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
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-11, drawn to a composition in the reply filed on 12/12/25 is acknowledged.
Claims 12-20 are withdrawn as being drawn to a nonelected invention.
Claims 1-11 are under consideration.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 3/8/24 and 8/9/24. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Two identical IDS were submitted on 3/8/24, therefore only one has been signed and considered.
Drawings
The drawings are objected to because there is only one figure and the drawing refers to it as Figure 1. However, 37 CFR 1.84(u)(1) indicates when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, the figure must be referred to as The Figure. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: paragraph [0014] of the specification refers to Figure 1 but should state The Figure as there is only one figure.
Appropriate correction is required.
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.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Rughani et al. (US 2022/0257493).
Rughani et al. teach cosmetic compositions for treating nails including a water-insoluble cellulose polymer, one or more additional film-formers, plasticizer, and a urea compound (e.g. abstract). Rughani et al. teach compositions comprising:
- a solvent system comprising ethyl and butyl acetates (i.e. volatile acetates) (e.g. paragraph 0056; Claim 5; Table 1);
- nitrocellulose (e.g. paragraph 0031; Claim 4; Table 1);
- one or more additional film-formers (e.g. Claim 1; Table 1) comprising
a silicone organic hybrid polymer comprising Crotonic Acid/Vinyl C8-12 Isoalkyl Esters/VA/Bis-Vinyldimethicone Crosspolymer (e.g. paragraph 0045); and
an alkyd resin comprising phthalic anhydride/glycerol/glycidyl decanoate copolymer (e.g. paragraph 0046).
Regarding Claims 1-3, 5 and 10, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention 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.
Regarding Claim 4, Rughani et al. do not teach the inclusion of any phenyl moieties (i.e. entre disclosure).
Regarding Claim 6, Rughani et al. teach 1-20 wt% of one or more additional film-formers (e.g. paragraph 0047) including a silicone organic hybrid polymer comprising Crotonic Acid/Vinyl C8-12 Isoalkyl Esters/VA/Bis-Vinyldimethicone Crosspolymer (e.g. paragraph 0045), which overlaps with the claimed ranges. 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).
Regarding Claim 7, Rughani et al. teach 1-20 wt% of one or more additional film-formers (e.g. paragraph 0047) including an alkyd resin comprising phthalic anhydride/glycerol/glycidyl decanoate copolymer (e.g. paragraph 0046), which overlaps with the claimed ranges. 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).
Regarding Claim 8, Rughani et al. teach that the composition may include a colorant (i.e. the composition may also be free of a colorant) (e.g. paragraph 0062). In addition, Rughani et al. teach that if included, the colorant may be present at 0.5% or 1% (e.g. paragraph 0066), and the instant specification defines “substantially free” as “less than about 2% of the identified ingredient” (e.g. Specification paragraph 0024).
Regarding Claim 9, Rughani et al. do not teach the inclusion of any UV curable material (i.e. entre disclosure).
Regarding Claim 11, Rughani et al. teach:
20-90 wt% of a solvent system comprising ethyl and butyl acetates (i.e. volatile acetates) (e.g. paragraph 0060);
1-25 wt% nitrocellulose (e.g. paragraph 0031);
1-20 wt% of one or more additional film-formers (e.g. paragraph 0047) including a silicone organic hybrid polymer comprising Crotonic Acid/Vinyl C8-12 Isoalkyl Esters/VA/Bis-Vinyldimethicone Crosspolymer (e.g. paragraph 0045); and
1-20 wt% of one or more additional film-formers (e.g. paragraph 0047) including an alkyd resin comprising phthalic anhydride/glycerol/glycidyl decanoate copolymer (e.g. paragraph 0046), all of which overlap with the claimed ranges. 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).
Conclusion
No claim is allowed.
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