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 .
Status of Application
Claims 1-20 are pending and presented for examination.
Specification
The disclosure is objected to because of the following informalities: formulas (II)-(V) are too blurry to read.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
1. Claim 10 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 10 recites the R6 can be different groups and does not recite what R7 represents. Therefore, it is unclear exactly what group of compounds is encompassed by formula (VI) in claim 10. Thus, claim 10 is indefinite. For examination purposes, R6 is interpreted as a group comprising a polymerizable olefinic unsaturation, while R7 is interpreted as independently a aromatic hydrocarbon group comprising from 6 to 40 carbon atoms, which interpretation is supported in Applicant’s specification at pages 9-10.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
2. Claim(s) 1-4, 7-9, 11-14, 16, 17, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gonzalez et al. (U.S. PGPUB No. 2017/0037170).
I. Regarding claims 1-4, 8, 9, 11-14, 16, 17, 19 and 20, Gonzalez teaches a copolymer (abstract) prepared in the absence of methacrylic acid (Example E1, Table 1) by polymerization of monomers comprising: acrylic acid (E1, Table 1); ethyl acrylate which is a C2 alkyl acrylate ester (E1, Table 1); a sodium salt of 2-acrylamido-2-methylpropane sulfonic acid (E1, Table 1 and 0202); trimethylolpropane diallyl ether, a crosslinking compound comprising two polymerizable olefinic unsaturation (E1, Table 1 and 0202); and a hydrophobic monomer comprising polymerizable olefinic unsaturation, polyalkylene glycol groups and a hydrophobic end group in an amount within the range as claimed in claim 11 (E1, Table 1, 0199 and 077-0081). Gonzalez teaches that the copolymer can be partially neutralized (0122). Gonzalez also teaches an aqueous composition comprising the copolymer as particles and water (F1, Table 2), wherein the copolymer is present in an amount in the range as claimed in claim 13 (0207), the composition having a pH of 4.9-5.1 (0207), and the aqueous composition can be a cosmetic product (0164). Gonzalez also teaches a method comprising introducing the copolymer particles and water to form a composition and stirring the composition (0173), and introducing the copolymer into an aqueous composition (0173). Gonzalez teaches all the limitations of claims 1-4, 8, 9, 11-14, 16, 17, 19 and 20; therefore, Gonzalez anticipates the claims.
II. Regarding claim 7, Gonzalez teaches an identical copolymer as claimed. Therefore, Gonzalez’s polymer will inherently have a glass transition temperature in the range as claimed in claim 7.
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.
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.
3. Claim(s) 5, 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez.
I. Regarding claims 5 and 10, Gonzalez teaches all the limitations of claims 1 and 9, but fails to teach in the exemplary embodiment that that the second compound including olefinic unsaturation is a polyunsaturated aromatic monomer and that the hydrophobic monomer in the exemplary embodiment is a compound of formula (VI). However, Gonzalez teaches that the crosslinking monomer may be selected from a group including a polyunsaturated aromatic monomer, such as divinyl benzene (0106) and that the hydrophobic monomer can have a structure meeting the limitations of the formula (VI) (0077-0098). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gonzalez’s copolymer by substituting divinyl benzene for the crosslinker of the exemplary embodiment and substituting a compound of formula (VI) for the hydrophobic monomer of the exemplary embodiment. One would have been motivated to make this modification as one could have substituted these compounds for the compounds of the exemplary embodiment with a reasonable expectation of success (note that Gonzalez specifically teaches these as alternative compounds to those used in the specific examples), and the predictable result of providing a copolymer.
II. Regarding claim 6, Gonzalez teaches in the exemplary embodiment that the acrylic acid is present in 24.68% (E1, Table 1), the ethyl acrylate is present in 55.88% (E1, Table 1), the 2-acrylamido-1-methypropane salt is present in 2.07% (E1, Table 1), and the crosslinking compound is present in an amount of 0.08% (E1, Table 1). Gonzalez fails to teach in the example that the acrylic acid is present in a range of 25-60% and the crosslinking compound present in 0.1-8%. However, the Examiner notes that 24.68% is so close to 25% and 0.08% is so close to 0.1% as to expect identical properties between a copolymer with 24.68% and 25% acrylic acid and 0.08% and 0.1% crosslinking compound. Furthermore, it has been held that a prima facie case of obviousness exists when the claimed ranges or amounts do no overlap with the prior art but are merely close. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Similarly, in this case, the example of the prior art is only outside the claimed range by 0.32% for the acrylic acid and 0.02% for the crosslinking compound and one would have expected identical properties. Therefore, Gonzalez makes obvious the ranges for the copolymer as claimed in claim 6.
4. Claim(s) 12, 14, 15, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanfilippo et al. (U.S. PGPUB No. 2005/0137326) in view of Gonzalez.
Regarding claims 12, 14, 15, 18 and 19, Sanfilippo teaches a cosmetic product which is an aqueous nail varnish composition (0005) comprising: pigment particles (0017), water (0009), a latex binder (0008-0009), and a rheology modifier (0016). Sanfilippo teaches the composition prepared by a process comprising introducing the rheology modifier, pigment particles and the aqueous latex binder varnish base together in water to form the varnish (0024). Sanfilippo fails to teach the nail varnish composition and process including the use of a copolymer as claimed in claim 1.
However, Gonzalez teaches a copolymer (abstract) prepared in the absence of methacrylic acid (Example E1, Table 1) comprising: acrylic acid (E1, Table 1); ethyl acrylate which is a C2 alkyl acrylate ester (E1, Table 1); a sodium salt of 2-acrylamido-2-methylpropane sulfonic acid (E1, Table 1 and 0202); trimethylolpropane diallyl ether, a crosslinking compound comprising two polymerizable olefinic unsaturation (E1, Table 1 and 0202); and a hydrophobic monomer comprising polymerizable olefinic unsaturation, polyalkylene glycol groups and a hydrophobic end group in an amount within the range as claimed (E1, Table 1, 0199 and 077-0081). Gonzalez additionally teaches that the copolymer is used as a rheology modifier (0001-0002) for cosmetic applications (0119 and 0164), such as nail polishes (0166). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Sanfilippo’s composition by substituting Gonzalez’s rheology modifying copolymer for Sanfilippo’s rheology modifier. One would have been motivated to make this modification as Gonzalez teaches that their copolymer rheology modifier yields improved properties in cosmetic formulations (0007) compared to conventional thickeners, such as good clarity and thickening properties even when used at acidic pH ranges (0014).
Conclusion
Claims 1-20 are pending.
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
November 18, 2025Primary Examiner, Art Unit 1717