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 .
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.
Claim(s) 1-2, 6, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), translation provided, in view of Lee (KR 2019/0091056A), translation provided, and further in view of Dong (KR 2020/0132463 A), translation provided.
Regarding claim 1, Woo teaches an adhesive gel nail (100), characterized by comprising:
an adhesive layer (20);
a color base layer (30) formed on a top of the adhesive layer (see figure 1);
a color printing layer (40) formed on a top of the color base layer (see Figure 1);
a gel coating layer (50) formed on a top of the color printing layer (see Figure 1).
Woo is silent to a decorative layer extending through the gel coating layer such that a lower surface of the decorative layer is directly disposed on the color base layer and wherein the decorative layer is embedded into the gel coating layer by thermocompression such that a portion of the gel coating layer is displaced upwardly along a side surface of the decorative layer to form the gel protrusion covering at least a portion of the side surface of the decorative layer, thereby integrating the decorative layer with the gel coating layer.
Lee teaches a device in the same field of endeavor of nail stickers (abstract). Lee teaches the device comprises a release paper (150), an adhesive layer (140), a base film (110), a coating layer (130) and a decorative layer (120). Lee teaches the decorative layer extends above the coating layer and a base end of the decorative layer is disposed on the base layer (see Figure 4). Lee teaches a gel protrusion from which the gel coating layer protrudes and extends upwardly along and covers a portion a side surface of the decorative layer (see annotated Figure 4 of Lee).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the adhesive gel nail to include a decorative layer, as taught by Lee et al. such that it would provide the sticker with a decorative element that satisfies a variety of tastes and aesthetics. Having the decorative layer be formed through the layers of the nail would eliminate bulkiness of the decorative element depending on its size and embed it into the nail to prevent the risk of it detaching from the nail.
Woo in view of Lee discloses each and every structural element of the sticker set forth in claim 1 – (see rejection above).
The claimed phrase “embedded… by thermocompression” is being treated as a product by process limitation; that is, that the gel nail is made by thermocompression. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Woo/Lee is silent as to the process used to make the gel nail, it appears that the product in Woo/Lee would be the same or similar as that claimed.
Woo discloses that the products used in the present invention are in a liquid state and change from a liquid state to a solid when cured ([0043]). Dong teaches an artificial nail for easy bonding to a user’s nails having a decoration (abstract). Dong teaches protrusions (170c) formed and protruding upward from the nail layer (130), the protrusions surrounding the frame and covering a side surface of the decoration (110) as to prevent hair and other things from getting caught between the decoration and the adhesive layer ([0078] and see Figure 11).
Therefore, it would have been further obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the protrusion to be an extension of the layers of the nail sticker that extend beyond the nail layer onto a surface of the decoration, as taught by Dong, because it would create a sealing frame around the decoration that would prevent hair, germs, dust, etc… from getting caught in between the decoration and the other layers, thereby preventing discomfort, contamination, and reducing the risk of detachment.
Regarding claim 2, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Woo teaches it characterized in that the color base layer is made of a urethane material ([0022], [0026]).
Regarding claim 6, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 5 (see rejection above). Dong teaches it characterized in that the gel protrusion covers the border of the decorative layer (see annotated Figure 11 and ([0059], [0078]; the protrusion surrounds the frame/rim of the decoration).
Therefore, it would have been further obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the protrusion to be an extension of the layers of the nail sticker, as taught by Dong, because it would create a sealing frame around the decoration that would prevent hair, germs, dust, etc… from getting caught in between the decoration and the other layers, thereby preventing discomfort and contamination, and reduce the risk of detachment.
Regarding claim 9, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Lee teaches it is characterized in that a fusion part in which a second adhesive layer on the lower surface of the decorative layer and the color base layer are thermally fused, is formed between the decorative layer and the color base layer ([0040]; a holographic paper or foil is heat fused between the decorative layer and the base layer thereby providing an adhesive layer at the lower surface of the decorative layer, which prevents detachment of the decorative layer).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the decorative layer to be heat fused such that it would create a layer that is fused with the other layers, resulting in a stronger bond and preventing separation or detachment of the decorative layer.
Regarding claim 10, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Woo teaches it is further comprising a release paper (10, [0020]; base film 10 may include a silicone release-treated fabric) arranged on a lower surface of the adhesive layer (see Figure 1). Woo is silent to wherein a compression mark corresponding to the border of the decorative layer is generated on the release paper.
Lee teaches the adhesive nail undergoes a pressing process using a press 300 to compress the coating liquid applied to the surface and such crimping process can process the nail sticker smoothly on the surface of the decoration layer ([0052-0055]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention that the decorative feature (if a gemstone or another 3D structure) would create marks corresponding to the base of the decorative feature if it undergoes such crimping process that compresses all the layers together.
Regarding claim 11, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Woo teaches it characterized in that the color printing layer is cured by ultraviolet rays while in contact with the color base layer ([0026]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), in view of Lee (KR2019/0091056A), Dong (KR2020/0132463 A), and further in view of Scheurn (US 2015/0013709 A1) and Google AI (NPL).
