurements of from 10 nanometers to 10 microns, or 10 nanometers to 1, 2, 3, or 5 microns, or 20 nanometers to 1, 2, 3, or 5 microns in diameter (e.g., [0082]). The compositions are suitable for use in personal care like nail coatings (e.g., [0116]).
Shooter et al do not teach specific types of nail coatings, and therefore, do not teach the nail coatings as including any of a nail oil, a nail polish, a nail gel, a nail cream, a nail serum, or a nail hardener.
This deficiency is made up for in the teaching of Sheard et al.
Sheard et al teach a composition comprising inorganic fibers that provide superior properties to nail lacquer compositions such as nail varnishes, top coats, base coats, nail hardeners and ridge fillers, wherein preferred inorganic fibers include calcium silicate and/or calcium metasilicate, including wollastonite (See entire document, e.g., Abstract, Col. 1 Lines 17-19 and 26-28, Col. 2 Lines 3-6). Sheard et al limit the amount of said inorganic fibers in the nail lacquer compositions to 0.05 to 10% by weight, preferably 0.05 to 5% by weight (e.g., Col. 1 Lines 20-23).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teachings of Shooter et al and Sheard et al, to provide a composition for use in nail coatings such as nail varnishes, top coats, base coats, nail hardeners and ridge fillers, comprising calcium silicate and wollastonite as particulate solids having average particle size of from 10 nanometers to 10 microns, or 10 nanometers to 1, 2, 3, or 5 microns, or 20 nanometers to 1, 2, 3, or 5 microns in diameter, and present from 0.05 to 10% by weight, or preferably from 0.05 to 5% by weight.
One of ordinary skill in the art would have been motivated to look to the teaching of Sheard et al from the teaching of Shooter et al in order to determine suitable types of nail coating applications and would have been motivated to modify the amount of calcium silicate and wollastonite as the particulate solids in the composition of Shooter et al from 1 to 95% by weight to from 0.05 to 10% by weight, or preferably from 0.05 to 5% by weight, because Sheard et al provide a specific teaching for the use of these materials in compositions specifically for use on the nail. There would have been a reasonable expectation of success in making the aforementioned modifications to the composition of Shooter et al because Shooter et al teach the composition for use in personal care like nail coatings.
Regarding the weight percent and grain size ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Regarding the limitation of being formulated for local release of calcium and silicon ions to nails required by instant claim 19, because the composition of Shooter et al in view of Sheard et al is the same as the formulation of the instant claims, the composition of Shooter et al in view of Sheard et al necessarily releases calcium and silicon ions to nails. 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.
Thus, the composition of Shooter et al in view of Sheard et al renders obvious the formulation of instant claims 19, 22, 25-26, and 35-37.
Response to Applicant’s Arguments
Applicant’s arguments filed 04/28/2026 have been considered.
Applicant argues that any combination of Nagar as evidenced by Stutzman et al fails to disclose or suggest a nail formulation as recited in amended claim 19 and comprising 0.01 to 3 wt.% of a calcium silicate powder being in the form of Wollastonite (CaOSiO2) and having a grain size of 10 nm to 300 micrometer.
The above arguments have been fully considered by the Examiner but are moot because the rejection under 35 USC 103 over Nagar as evidenced by Stutzman et al set forth in the Office action dated 02/02/2026 has been withdrawn and neither teaching is applied as art in a rejection contained in the instant Office action. As can be seen in the new grounds of rejection under 35 USC 103 above, the composition of Shooter et al in view of Sheard et al meets all of the limitations of amended claim 19 and the claims dependent therefrom.
Conclusion
No claims are allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights