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 .
DETAILED ACTION
The Applicant’s reply filed on 11/26/25 is acknowledged. Claims 1-16 are pending. Claims 9, 10 and 12-14 have been withdrawn. Claim 1 has been amended. Claims 15 and 16 are new. Claims 1-8, 11, 15 and 16 are under consideration.
Rejections Withdrawn
The rejection of Claims 1-4, 6, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Haile et al. (US 2020/0030221) in view of Jobic et al. (US 2010/0216990) is withdrawn in view of the amended claim(s).
The rejection of Claims 5 and 8 under 35 U.S.C. 103 as being unpatentable over Haile et al. (US 2020/0030221), Jobic et al. (US 2010/0216990) and Kobayashi et al. (JP 2016/155902) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 11/26/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 6, 7, 11 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Haile et al. (US 2020/0030221) in view of Weber et al. (US 2008/0206173) and Jobic et al. (US 2010/0216990).
Haile et al. teach compositions, systems, kits and methods for forming a nail coating (e.g. abstract). Haile et al. teach that the composition comprises: PMMA, cyanoacrylate, and or ethyl methacrylate (i.e. polyacrylate precursors) (e.g. paragraphs 0021, 0032, 0033, 0086, 0089; Example 1; Claims 11, 12 and 15).
Haile et al. teach that the composition may comprise special effects pigments (e.g. paragraphs 0022 and 0026), but do not teach that the effects pigment is a photochromic color agent and do not teach the concentration thereof. This is made up for by the teachings of Weber et al. and Jobic et al.
Weber et al. teach nail compositions and a process for making up nails comprising (a) providing a first composition, in powder form, containing: (i) at least one colorant, in powder form; (ii) optionally, at least one film-forming polymer, in powder form; and (iii) optionally, at least one plasticizer; (b) providing a second composition containing: (iv) at least one solvent; (v) at least one film-forming polymer chosen from nitrocellulose, cellulose acetate butyrate, and mixtures thereof; and (vi) at least one plasticizer (e.g. abstract; Claim 1). Weber et al. teach that the powder composition comprises a pigment, including an effects pigment, in an amount of about 1-100 wt% based on the total weight of the first powder-form composition, which overlaps with the claimed ranges of 5-65%, 35-60%, and 40-55% (e.g. paragraphs 0013, 0019; Claim 2). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Jobic et al. teach hybrid organic-inorganic materials containing molybdenum and having photochromic properties, and the use thereof, particularly in cosmetics including nail varnishes (e.g. abstract and paragraph 0028). Jobic et al. teach that the materials under UV radiation (λex=365 nm for example) or in simple daylight, their color passes from white to violet-purple, and is reversible (e.g. paragraphs 0021 and 0027).
Regarding Claims 1-4, 7, 11, 15 and 16, it would have been obvious to one of ordinary skill in the art at the time of filing to include the photochromic pigment of Jobic et al., in an amount taught by Weber et al., in the nail compositions of Haile et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as Haile teaches the inclusion of special effect pigments and Jobic teaches the pigments are suitable in nail varnishes, and one of ordinary skill would have been motivated in order to provide the benefits of reversible color changing as taught by Jobic et al. Regarding the concentration, as Haile is silent it would have been obvious to one of ordinary skill in the art at the time of filing to seek out additional guidance for an appropriate concentration range of a pigment in a powdered nail composition. In addition, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the pigment concentration through routine experimentation to arrive at the claimed ranges in order to optimize the resulting product. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 6, Haile et al. teach a kit as described supra. Haile et al. do not explicitly recite the inclusion of instructions, however, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (see MPEP 2112.01.III). In addition, it would have been prima facie obvious to provide the compositions of Haile et al. in a kit form with instructions in order to provide ease of application of the composition and kit.
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Haile et al. (US 2020/0030221) in view of Weber et al. (US 2008/0206173) and Jobic et al. (US 2010/0216990), as applied to claims 1-4, 6, 7, 11, 15 and 16, and further in view of Kobayashi et al. (JP 2016/155902).
Regarding Claims 1-4, 6, 7, 11, 15 and 16 the teachings of Haile et al., Weber et al. and Jobic et al. are described supra. None teach a photochromic glitter. This is made up for by the teachings of Kobayashi et al.
Kobayashi et al. teach a photochromic glitter pigment which is useful for cosmetics (e.g. Abstract, Technical Field). Kobayashi et al. teach that their glitter pigment has the benefits of less yellowing but a high photoresponse speed and photochromatic effect (e.g. page 2).
Regarding Claims 5 and 8, it would have been obvious to one of ordinary skill in the art at the time of filing to include the photochromic glitter of Kobayashi et al. in the nail compositions of Haile et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as Haile teaches the inclusion of special effect pigments and Kobayashi teaches the pigments are suitable in cosmetics, and one of ordinary skill would have been motivated in order to provide the benefits of less yellowing but a high photoresponse speed and photochromatic effect, as taught by Kobayashi et al.
Response to Arguments
Applicant's arguments filed 11/26/25 have been fully considered but they are not persuasive. Arguments relevant to the current grounds of rejection will be addressed below.
Applicant argues that the Examiner has failed to provide a prima facie basis for obviousness, which requires a reasoned explanation for why a person of skill in the art would have been motivated to combine Haile et al. and Jobic et al.
This is not found persuasive. As described supra, it would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as Haile teaches the inclusion of special effect pigments and Jobic teaches the pigments are suitable in nail varnishes, and one of ordinary skill would have been motivated in order to provide the benefits of reversible color changing as taught by Jobic et al. Combining prior art elements according to known methods to yield predictable results is obvious.
Applicant further argues over Kobayashi, the Examiner has failed to provide a prima facie basis for obviousness because the Examiner has not provided a logical statement as to why a person of skill in the art would combine these references.
This is not found persuasive. As described supra, it would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as Haile teaches the inclusion of special effect pigments and Kobayashi teaches the pigments are suitable in cosmetics, and one of ordinary skill would have been motivated in order to provide the benefits of less yellowing but a high photoresponse speed and photochromatic effect, as taught by Kobayashi et al. Combining prior art elements according to known methods to yield predictable results is obvious.
“When 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 USC 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007). 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 obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive compositions “yielding no more than one would expect from such an arrangement”.
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619