Regarding claim 3, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Woo teaches the color base layer (30) is made of polyurethane ([0022]), but is silent to it being characterized in that the color base layer has a structure in which open cells and closed cells are mixed. Woo teaches it is an object of the present invention to provide an attachment type gel nail and a method for manufacturing the same, which increases oxygen permeability by creating an air hole inside the gel nail to have breathability ([0006]).
Scheurn et al. teaches an apparatus in the same field of endeavor of devices for contacting nails (abstract). Scheurn teaches the device comprises a material that may have both open-cells and closed cells ([0051]). As evidenced by Google AI, a mixture of open cell and closed cell foam would be considered partially breathable due to the open cell component allowing air to flow through while the closed cell component restricts airflow, making it less breathable than pure open cell foam but more breathable than pure closed cell foam.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to modify the color base layer to have a mixture of open cells and closed cells, as taught by Scheurn and evidenced by Google AI, such that it would give the layer just enough breathability while maintaining a barrier for water that may cause fungal or bacterial infections.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), in view of Lee (KR2019/0091056A), Dong (KR2020/0132463 A), and further in view of Best (US 2012/0266905 A1).
Regarding claim 4, Woo in view of Lee Dong teaches the adhesive gel nail according to claim 1 (see rejection above). Woo teaches the adhesive layer is pressure-sensitive ([0020]) but is silent to it being characterized in that a surface roughness of the color base layer is smaller than a surface roughness of the adhesive layer, thereby enhancing the printing resolution of the color printing.
Best teaches a nail product comprising layers in the same field of endeavor of materials applied to a nail (abstract). Best teaches the nail product comprises an adhesive layer (430) and a sealant layer (435) above the adhesive layer (See figures 4A-4B). Best teaches the adhesive layer has a rough upper surface and the sealant layer has a smoother upper surface as to create a smooth layer over a rough surface ([0030-0031).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have the adhesive layer has a rougher surface than the layer above it, as taught by Best, as it would provide a rough base and therefore enhance bond adhesion and a smoother surface that covers the roughness of the adhesive layer and gives an aesthetic smooth look to the nail.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), in view of Lee (KR2019/0091056A), Dong (KR2020/0132463 A), and further in view of Kim et al. (US 2015/0050492 A1).
Regarding claim 7, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (See rejection above), but is silent to it being characterized in that a second adhesive layer is formed on the lower surface of the decorative layer, and the second adhesive layer is thermally fused with the color base layer during the thermocompression process.
Kim et al. teaches a device in the same field of endeavor of nail stickers (abstract). Kim et al. teaches the nail sticker comprises a release layer (10), an adhesive layer (120), an intermediate layer (130), a print layer (140) and a three-dimensional decoration (170) (see Figures 2A-2B). Kim teaches the decoration may be attached to the nail sticker by means of an adhesive ([0060]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the decorative layer/element to have an additional adhesive layer that adheres it to the rest of the adhesive nail, as taught by Kim et al., such that it is a known method for securely attaching such decorative elements to a nail, nail sticker or artificial nail.
Woo in view of Lee and Kim discloses each and every structural element of the sticker set forth in claim 1 – (see rejection above).
The claimed phrase “the second adhesive layer is thermally fused with the color base layer during the thermocompression process” is being treated as a product by process limitation; that is, that the gel nail sticker is made by thermocompression. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Woo/Lee/Kim is silent as to the process used to make the gel nail, it appears that the product in Woo/Lee/ Kim would be the same or similar as that claimed.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), in view of Lee (KR2019/0091056A), Dong (KR2020/0132463 A), and further in view of Ramponi (WO 2007/122654 A1).
Regarding claim 8, Woo in view of Lee and Dong teaches the adhesive gel nail according to claim 1 (see rejection above), but is silent to it being characterized in that an opening is formed inside the decorative layer, and a second adhesive layer is filled in the opening, and the second adhesive layer is thermally fused with the color base layer during the thermocompression process.
Ramponi teaches a gemstone ornament for decorating an article (abstract). Ramponi teaches the gemstone has a concave pavilion (6) at its base side formed with a recess as to create a hollow (abstract). Ramponi teaches the gem is applied to the object to be decorated by filling the concave pavilion with an adhesive substance (page 9 ll. 15-19). Ramponi teaches that due to the presence of the concave pavilion forming a recess at the inside of the stone, the brightness and brilliancy of the stone may be enhanced versus a completely flat bottom surface and enables improved setting in place of the stone as a seat is formed for the adhesive (page 9 ll. 31 – page 10 ll. 30).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the decorative element to have a recess/opening filled with an adhesive substance, as taught by Ramponi, as it would enhance the brightness and brilliancy of the decorative element if it is a shiny rhinestone or gem and enhance the bond between the decorative element and the other layers as it would have a seat for the adhesive that eliminates smearing.
Woo in view of Lee and Ramponi discloses each and every structural element of the sticker set forth in claim 1 – (see rejection above).
