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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 02/24/2026 is acknowledged. Claim 2 has been canceled and claims 15-20 have been withdrawn. Claims 1 and 3-14 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 02/24/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the claim objection of claim 13, U.S.C. 102(a)(1) rejection of claims 1, 4-7, and 14 over Xu et al. (US 2022/0016015 A1), 35 U.S.C. 103(a) rejection of claims 1 and 4-14 over Xu et al. (US 2022/0016015 A1), and nonstatutory obviousness-type double patenting rejection of claims 1, 4, 6, and 14 over claims 1-11 of U.S. Patent No. US 11,446,228 B2from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejection of the claims is remained for reasons of record and the following. The rejection is modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 and 3-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kozee et al. (US 2021/0238434 A1).
Kozee et al. teach stable ink compositions (abstract) comprising
about 60% by weight of solvent including ethyl acetate and butyl acetate (the instant claims 1, 5, 8, and 13) (paragraph 63, 65, and 71);
about 1-5% by weight of pigments (the instant claims 1, 4, and 13) (paragraph 74);
about 2-12% by weight of resins including nitrocellulose (water insoluble) (the instant claim 1), acrylic resin including Joncryl 683 (acrylic copolymer with KOH value 160 mg/g) (the instantly claims 1 and 3), AD-PRO MTS as a sulfonamide-modified epoxy resin (tosylamide/epoxy, the instant claims 1 and 6) (paragraph 90, 92, and 94);
plasticizers including acetyl tri-n-butyl citrate (the instant claim 7) (paragraph 99); and
surfactant additive (the instant claim 14) (paragraph 102).
Kozee et al.’s teaching of about 2-12% by weight of resins including nitrocellulose, Joncryl 683, and AD-PRO MTS is construed as the weight percentage of each of nitrocellulose, Joncryl 683, and AD-PRO MTS being < about 2-12% by weight.
The weight percentage ratio between nitrocellulose and acrylic copolymer is calculated to be 12:2 to 2:12 (12%/2% and 2%/12%) → 0.167-6:1.
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed, [on nail]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Kozee et al. do not specify the same weight percentages of nitrocellulose, Joncryl 683, and AD-PRO MTS in the instant claims 1 and 10-13 (< about 2-12% by weight of nitrocellulose, < about 2-12% by weight of Joncryl 683, and < about 2-12% by weight of AD-PRO MTS vs the claimed about 5-15% in the instant claims 1 and 13 → 4.25-17.25% with ±15% deviation, the claimed about 0.5-3% and about 0.5-2% in the instant claims 10, 11, and 13 → 0.425-3.45% and 0.425-2.3% with ±15% deviation, and the claimed about 5-10% in the instant claims 12 and 13 → 4.25-11.5% with ±15% deviation according to the instant specification paragraph 19).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside/overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of nitrocellulose is about 5-15% (4.25-17.25%) by weight and the range of nitrocellulose taught in the prior art is < about 2-12% by weight and therefor, overlaps with the claimed range.
The claimed range of acrylic copolymer with an acid value of about 100-170 mg KOH per gram is about 0.5-3% and about 0.5-2% (0.425-3.45% and 0.425-2.3%) by weight and the range of Joncryl 683 taught in the prior art is < about 2-12% by weight and therefor, overlaps with the claimed range.
The claimed range of epoxy is about 5-10% (4.25-11.5%) by weight and the range of epoxy taught in the prior art is < about 2-12% by weight and therefor, includes with the claimed range.
Kozee et al. do not specify the same weight percentage ratio between nitrocellulose and acrylic copolymer in the instant claim 1 (0.167-6:1 vs the claimed about 0.02-0.8:1 → 0.017-0.92:1 with ±15% deviation).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of weight percentage ratio between nitrocellulose and acrylic copolymer is about 0.02-0.8:1 (0.017-0.92:1) and the range of weight percentage ratio between nitrocellulose and acrylic copolymer taught in the prior art is 0.167-6:1 and therefor, overlaps with the claimed range.
Response to Applicants’ arguments:
Applicant’s argument with regard to Kozee et al. not teaching the new limitation of weight percentage ratio between acrylic copolymer to epoxy resin is addressed in the modified rejection above (newly underlined).
Applicants argue that Kozee et al. do not prov guidance for selecting the claimed combination of three components.
However, this argument is not deemed persuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. in the instant case Kozee et al. teach from about 2% to about 12% by weight of at least one binder resin (paragraph 87 and 94) including nitrocellulose, acrylic resin including Joncryl 683 (acrylic copolymer with KOH value 160 mg/g), and AD-PRO MTS (tosylamide/epoxy) (paragraph 90 and 92). 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).
Applicants argue that the composition taught by Kozee et al. could not be modified to be operable for its intended purpose with a viscosity of <30 cPs which is incredibly thin in comparison to a typical nail lacquer viscosity of 1000-3000 cPs.
However, this argument is not deemed persuasive. The viscosity of the claimed composition is not claimed and there is no factual support for the alleged a typical nail lacquer viscosity of 1000-3000 cPs while Remzet al. (US 4,712,571) disclose nail polish compositions having viscosity of about 10-25 cps (column 14, line 21-26).
Conclusion
No claims are allowed.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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