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 .
Claim Objections
Claim 19 objected to because of the following informalities: “Polyisobutene” should read “polyisobutene.” Appropriate correction is required.
Applicant is advised that should claim 10 be found allowable, claim 3 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 6, 15, 16, 17 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.
Regarding claim 15, the following limitation is unclear: “aromatic-modified, cycloaliphatic” when referring to “aromatic-modified, cycloaliphatic hydrocarbon resin flakes.” This term was not clearly defined in the specification or the claims. Under broadest reasonable interpretation for prior art purposes, the examiner interprets “aromatic-modified, cycloaliphatic” hydrocarbon resin flakes as hydrocarbon resin flakes containing at least one aromatic aspect (i.e. phenyl group) and at least one cycloaliphatic aspect (i.e. hexyl group).
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.
NOTE: Buus, Liard, and Paget are foreign patents not originally in English, so the PE2E translations were used for those patents. Liard’s and Paget’s paragraph numbers were not preserved, so their citations refer to the page numbers on the PDF version of the PE2E translation.
Claims 1, 3, 5, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Novoseletsky (https://www.skininc.com/products/body/product/21896992/satin-smooths-hard-wax-pull-tabs) in view of Liard (CA 3029959 C) in further view of Buus (CN 102224212 A), Yalcin (https://www.sciencedirect.com/science/chapter/edited-volume/pii/B9781455774432000037?fr=RR-2&ref=pdf_download&rr=9da3ebec3e48d6a8), and Avery from the Wayback Machine dated 9/28/2020 (https://web.archive.org/web/20200928183020/https:/performancepolymers.averydennison.com/en/home/technologies/adhesives/rubber-hot-melt-adhesives.html).
Novoseletsky teaches hard wax pull tabs for facial and body waxing that read onto the instantly claimed hair removal strip. As evidenced by the pictures, Novoseletsky shows a clear wax tab that reads onto the instantly claimed pull tab portion, as well as a pink, hard wax that reads onto the instantly claimed hair removal portion (page 1). As shown by the pictures, Novoseletsky’s pink, hard wax conforms to various human body parts such as the eyelids and the legs and is described to help remove excess hair (page 2), so it reads onto the instantly claimed hair removal portion that is configured to conform to a portion of a human body for removing hair. Novoseletsky’s clear wax tab and pink, hard wax can be attached as shown in the pictures (page 1) and read onto the instantly claimed backing layer and adhesive layer coupled to the backing layer, respectively.
Novoseletsky does not teach a release liner removably coupled to the adhesive layer, wherein the adhesive layer further comprises a rubber pressure-sensitive adhesive, and wherein the rubber pressure-sensitive adhesive further comprises 100-percent solids hot-melt rubber.
Liard teaches an ethylene/octene copolymer in an adhesive composition for strip-free hair removal (claims 1 and 2). As evidenced by Yalcin, ethylene-octene is a rubber (page 54), which reads onto the rubber aspect of the instantly claimed rubber pressure-sensitive adhesive and the 100-percent solids hot-melt rubber. As evidenced by Avery, rubber hot melt adhesives are typically formulated from a block copolymer (page 1), like the ethylene/octene copolymer, so it is possible for hot-melt processing to be used on rubbers like the ethylene/octene copolymer. Liard teaches that rosin is a solid residue (page 1) and constitutes the largest fraction of the compositions (page 1), and that its compositions can be peeled off after a short solidification (page 2) which reads on the 100-percent solids aspect of the instantly claimed 100-percent solids hot-melt rubber.
Regarding instant claim 5, Liard teaches a main fraction of synthetic tackifying resin (claims 1-2). Liard further teaches examples that read on the instantly claimed C5 aliphatic liquid tackifying resin: Synthetic resins known as C5 (copolymers based on diene-aliphatic monomers – such as pentadiene, methylbutene, dicyclopentadiene, cyclopentadiene, and cyclopentene) are known, most often cyclopentadiene (page 2). Liard describes that the composition can be applied as a warm paste (page 3), which reads on the liquid aspect of the resin.
Regarding claim 12, Liard teaches that the ethylene/octene copolymer is present in the composition at a weight fraction of between 5 and 15% (claim 1) and that the ethylene-octene copolymer and the ethylene-vinyl acetate copolymer are present together in the composition at a weight fraction of between 5 and 15% (claim 2), which overlap with the instantly claimed range: 100-percent solids hot-melt rubber further comprises between 5 to 20 weight percent of a total weight of the rubber pressure-sensitive adhesive.
At the time of filing, the person of ordinary skill in the art would know that Liard’s ranges are obvious over the instant claims. Therefore, Liard obviates that presently claimed. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (See MPEP 2144.05 (I) regarding obviousness of ranges).
Buus teaches one or more release liners or cover film to be removed partially or completely covered with a dressing of the invention [0089], which is an adhesive (claim 1), that reads onto the instantly claimed release liner removably coupled to the adhesive layer. Buus’s adhesive is a pressure-sensitive adhesive composition (claim 1) that reads onto the pressure-sensitive adhesive aspect of the instantly claimed rubber pressure-sensitive adhesive, and the composition is hot-melt processed (claim 1), so it reads onto the hot melt aspect of the instantly claimed 100-percent solids hot-melt rubber in claim 10.
Therefore, before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to: (1) combine the wax device of Novoseletsky with the release liner and adhesive aspects of Buus and the resin and rubber aspects of Liard as evidenced by Yalcin and Avery, (2) process the ethylene/octene copolymer (rubber) of Liard with the hot-melt process of Buus as evidenced by Yalcin and Avery to create the instantly claimed 100-percent solids hot-melt rubber, (3) combine the 100-percent solids hot-melt rubber in instant claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in instant claim 5. As stated in MPEP 2144.06, "[i]t is prima facie obvious to combine 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. [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846 (CCPA 1980). In addition, regarding combination (3), claim 1 of Liard discusses the ethylene/octene copolymer being present in the composition at a weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at a weight of at least 50%, and claim 2 of Liard discusses the ethylene-octene copolymer and the ethylene-vinyl acetate copolymer being present together in the composition at weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at weight of at least 50%, so it would be obvious to combine the 100-percent solids hot-melt rubber in instant claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in instant claim 5.
Further, before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to substitute the pink, hard wax of Novoseletsky with the adhesive taught by Liard, Yalcin, Avery, Buus. This is because both materials adhere to hair so that it can be removed. Novoseletsky teaches pictures that show the pink wax adhering to the skin (along with the hairs that grow from it); Novoseletsky further teaches that the device helps remove excess hair (pages 1-2). Liard teaches the compositions mentioned can be applied in fairly thin layers and then peeled off after a short solidification and cooling period that allows the hairs to adhere (page 2). Further, simple substitution of a type of hair removal wax for a different skincare adhesive is an obvious modification and within the purview of the skilled artisan.
Claims 2, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Novoseletsky, Buus, Liard, Yalcin, and Avery (as applied to claims 1, 3, 5, 10, and 12 above) in view of Paget (WO 03075708 A1).
As applied above, Novoseletsky, Buus, Liard, Yalcin, and Avery teach the limitations of claims 1, 3, 5, 10, and 12.
Novoseletsky, Buus, Yalcin, and Avery do not teach that the backing layer is selected from a group consisting of woven fabrics, non-woven fabrics, non-woven interfacing, fusible webs, and spunbond fabrics.
Liard does teach hair removal compositions that require the use of a backing film (paper or cotton strip, cellulose or plastic strip, such as cellophane film) for removal once applied to the skin, but Liard teaches that it’s due to the compositions’ low mechanical strength (page 1). Further, Liard states without the use of a strip (claim 8) because Liard’s composition has mechanical properties such that the use of such a strip is indeed unnecessary (page 1). However, Paget teaches a tear strip which makes it possible to obtain a good compromise between the thickness and the uniformity of the layer of wax applied on the one hand and its adhesion to the hair to be plucked on the other hand (paragraph 5, page 2), which justifies the value of the backing layer of the claimed invention as well. Paget teaches a tear strip that comprises a support consisting of a piece of fabric, for example raw or bleached cotton, or of a non-woven material, for example polyester, or knitted, or of cellophane, paper, plastic film or any other material in sheet or thin plate, (paragraph 4 of page 5) which reads onto the instantly claimed backing layer is selected from a group consisting of woven fabrics and non-woven fabrics.
Before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to substitute Novoseletsky’s clear wax tab with Paget’s tear strip materials. This is because both materials have conforming properties, specifically Novoseletsky shows its clear wax tab conforming to various human body parts such as the eyelids and the legs (page 1), and Paget shows its materials to be relatively flexible in order to easily adapt to the shape and the relief of the area of skin to be depilated (paragraph 4 of page 5). Further, simple substitution of one known flexible material in a hair removal backing layer for another of Paget’s is an obvious modification and within the purview of the skilled artisan.
Claims 4, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Novoseletsky, Buus, Liard, Yalcin, and Avery (as applied to claims 1-3, 5, 10-12 above) in view of Cooper (US 20210205206 A1).
As applied above, Novoseletsky, Buus, Liard, Yalcin, and Avery teach the limitations of claims 1-3, 5, 10-12.
Regarding claims 4 and 13 specifically, Liard teaches 3 examples of paraffin oil (mineral oil), between 1 and 3% (page 4), that read onto the instantly claimed mineral oil of between 10 to 40 weight percent of the total weight of the rubber pressure-sensitive adhesive.
Regarding claim 14, Liard teaches a main fraction of synthetic tackifying resin, the synthetic tackifying resin being present at a weight of at least 50% (claims 1-2), which overlaps with the instant claimed range of C5 aliphatic liquid tackifying resin of between 30 to 60 weight percent of the total weight of the rubber pressure-sensitive adhesive. Liard further teaches examples that read on the instantly claimed C5 aliphatic liquid tackifying resin: Synthetic resins known as C5 (copolymers based on diene-aliphatic monomers – such as pentadiene, methylbutene, dicyclopentadiene, cyclopentadiene, and cyclopentene) are known (page 2). Liard describes that the composition can be applied as a warm paste (page 3), which reads on the liquid aspect of the resin.
Regarding claims 4 and 13, further, Buus teaches that in one embodiment of the invention, the adhesive composition further comprises an additional plasticizer selected from a group, one of the group members being mineral oil [0057].
Novoseletsky, Buus, Liard, Yalcin, and Avery do not teach that the mineral oil is between 10 to 40 weight percent of the total weight of the rubber pressure-sensitive adhesive.
The tables after [0013] and [0014] in Cooper teach hair removal compositions with 1-10% mineral oils, which touch on the instantly claimed range of mineral oil of between 10 to 40 weight percent of the total weight of the rubber pressure-sensitive adhesive.
At the time of filing, the person of ordinary skill in the art would know that Cooper’s ranges are obvious over the instant claims.
“In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (See MPEP 2144.05 (I) regarding obviousness of ranges). Further, it would be obvious to adjust the percentage of mineral oil taught by Liard and Cooper to match that of the claimed invention, because it would be considered routine optimization. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144).
Before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to combine the 100-percent solids hot-melt rubber in instant claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in instant claim 14. Claim 1 of Liard discusses the ethylene/octene copolymer being present in the composition at a weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at a weight of at least 50%, and claim 2 of Liard discusses the ethylene-octene copolymer and the ethylene-vinyl acetate copolymer being present together in the composition at weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at weight of at least 50%, so it would be obvious to combine the 100-percent solids hot-melt rubber in claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in claim 14. As stated in MPEP 2144.06, "[i]t is prima facie obvious to combine 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. [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846 (CCPA 1980).
Claims 6-7, 9, 15-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Liard as evidenced by Moldoveanu (https://www.sciencedirect.com/topics/chemistry/plant-resin), as well as Buus, in view of Novoseletsky, Yalcin, Avery, and Cooper (as applied to claims 1-5 10-14 above).
Liard and Buus teach some of the limitations of claims 1-5, 10-14 as applied above.
Regarding instant claims 6 and 15 specifically, based on Liard’s teachings, it would be obvious to modify the aromatic monomers (vinyltoluene, dicyclopentadiene, indene, methylstyrene, styrene and methylindene) (page 2) with a naturally occurring aliphatic resin such as labdane, biformene, communic acid, or communal (shown to be cycloaliphatic in Figure 3.2.1, page 2) as taught by Moldoveanu, since those compounds are inherent to naturally occurring resin (rosin) and Liard also discussed rosin is a resin with tackifying properties (page 1), and Liard also teaches that the resin can be unmodified (acidic) or modified rosin, through hydrogenation, esterification, or dimerization (page 2). Liard teaches a main fraction of synthetic tackifying resin, the synthetic tackifying resin being present at a weight of at least 50% (claims 1-2), which does not overlap with the instantly claimed range of 10 to 30 weight percent, but would still read on it due to routine optimization. . Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 21144.05 (II)(A)). A person of ordinary skill in the art would have a reasonable expectation of success with that resin weight percent range.
Regarding instant claims 7 and 16 specifically, Buus teaches that in one embodiment of the invention, polyisobutylene (polyisobutene) content is the final adhesive of 1-30 % (w/w) and preferably the content is 5-20% (w/w) [0045], which overlaps on the instant claimed range: polyisobutene of between 0.25 to 2 weight percent of the total weight of the rubber pressure-sensitive adhesive. At the time of filing, the person of ordinary skill in the art would know that Buus’s ranges are obvious over the instant claims. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (See MPEP 2144.05 (I) regarding obviousness of ranges).
Regarding instant claims 9 and 18, Buus teaches that a protective cover or release liner may be, for example, siliconized paper [0089], which reads on the instantly claimed release liner coated with silicone.
Liard, Moldoveanu, and Buus do not teach every limitation of claims 1-5, 10-14.
As applied above, Novoseletsky, Yalcin, Avery, and Cooper teach the remaining limitations of claims 1-5, 10-14.
Before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to combine the hair removal strip elements of Novoseletsky, Yalcin, Avery, and Cooperwith the adhesive, polyisobutylene, and silicon release liner aspects of Liard, Buus, and Moldoveanu. The combination of these prior art elements as well as their modification according to known methods is within the purview of the skilled artisan and would yield predictable results, and the skilled artisan would be motivated to do this for two reasons: as taught by Liard, hair removal compositions based primarily on rosin are known (page 1), and as taught by Cooper, additional inert ingredients may be added, and equivalents to such ingredients may be substituted (in appropriate weight percentages), to get substantially the same result, as would be apparent to one skilled in the art exercising routine experimentation [0010]. The combination of these known products with a known method for a similar purpose is obvious. As stated in MPEP 2144.06, "[i]t is prima facie obvious to combine 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 [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846 (CCPA 1980).
In addition, before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to combine the 100-percent solids hot-melt rubber in instant claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in instant claims 5 and 14 and the aromatic-modified, cycloaliphatic hydrocarbon resin flakes of claim 6 and 15. Claim 1 of Liard discusses the ethylene/octene copolymer being present in the composition at a weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at a weight of at least 50%, and claim 2 of Liard discusses the ethylene-octene copolymer and the ethylene-vinyl acetate copolymer being present together in the composition at weight fraction of between 5 and 15%, and the synthetic tackifying resin being present at weight of at least 50%, so it would be obvious to combine the 100-percent solids hot-melt rubber in claims 1, 3, 10, and 12 with the C5 aliphatic liquid tackifying resin in claim 5 and 14 and the aromatic-modified, cycloaliphatic hydrocarbon resin flakes of claim 6 and 15. As stated in MPEP 2144.06, "[i]t is prima facie obvious to combine 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. [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846 (CCPA 1980).
Claims 8, 17, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Liard in view of Novoseletsky, Buus, Yalcin, Avery, Cooper, Moldoveanu (as applied to claims 1-7, 9-16, 18 above) as evidenced by Gao (https://www.sciencedirect.com/science/article/pii/S0308814621002077).
Liard teaches some of the limitations of instant claims 1-7, 9-16, 18 as applied above; some of which are also in claim 19.
Further, Liard teaches examples containing between 5 and 10% beeswax (formulas 3-5, page 4), which read on the instantly claimed stabilizer of between 0.25 to 2 weight percent of the total weight of the rubber pressure-sensitive adhesive. As evidenced by Gao, beeswax served as a stabilizer and has great potential applications in the pharmaceutical industry (Abstract, page 1), so it is considered a stabilizer. The ranges 5-10% and 0.25-2% do not overlap, but Liard would still read on the instant claims because of routine optimization. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 21144.05 (II)(A)). A person of ordinary skill in the art would have a reasonable expectation of success with that beeswax (stabilizer) weight percent range.
Liard does not teach every limitation of claims 1-7, 9-16, 19.
As applied above, Novoseletsky, Buus, Yalcin, Avery, Cooper, and Moldoveanu teach the remaining limitations of claims 1-7, 9-16, 18-19.
Before the effective filing date of the claimed invention, it would be obvious to a person of ordinary skill in the art to combine the hair removal strip elements of Novoseletsky, Buus, Yalcin, Avery, Cooper, and Moldoveanu with the beeswax (stabilizer) aspect of Liard The combination of these prior art elements as well as their modification according to known methods is within the purview of the skilled artisan and would yield predictable results, and the skilled artisan would be motivated to do this because as taught by Cooper, additional inert ingredients may be added, and equivalents to such ingredients may be substituted (in appropriate weight percentages), to get substantially the same result, as would be apparent to one skilled in the art exercising routine experimentation [0010]. The combination of these known products with a known method for a similar purpose is obvious.
Conclusion
Claims 1-19 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLY S LIU whose telephone number is (571)272-8235. The examiner can normally be reached Monday-Friday 8:00 AM - 5:00 PM.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/ALLY S LIU/Examiner, Art Unit 1611