The claimed phrase “the second adhesive layer is thermally fused with the color base layer during the thermocompression process” is being treated as a product by process limitation; that is, that the gel nail sticker is made by thermocompression. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Woo/Lee/Ramponi is silent as to the process used to make the gel nail, it appears that the product in Woo/Lee/Ramponi would be the same or similar as that claimed.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woo (KR 102194838 B1), in view of Lee (KR2019/0091056A), Dong (KR2020/0132463 A), and further in view of Dong (KR20130015029 A), henceforth referred to as “Dong 2".
Regarding claim 12, Woo in view of Lee and Dong teaches method of manufacturing the adhesive gel nail according to claim 1 (see rejection above), characterized by comprising:
Forming an adhesive layer (20; the layers are provided and therefore formed);
Forming the color base layer (30) formed on a top of the adhesive layer (see figure 1);
Forming the color printing layer (40) formed on a top of the color base layer (see Figure 1);
Forming the gel coating layer (50) formed on a top of the color printing layer (see Figure 1).
Lee teaches embedding the decorative layer into the gel coating and the gel coating covering a side surface of the decoration (see annotated Figure 4 of Lee).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the adhesive gel nail to include a decorative layer, as taught by Lee et al. such that it would provide the sticker with a decorative element that satisfies a variety of tastes and aesthetics. Having the decorative layer be formed through the layers of the nail would eliminate bulkiness of the decorative element depending on its size and embed it into the nail to prevent the risk of it detaching from the nail.
Woo/Lee is silent to the embedding of decorative layer being done by thermocompression and explicitly the step of embedding includes pressing the decorative layer toward the color base layer such that a lower surface of the decorative layer directly contacts the color base layer and simultaneously causes a portion of the gel coating layer to rise along a side surface of the decorative layer to form a gel protrusion. Lee teaches the decorative later may be bonded using a heat fusion method ([0035], [0040], [0042]) and forming the coating layer may include using compression processing (([0052-0053]). Lee is silent to specifically using thermocompression the decorative layer into its position. Woo discloses that the products used in the present invention are in a liquid state and change from a liquid state to a solid when cured ([0043]).
Dong 2 teaches a nail sticker having layers including a release paper (130), a base layer (110), a pressure-sensitive adhesive layer (120), an adhesive layer (140), a decorative layer (150) and a gel clear coating layer (160, 170). Dong 2 teaches the decorative layer has three-dimensional glitter particles ([0019], [0030] and see Figure 7) and the gel layer and the three-dimensional decorative layer may be bonded by thermocompression to provide firm attachment of the sequin/glitter when forming the three-dimensional sticker ([0023], [0030]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Woo/Lee/Dong to include thermocompression of the decorative layer into position, as taught by Dong 2, as it provides firm attachment of the decorative element to the other layers and ensure the layers of the three-dimensional sticker are securely bonded.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the invention that the gel protrusion may be an inherent result of thermocompression, since Lee teaches using heat fusion and also discloses that the materials of the layers are in a liquid state. Therefore, if a decoration is pressed into a liquid/gel layer, some gel may be squeezed to seep around the three-dimensional shape of the decoration when a compressive force is applied. One would be motivated to intentionally keep said seepage of gel beyond the side surfaces of the decorative, because as taught by Dong, it would create a sealing frame that prevents risks of detachment and/or contamination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With regards to applicant’s arguments regarding the gel protrusion being a result of pressing the decoration into the gel, please note that the process to which the decorative layer is embedded is a product by process limitation that does not specifically hold weight in the apparatus claims. The claimed structure is not limited to only be achieved by thermocompression, and is taught by the combination, such that Woo teaches the materials of the layers are a liquid that turn into a solid when cured ([0043]), Lee shows the gel protrudes to cover a side surface of the decoration and the decoration is extends through the layers and therefore it is embedded. Dong teaches the concept of intentional protrusions forming a frame surrounding the rim of the decoration as to prevent things from getting caught between the decoration and the other layers and therefore establishes motivation for intentionally creating or leaving a protrusion along the rim of the decoration, whether the method of embedding is thermocompression or not. Please note that the claim does not recite that the gel protrusion forms a rim along the sides of the decorative layer, or that it must extend beyond a certain length of the side portion of the decorative layer. The claim only recites a protrusion being formed upwardly around a portion of the side surface of the decoration.
With regards to applicant’s arguments regarding claim 12, Woo teaches the materials of the layers are a liquid that turn into a solid when cured ([0043]), the gel protrusion of Lee (130) reads on the claimed structure since it is positioned on a side surface of the decorative layer, as shown in Figure 4. Dong shows protrusions intentionally formed around the decoration and Dong 2 teaches thermocompression for bonding a decorative element. Therefore, it would have been obvious to one having ordinary skill in the art that the gel protrusion may be an inherent result of thermocompression as some gel may be squeezed around the three-dimensional shape of the decorative element/layer when a compressive force is applied, since this is a well-known behavior of embedding a 3D object into a liquid, gel, acrylic, resin, or other flowable media. One of ordinary skill in the art would be motivated to intentionally create or leave a rim around the joint region of the decoration and the other layers, because it would advantageously prevent the risks of detachment and contamination.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 attached to this office action.
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/LINA FARAJ/ Examiner, Art Unit 3772
/EDELMIRA BOSQUES/ Supervisory Patent Examiner, Art Unit 3772