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 .
Priority
The instant application is the national stage entry of PCT/CN2022/115135 filed 26 August 2022. Acknowledgement is made of the Applicant’s claim of foreign priority to application CN202210730973.5 filed 24 June 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. A certified translation was received on 22 December 2025. The effective filing date is accordingly 24 June 2022.
Examiner's Note
Applicant's amendments and arguments filed 22 December 2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant's response, filed 22 December2025, it is noted that claims 1 and 4 have been amended and no new matter or claims have been added. Support can be found in the claims as originally filed.
Status of the Claims
Claims 1-4 and 7-13 are pending.
Claims 1-4 and 7-13 are rejected.
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.
Claims 1-4 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2019/0314264) in view of Chen (CN113004855; machine translation cited) in view of Patel et al. (US 6,051,242) in view of Woo (US 2023/0148731).
Saito teaches a photocurable resin for nails or artificial nails comprising A) a compound having a methacryloyl group, B) a photoinitiator, and C) a methacrylic polymer particle wherein the resin has excellent transparency and is capable of forming a matte coat (abstract). Component A, which comprises a methacryloyl group, can have a molecular weight in the range of from 1,000-100,000 [0029, 0039]. Component B, the photoinitiator, can be present in from 2-25 parts by mass with respect to 100 parts of Component A [0061, 0063]. Component C is a component that can function as a filler and contributes to the matte characteristics (i.e. a matting agent) [0067] and can be present in amounts of 45-155 parts by mass [0078]. The composition can further comprise a filler such as glass, alumina, or carbon powder in 0.1-200 parts by mass [0082-0083].
Saito does not teach the composition comprises polyurethane (methyl) acrylate. Saito does not teach components of both formula I and formula II.
Chen teaches a resin composition for artificial nails (pg 1). Chen teaches that gel nails are mainly composed of polymers, monomers, and photopolymerization initiators, which are coated on the nail surface and irradiated (pg 2). The resin composition of Chen comprises an ester prepolymer (60-80 part by weight), reactive diluent (15-30 parts by weight), and photoinitiator (1-5 parts by weight) wherein the average molecular weight of the prepolymer is from 1,000-20,000 Da and can comprise polyurethane (meth)acrylates [1-2]. The diluent can be isobornyl methacrylate (pg 10). The composition can further comprise a filler [5].
Patel teaches a quick drying nail composition (abstract) which comprises a base monomer in about 3-8 wt% (col 3, lns 31-52). The monomer can be selected from isobornyl acrylate, tetrahydrofurfuryl acrylate, and others (col 5, lns 14-30). The monomer provides solvent functionality to the composition, increasing compatibility of the components in the composition (col 6, lns 6-9).
Woo teaches that when the user cures the monomer in the nail composition, which can be tetrahydrofurfuryl acrylate [0063], the user can easily control the gloss, hardness, and ductility of the urethane coating film [0074].
It would have been prima facie obvious to combine the photocurable nail resins of Saito and Chen to form a matte resin comprising a compound having a methacryloyl group such as the polyurethane (meth)acrylates of Chen, a photoinitiator, a methacrylic polymer particle (matting agent), a reactive diluent such as isobornyl methacrylate (acrylic monomer), and a filler such as glass or carbon that is a corrosive particle. The composition can further include tetrahydrofurfuryl acrylate. Generally, it is prima facie obvious to combine/substitute two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. The idea for combining them flows logically from their having been individually taught in the prior art. (see MPEP § 2144.06; In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)). The matte gel composition can be made by mixing all the agents and then can be used to apply to artificial nails. By including said acrylic monomers, the skilled artisan would be improving the solvent functionality and controlling the gloss, hardness, and ductility of the coating. Since a matte coating is desired, it would have been desirable to provide an agent that controls the level of gloss imparted on the thin film.
Regarding the polyurethane (meth)acrylate, the polymer can have a molecular weight of from 1,000-100,000 which includes the required range of instant claim 1. It would have been obvious to select a polyurethane (meth)acrylates having a weight of 1,000 Da, thus the viscosity and acid value of instant claim 2 would necessarily be present. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unquantified property which is necessarily present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding the amounts of each component, the broad ranges of quantities per component all render obvious those ranges provided in the instant claims. The resulting composition therefore renders obvious instant claims 1-4 and 7-13.
Response to Arguments
Applicant's arguments filed 22 December 2025 have been fully considered but they are not persuasive. The Applicant argues, on pages 7-8 of their remarks, that isobornyl methacrylate differs from the acrylic monomer of the present application.
In response, isobornyl methacrylate appears to satisfy the Markush groupings of instant claim 1The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The Applicant argues, on pages 8-9 of their remarks, that one of skill in the art would have no motivation to add both the monomer of Formula I and the monomer of Formula II into the composition of the prior art.
In response, Saito teaches a photocurable nail composition that can comprise a methacryloyl agent. Chen teaches that a diluent for nail compositions can be isobornyl methacrylate. Patel teaches that in a nail composition the monomer can be selected from isobornyl acrylate, tetrahydrofurfuryl acrylate, and others and that the monomer provides solvent functionality to the composition. Thus, it would have been obvious to include isobornyl acrylate, tetrahydrofurfuryl acrylate, or a combination thereof in the composition of Saito based on the known benefits to the nail composition. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06). In lieu of objective evidence of an unexpected result based on the combination of said agents, the above rejection is maintained.
The Applicant argues, on page 9 of their remarks, that Woo teaches tetrahydrofurfuryl acrylate is subjected to a urethane reaction wherein the present claims do not require said preparation.
In response, the instant claims do not forbid a urethane reaction or other transformation from being done to the agents that are combined into the matte resin. As such, the teaching in Woo on how to optimize the benefits of the tetrahydrofurfuryl acrylate do not take away from the motivation to combine the agent in the invention of Saito.
The Applicant argues, on page 9 of their remarks, that the matte resin of the instant application demonstrates high adhesion force without polishing during usage.
In response, the instant claims are broad to a wide variety, if not an infinite combination, of agents that can be included. The data in the instant specification is narrow to specific combinations in specific concentrations. As such, the instant claims are not commensurate in scope with the data and an unexpected result cannot be established.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613