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 4/20/26 is acknowledged. Claims 1-13 and 21 are pending. Claims 12 and 13 have been withdrawn. Claims 14-20 have been canceled. Claim 21 is new. No claims have been amended. Claims 1-11 and 21 are under consideration.
Objections Withdrawn
The objection to the Drawings is withdrawn in view of the amended drawings.
The objection to the Specification is withdrawn in view of the amendments.
Rejections Maintained and New Grounds of Rejections
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 and 21 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).
Regarding Claim 21, 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), and 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). This results in a ratio which overlaps the claimed range. 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). In addition, in combining the two ingredients, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the concentrations through routine experimentation to arrive at the ratio of 5:1 to 100:1 in order to optimize the resulting product.
Response to Arguments
Applicant's arguments filed 4/20/26 have been fully considered but they are not persuasive.
Applicant argues that Rughani and the present invention address fundamentally different problems in the nail cosmetics art. Rughani is directed to nail treatment compositions designed to provide nail strengthening and surface smoothening through the use of urea compounds, and the present application is directed to nail polish topcoat compositions that provide durable shine retention under abrasion conditions.
This is not found persuasive. The claims are directed to a composition for use on nails, and not to a method of use. The composition of Rughani comprises the claimed ingredients, as described supra.
Applicant further argues that Rughani provides no motivation to select both a silicone organic hybrid polymer and an alkyd resin for use in the same composition.
This is not found persuasive. Rughani teaches the inclusion of one or more additional film-formers (e.g. Claim 1; Table 1) which may include 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). It would have been obvious to one of ordinary skill in the art at the time of filing to select any of the film-formers disclosed by Rughani et al. including the combination of an alkyd resin and silicone organic hybrid polymer. “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.
Applicant further argues that Rughani does not exemplify any composition containing both a silicone organic hybrid polymer and an alkyd resin.
This is not found persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). It would have been obvious to one of ordinary skill in the art at the time of filing to select any of the film-formers disclosed by Rughani et al. including the combination of an alkyd resin and silicone organic hybrid polymer.
Applicant further argues that the claimed compositions produce unexpected synergistic results. Applicant argues that Inventive examples E2.1 and E2.2 maintained dramatically higher shine compared to the comparative examples.
This is not found persuasive. First, the claims are far broader than the data shown, both in terms of chemical structures and amounts thereof. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Second, it is unclear if the gloss is a result of the synergism between the phthalic anhydride/glycerol/glycidyl decanoate copolymer and the Crotonic Acid/Vinyl C8-12 Isoalkyl Esters/VA/Bis-Vinyldimethicone Crosspolymer. For example, comparative example E1.4 which comprises only the Crotonic Acid/Vinyl C8-12 Isoalkyl Esters/VA/Bis-Vinyldimethicone Crosspolymer at 0.1 wt% and does not comprise phthalic anhydride/glycerol/glycidyl decanoate copolymer performs similarly to inventive Example E2.2 which additionally comprises 0.7 wt% of phthalic anhydride/glycerol/glycidyl decanoate copolymer. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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
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