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 .
Election/Restrictions
Applicant's election with traverse of claims 1-12 in the reply filed on 6/15/2026 is acknowledged. The traversal is on the ground(s) that Scholler in view of Durand does not read on the limitations of claim 1. Specifically the Applicant argues Scholler does not teach a liquid silicone resin composition. This is not found persuasive because Scholler teaches that solid silicone resin compositions are “preferred” but this does not eliminate the possibility of the silicone resin composition being a liquid silicone composition. Specifically, the silicone resin composition can be selected from a list of either a solid or liquid composition. It would have been obvious for the composition of Scholler to be a liquid silicone resin composition because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Additionally the Applicant further argues that Scholler includes a myriad of additives and does not necessarily include a surfactant. However, it would have been obvious for the additive of Scholler to comprise a surfactant because it has been established that selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”).
The restriction is made in view of Guerchet 20100074854 in view of Scholler US 20190133918 in further view of Ikeda 20120251598A1.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 8-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Guerchet 20100074854 in view of Scholler US 20190133918 in further view of Ikeda 20120251598A1.
Regarding claim 1, Guerchet teaches a composition for nail varnish comprising a silicone resin. Guerchet teaches the phenylated silicone resin has the structure of
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(Paragraph [0027]). Guerchet teaches is an alkyl group comprising from 2 to 20 carbon atoms, preferably from 2 to 8 carbon atoms, or a cycloalkyl group comprising from 5 to 20 carbon atoms, preferably from 6 to 12 carbon atoms. Guerchet also teaches R1, R2 and R3 are selected from a group comprising an alkyl group comprising from 1 to 20 carbon atoms (Paragraph [0030]). It would have been obvious to select R1, R2 and R3 as an alkyl group comprising from 1-20 carbon atoms because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Guerchet also teaches a, b, c and d independently range from 0 to 0.4 (Paragraph [0038]). Guerchet also teaches x and y independently range from 0 to 1 (Paragraph [0039]). This reads on the claimed range of a, b, b’ c, c’, and d, where b’ and c’ are zero.
Guerchet also teaches a+b+c+d+x+y is equal to 1.
Guerchet is silent on the silicone resin composition being a liquid silicone resin composition. However, the silicone resin composition can be selected from a list of either a solid or liquid composition. It would have been obvious to select liquid silicone resin composition because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Guerchet also teaches the composition comprises a surfactant (Paragraph [0145]).
However, Guerchet is silent on the composition comprising a ratio of a:d where a is 0.5-1.5. Scholler teaches a silicone composition used for keratin material care (Abstract).
Scholler teaches a silicone resin comprising units
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(Paragraph [0063-0066]). Scholler teaches that a is between 0.05 and 0.5, b is between zero and 0.3, c is greater than zero, and d being between 0.05 and 0.6, a+b+c+d=1 (Paragraph [0068-0072]). Scholler also teaches the ratio of a:d is 0.5:1.5 (Paragraph [0074]). This exactly overlaps with the claimed range of 0.5:1.5
Scholler also teaches that R1, R2 and R3 are independently representing a
hydrocarbon radical (in particular alkyl) having 1 to 10 atoms of carbon (Paragraph [0067]).
Scholler also teaches the composition comprises a surfactant (Paragraph [0133]). It would have been obvious for the composition of Scholler to comprise a surfactant because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Scholler teaches a suitable ratio of a:d is 0.5:1.5 for similar compositions used in the same application. It would have been obvious to one of ordinary skill in the art at the time of filing to employ the a:d ratio of Scholler as a guideline or target when forming the silicone resin of Guerchet as this range is shown to be suitable for similar compositions used in similar applications. This represents the use of a suitable a:d range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Guerchet is silent on the type of surfactant used in the composition. Ikeda teaches a silicone resin composition used as a cosmetic (Title, Abstract).
