DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2026 has been entered.
Claim Status
Applicant’s amendment of 02/26/2026 is acknowledged. Claims 1 and 8-9 are amended; claims 6-7, 11, and 21 are cancelled; and claims 22-23 are new. Claims 1-5, 8-10, 12-20, and 22-23 are currently pending.
Priority
The instant application claims domestic benefit to U.S. Application No. 63/284,260 filed on 11/30/2021 and claims foreign priority to FR2201590 filed on 02/23/2022 as reflected in the filing receipt dated on 04/09/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
An election of invention/species was required in the instant application as detailed in the Office action dated 04/25/2025. The election is maintained and claims 12-20 remain withdrawn. Accordingly, claims 1-5, 8-10, and 22-23 are examined on the merits herein.
Previous Rejections/Objections
Applicant’s arguments filed 02/26/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied as necessitated by Applicant’s amendment to the claims. They constitute the complete set of rejections and/or objections presently being applied to the instant application. Applicant’s arguments insofar as they pertain to the present grounds of rejections and/or objections are addressed herein.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites the acronym “LED”. When an acronym is used in a claim set, it should be defined the first time it appears in the claims. For the purposes of examination, the term “LED” is interpreted to mean “light emitting diode”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
Claim 22 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.
Written Description Rejection
The specification discloses chemicals, such as monomers known to be used in polymerized cosmetic coatings for nails [0039], which meet the written description and enablement provisions of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. However, claim 22 is directed to broadly encompass polymers which undergo a chromatic shift upon curing, with no indication as to which polymer structures are capable of such shifts, and which may or may not correspond in some undefined way to specifically instantly disclosed chemicals. None of these polymers meet the written description provision of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, due to lacking chemical structural information for what they are and chemical structures are highly variant and encompass a myriad of possibilities. The specification provides insufficient written description to support the genus encompassed by the claim. Note: MPEP 2163.
Vas-Cath Inc. v. Mahurkar, 19 USPQ2d 1111, (Fed. Cir. 1991), makes clear that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116.)
Univ. of Rochester v. G.D. Searle, 69 USPQ2d 1886, 1892 (CAFC 2004), further supports this by stating that:
The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement. A description of an anti-inflammatory steroid, i.e., a steroid (a generic structural term) described even in terms of its functioning of lessening inflammation of tissues fails to distinguish any steroid from others having the same activity or function. A description of what a material does, rather than of what it is, usually does not suffice…. The disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described. (Emphasis added).
With the exception of the above specifically disclosed chemical structures, the skilled artisan cannot envision the detailed chemical structure of the encompassed chromatic-shifting polymers regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it. The chemical structure itself is required. See Fiers v. Revel, 25 USPQ2d 1601, 1606 (Fed. Circ. 1993) and Amgen Inc. V. Chugai Pharmaceutical Co. Ltd., 18 USPQ2d 1016, (Fed. Cir. 1991). In Fiddes v. Baird, 30 USPQ2d 1481, 1483, (Bd. Pat. App. & Int. 1993), claims directed to mammalian FGF's were found unpatentable due to lack of written description for the broad class. The specification provided only the bovine sequence.
Finally, University of California v. Eli Lilly and Co., 43 USPQ2d 1398, 1404, 1405 (Fed. Cir. 1997) held that:
...To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (" [T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."). Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations, not that which makes it obvious," and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
Furthermore, to the extent that a functional description can meet the requirement for an adequate written description, it can do so only in accordance with PTO guidelines stating that the requirement can be met by disclosing “sufficiently detailed, relevant identifying characteristics,” including “functional characteristics when coupled with a known or disclosed correlation between function and structure.” Univ. of Rochester v. G.D. Searle, 68 USPQ2d 1424, 1432 (DC WNY 2003).
Therefore, only the above chemically structurally defined chemicals, but not the full breadth of the claim(s) meet the written description provision of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. The species specifically disclosed are not representative of the claimed genus because the genus is highly variant. Applicant is reminded that Vas-Cath makes clear that the written description provision of 35 USC § 112 is severable from its enablement provision. (See page 1115).
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 1-5, 8-9, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Busch (US20190262256A1; 08/29/2019; PTO-892 of 06/03/2025) in view of Ina et al. (JP2014008359A; published: 01/20/2014; PTO-892 of instant action) as evidenced by Streeter (US10405638B2; 09/10/2019; PTO-892 of 06/03/2025).
Busch discloses a composition for topical application to the skin comprising: at least one polymer precursor, and at least one polymerization catalyst in the presence of which the at least one polymer precursor polymerizes under the action of light [claim 1]. The composition can be in the form of a gel, a cream, an ointment, a spray, a lotion, an oil-water emulsion, a hydrogel, a balm, a solution, or a suspension [0055], which all read on the instantly claimed fluid or malleable form. Preferred polymer precursors include a) a combination of at least one polyorganohydrosiloxane and at least one polyorganosiloxane, or b) at least one polyorganohydrosiloxane [0032-0038], in which each polymer precursor is a polymer itself.
Regarding claim 1: Busch teaches that the composition can be used for the removal of hairs, wherein the composition is applied to a skin area and following the polymerization, the layer formed is peeled off [claim 12; 0076], which meets the instant limitations of “applying the polymer to a skin of a user in fluid or malleable form” and “removing the hardened polymer from the user’s skin causing the hairs to be removed”. Busch notes that in order to polymerize, the composition must be exposed to light, which can come from an artificial radiation source or from a natural radiation source, after the topical application step [0028]. The polymerization reaction does not proceed at all without the action of light [0028], indicating that the light source is what causes the polymer precursor to polymerize on the skin area, thereby forming a peelable layer. The polymer formed is preferably a crosslinked polymer, in which the polymer molecules are at least partially linked to a three-dimensional network [0025], which meets the instant limitation wherein “light causes the polymer to crosslink”.
Regarding the instant limitation “harden and bond with the hairs on the user’s skin”, Busch discloses that polymerization results in a crosslinked polymer layer formed on the user’s skin that is subsequently peeled off to remove hairs. Busch’s method step of “peeling” indicates that the three-dimensional formed layer must be sufficiently hardened such that a user could then remove the polymer layer, in which the hairs are necessarily entrapped or attached in order to result in hair removal, by the action of peeling (as opposed to wiping or rinsing, which may be used to describe removal of a non-hardened polymer). With no limiting definition for the term “bond” provided in Applicant’s instant disclosure, the attachment of the hairs to the polymer layer allowing for the hairs to be removed meets the limitation “causing the polymer to…bond with the hairs” and is consistent with Applicant’s instant specification, which states that the polymer film traps the hairs [instant spec., 0032].
However, Busch does not expressly teach that the light radiation source is an LED light source in an LED emitter, or the step of “automatically controlling illumination of the LED light source based on real-time video or image data received from a camera included in the LED emitter” as recited in claim 1.
Ina teaches that users of photo-curing resins, such as those applied to nails, have anxiety about receiving radiation to the human body [0006]. Thus, Ina provides a resin curing device capable of specifying a target region, which ensures that light is irradiated only to a region where the photocurable resin is applied [abstract; claims; 0006-0008]. The device includes a target specifying means which comprises an imaging camera that picks up an object to be illuminated by an imaging light source, such as an LED [0029; 0046]. The illumination area is specified by the imaging processing means [0038] and is updated in real time so that the irradiating light can be re-targeted by the target specifying means even if the target area moves [0018-0022]. This indicates that the illumination is automatically controlled by real time image data received from the camera, which Ina teaches may also be a video camera [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Busch by incorporating the resin curing device of Ina, which emits LED light from an imaging light source and thus reads on the instantly claimed LED emitter, to ensure that the light source only irradiates a target region where the photoactivated polymer composition is applied, rather than other parts of the human body, which is identified as a concern of users of photocurable resins. There is a reasonable expectation of success because Busch teaches that the light can come from any artificial radiation source, and Ina demonstrates that the device is safe for use with compositions topically applied to humans.
Regarding claims 2 and 8: Busch teaches its composition can be applied to any area of human skin [0019]. Ina teaches that feet can be placed in the resin curing device to receive light [0016]. Because feet are the lower extremity of the leg, the device is configured to receive an inserted portion of a leg of the user. It would have been prima facie obvious to one of ordinary skill in the art to use the method taught by the Busch and Ina to remove any undesired hair growth, including hair on skin located on the user’s leg.
Regarding claim 3: It would have been prima facie obvious to one of ordinary skill in the art to alter the dimensions of the resin curing device taught by the combination of Busch and Ina to facilitate removal of undesired hair growth on any area of human skin, including in the eyebrow region. For example, the dimensions of the device could be enlarged to accommodate a larger hand, foot, head, etc. without any change to the device’s function. Note: MPEP 2144.04(IV)(A). It has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claims 4 and 5: Busch teaches that “light” means radiation in the wavelength range of from 200 nm to 800 nm, wherein radiation in the range of 200 nm to 400 nm ensures faster formation of the polymer layer, whereas radiation in the range of 380 nm to 800 nm results in slightly slower polymerization but is gentler for the user [0029]. Because LED technology is capable of emitting both ultraviolet light from about 10 nm to about 400 nm and infrared light from about 700 nm to about 1 mm, as evidenced by Streeter [col. 8, lines 8-22], it would have been prima facie obvious to use either of these types of light depending on the preferences of the user.
Regarding claim 9: Absent a limiting definition of the term “handheld” provided in Applicant’s instant disclosure, because the prior art device is comparable to the size of a hand and could reasonably be held while in use [see Ina’s Fig. 1, for example], it meets the limitation of a handheld device. Additionally, see In re Lindberg, 194 F.2d 732, 93 USPQ 23 (CCPA 1952) (Fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results.).
Regarding claim 23: Because Ina teaches that users of photocurable resins have anxiety about receiving radiation to the human body and, therefore, specifically designed the resin curing device to target only a region where the photocurable resin is applied, it would have been prima facie obvious to one of ordinary skill in the art to modify the method taught by the combination of Busch and Ina to automatically turn off the LED light source when the targeting specifying means determines that the device is positioned over a portion of the skin that is not covered by the polymer. There is a reasonable expectation of success because Ina teaches that the irradiating light can be re-targeted in real time by the target specifying means based on information received from the imagining camera.
Claims 1-5, 8-10, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Busch (US20190262256A1; 08/29/2019; PTO-892 of 06/03/2025) in view of Ina et al. (JP2014008359A; published: 01/20/2014; PTO-892 of instant action), as applied to claims 1-5, 8-9, and 23 above, and further in view of Fortman (08/26/2018; PTO-892 of 06/03/2025) and Waxing Experts (06/17/2020; PTO-892 of 06/03/2025) and as evidenced by Streeter (US10405638B2; 09/10/2019; PTO-892 of 06/03/2025).
The combination of Busch and Ina as evidenced by Streeter teaches the invention(s) of claims 1-5, 8-9, and 23 as discussed in detail above and further incorporated herein.
However, the prior art combination does not expressly teach that the method further comprises a reverse cross-linking process as recited in instant claim 10.
Fortman teaches that cross-linked polymers are ubiquitous in daily life, finding applications in adhesives and countless other products, and therefore it is beneficial to produce recyclable cross-linked polymers [abstract]. An effective approach in producing reprocessable cross-linked polymers is to control the reversible transformation between a cross-linked and uncross-linked state [pg. 11147, r. col.]. Diels-Alder and retro-Diels-Alder reactions have been successfully applied to several polymers, including polysiloxanes, to create such reprocessable polymer networks [pg. 11148, l. col.].
Waxing Experts teaches that wax spilling is common, and that if hard wax cannot be easily peeled from a surface, it can be heated to soften the wax, i.e., return it to its malleable form, before cleaning [pg. 2, “How to Clean Hot and Warm Wax”].
Regarding claim 10: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cross-linked polymer in the method taught by Busch and Ina with the teachings of Fortman and Waxing Experts to create a cross-linked polymer that undergoes a reverse cross-linking process in order to remove the polymer from the hardened state. One of ordinary skill in the art would have been motivated to create a polymer that can reversibly transform between the cross-linked and uncross-linked state, as taught by Fortman, and then use the process to remove the polymer from the hardened state because Waxing Experts teaches that wax spilling is common, and when wax cannot be easily peeled from a surface, it must be returned to its malleable form in order to clean it.
One of ordinary skill in the art would reasonably expect success in modifying the prior art combination as proposed because Fortman teaches that polysiloxanes, like that of Busch, are amenable to reactions that allow for polymer reprocessing.
Claims 1-5, 8-9, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Busch (US20190262256A1; 08/29/2019; PTO-892 of 06/03/2025) in view of Ina et al. (JP2014008359A; published: 01/20/2014; PTO-892 of instant action), as applied to claims 1-5, 8-9, and 23 above, and further in view of Oxman et al. (US5596025; published: 01/21/1997; PTO-892 of instant action) and as evidenced by Streeter (US10405638B2; 09/10/2019; PTO-892 of 06/03/2025).
The combination of Busch and Ina as evidenced by Streeter teaches the invention(s) of claims 1-5, 8-9, and 23 as discussed in detail above and further incorporated herein.
Ina further teaches that the image processing means in the resin curing device is capable of detecting color differences to determine whether or not an area corresponds to the target area [0046-0048].
However, the prior art combination does not expressly teach that the method further comprises “determining a chromatic shift in the polymer indicating completion of curing of the polymer…turning the LED light source off based on the chromatic shift in the polymer” as recited in instant claim 22.
Oxman teaches that silicone compositions comprising (a) a curable silicone polymer, e.g. vinyl-containing organopolysiloxane, (b) a crosslinker, and (c) a catalyst such as platinum can be visually monitored by including a color-indicating dye that exhibits a color change in the presence of a silicone-bonded-hydrogen compound and a hydrosilation catalyst, thus providing the polymer composition with an initial pre-cure color and a different post-cure color [abstract; claims; col. 4, lines 58-67; col. 5, lines 1-18].
Regarding claim 22: The resin curing device in the method taught by the combination of Busch and Ina physically covers the targeted skin area, which makes it difficult to monitor hardening of the polymer layer. Since the device’s image processing means can detect and control illumination based on color differences, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a cure-indicating dye compound into the polymer composition, as taught by Oxman, and automatically turn off the LED light source when the target specifying means detects a color change indicative of curing in order to limit unnecessary exposure of the user to irradiation.
One of ordinary skill in the art would reasonably expect success because the cure-indicating dye of Oxman is compatible with the same types of cross-linkable silicone polymers (i.e., vinyl organopolysiloxanes) and hydrosilation catalysts (i.e., platinum) as contemplated by Busch [Busch, 0036-0038; 0042] and is safe for cosmetic use, since it is used in dental applications [Oxman, abstract].
Response to Arguments
Applicant’s arguments submitted on 02/26/2026 with respect to rejections under 35 U.S.C. 103 have been fully considered in so far as they apply to the new or modified rejections of the instant Office action, but were not found to be persuasive.
Applicant argues that Busch does not teach or suggest that exposure to light causes the polymer to harden sufficiently for the peeling step. The Examiner respectfully disagrees. As discussed in the prior art rejections of record, Busch teaches that its composition is in the form of a gel, cream, ointment, spray, lotion, emulsion, hydrogel, balm, solution, or suspension, which are all fluid or malleable forms. Busch further specifies that following polymerization the layer formed, i.e., formed as a result of the polymerization of a polymer within a previously fluid or malleable composition, is peeled off. Thus, the layer is formed with sufficient hardness to be gripped and peeled—not wiped or rinsed. Also discussed above, the polymer reaction does not proceed at all without the action of light. Taken together, exposure to light is indeed what causes the polymer to harden sufficiently for the peeling step.
Applicant further argues that Busch does not teach a camera included in the LED emitter, image or video data, or the particular illumination control techniques specified in claims 22 and 23, and that the other previously references relied upon do not make up for these deficiencies. This argument was not found to be persuasive in view of Ina and Oxman, which do cure these deficiencies as discussed in detail in the prior art rejections above.
In view of the foregoing, the Examiner maintains that it would have been prima facie obvious to an ordinarily skilled artisan to modify the method of Busch with the teachings of the cited prior art references as proposed to carefully control when and where the polymerization and hardening step of Busch would occur, thereby reducing unnecessary irradiation exposure to the user.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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, Sue Liu can be reached at (571)272-5539. 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.
/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
Prosecution Insights