Ikeda teaches the silicone resin composition comprises a silicone resin component (G) where (G) can be an MTQ resin (Paragraph [0098]). Ikeda teaches the composition comprises a noinonic surfactant such as a polyethylene alkyl ether (Paragraph [0052]). In Example 1, Ikeda teaches the specific surfactant is polyoxyethylene (9) lauryl ether (Paragraph [0120]). This reads on the claimed polyether alcohol where i is zero, j is zero, Y is (C2H4O)9, and R is a 12 carbon chain. Ikeda teaches a similar composition used in a similar application. It would have been obvious to one of ordinary skill in the art to use the nonionic surfactant taught in Ikeda as the nonionic surfactant of Guerchet in view of Scholler because the surfactant of Ikeda is taught as being suitable for use in applications similar to Guerchet in view of Scholler. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Regarding claim 2, Scholler also teaches the ratio of a:d is 0.5:1.5 (Paragraph [0074]). This overlaps with the claimed range of 0.7:1.2. Guerchet teaches that a is between 0 and 0.4 (Paragraph [0038]). This overlaps with the claimed range of 0.3-0.6. Scholler teaches that d is between 0 and 0.4 (Paragraph [0038]). This overlaps with the claimed range of 0.4-0.7.
Regarding claim 3, Guerchet teaches that R3 can be a carbinol group (Paragraph [0036]). It would have been obvious for R3 to be a carbinol group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Guerchet also teaches the carbinol group has the structure R4OH where R4 is a hydrocarbon chain comprising at least 3 carbon atoms (Paragraph [0043]). This reads on the claimed “-OX” where X is a hydrocarbyl group R comprising 1-30 carbon atoms. Guerchet also teaches that R1 is an alkyl group comprising from 1-20 carbon atoms (Paragraph [0030]). This reads on the limitations (i) and (iii) of claim 3.
Regarding claim 4, Guerchet teaches that R1 is an alkyl group comprising from 1-20 carbon atoms (Paragraph [0030]). Guerchet also teaches that R2 is an alkyl group comprising from 1-20 carbon atoms (Paragraph [0030]).This reads on the limitations of (i) and (ii).
Regarding claim 8, the polyoxyethylene lauryl ether can be synthesized from a reaction of lauryl alcohol and ethylene oxide. This reads on the limitations of the claim 8.
Regarding claim 9, the lauryl alcohol has 1 hydroxyl group and ethylene oxide reads on the claimed “ethylene oxide”. This reads on the claimed (i) and (ii).
Regarding claim 11, Guerchet teaches the silicone resin comprises 50% of the total composition. This falls within the claimed range of 10-80 wt%. However Guerchet is silent on the amount of surfactant present in the composition. Ikeda teaches the amount of surfactant present is 0.1-20% by mass of the total composition (Paragraph [0094]). This overlaps with the claimed range of 10-95%.
Regarding claim 12, Guerchet is silent on the composition comprising tin. Guerchet teaches the composition can comprise a cyclic silicone oil (Paragraph [0084]). However, Guerchet teaches the silicone oil can be selected from linear or cyclic silicone oil. Guerchet does not teach the cyclic silicone oil is necessarily present in the composition. It would have been obvious to select the silicone oil as a linear silicone oil because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the limitations of (i) and (ii).
Allowable Subject Matter
Claims 5-7 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 5-7, Guerchet teaches that R3 can be a carbinol group (Paragraph [0036]). It would have been obvious for R3 to be a carbinol group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Guerchet also teaches the carbinol group has the structure R4OH (Paragraph [0043]). Guerchet also teaches R4 can be -OCH(CH3)(CH2)z- , where z ranges from 1 to 10 (Paragraph [0045]). However, this structure does not read on the limitations of the polyether moiety and R3, therefore Guerchet does not read on the limitations of claims 5 and 6.
Regarding claim 10, polyoxyethylene lauryl ether (9) has a molecular weight of 582.81g/mol. This falls within the claimed range of a molecular weight less than 5000. However, Ikeda is silent on the PDI of the polyoxyethylene lauryl ether. Therefore, Guerchet in view of Ikeda and Scholler does not read on the limitations of claim 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights