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 .
Claims 1-11 are pending.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 10/24/2025 is acknowledged. The traversal is on the ground(s) that the groups directly/ultimately depend from claim 1 or are directed to similar elements and that there is sufficient overlap of subject matter between the groups because of this dependency/similarity that the search and examination would not be burdensome. This is not found persuasive because the arguments do not fully address the reasoning laid out in the restriction requirement mailed 08/27/2025 and because the method claims recite method steps not required by the composition claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/24/2025.
Claims 1-9 are under current examination.
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 1-9 are 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.
The term “substantially free” in claim 1 is a relative term which renders the claim indefinite. The term “substantially free” is not defined by the claim, and the specification provides the following definition:
“Free” or “substantially free” or “devoid of” as it is used herein means that while it is preferred that no amount of the specific component be present in the composition, it is possible to have very small amounts of it in the compositions of the invention provided that these amounts do not materially affect at least one, preferably most, of the advantageous properties of the compositions of the invention. Thus, for example, “free of oil” means that an effective amount (that is, more than trace amounts) of oil(s) is/are omitted from the composition (that is, about 0% by weight), “substantially free of oil” means that oil(s) is/are present in amounts not greater than 0.1% by weight, and “devoid of oil” means that oil(s) is/are present in amounts not greater than 0.25% by weight, based on the total weight of the composition. The same nomenclature applies for all other ingredients identified throughout the application and in this paragraph such as, for example, UV filters and/or surfactants (compositions of the invention which are “free of UV filters,” “substantially free of UV filters,” and “devoid of UV filters,” as well as “free of surfactants,” “substantially free of surfactants,” and “devoid of surfactants,” have meanings consistent with the discussion within this paragraph), even if not specifically discussed for each identified ingredient in the application. Discussed examples of the use of such language such as those in this paragraph are intended to be exemplary, not limiting.
The above definition describes the meaning of “substantially free” in relative terms, e.g.: “preferred that no amount of the specific component be present in the composition, it is possible to have very small amounts of it in the compositions of the invention provided that these amounts do not materially affect at least one, preferably most, of the advantageous properties of the compositions of the invention”. It is not clear from the specification what amount of the specific UV filters recited in instant claim 1 would materially affect one or more or preferably most of the advantageous properties of the invention or what the particular advantageous properties are that the specific UV filters would interfere with and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the amount of avobenzone, octocrylene, benzophenones, benzotriazoles, and/or merocyanines that may be present within the scope of the claimed invention is not clear.
Regarding claims 1, 2, 4, 5, and 8, the word "preferably" renders these claims indefinite because it is unclear whether the limitation(s) following the word are part of the claimed invention. See MPEP § 2173.05(d).
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MINTEL, anonymous “Nail Colour”, Database Accession NO. 3646011 01Dec 2015 XP093173893; cited as NPL reference 3 in the IDS filed 01/27/2025).
On page 2, MINTEL discloses a nail color composition (i.e. a color coat; limitation of instant claim 9) comprising the solvents butyl acetate, ethyl acetate, isopropyl alcohol and ethanol (limitations of instant claims 1, 4, and 5), the coloring agents inter alia titanium dioxide, iron oxide, red 6, and mica (i.e. coloring agents, and mica which is a pearlescent pigment; limitations of instant claims 1 and 6), nitrocellulose (i.e. a film forming polymer of natural origin; limitations of instant claims 1, 7, and 8), and tris(tetramethylhydroxypiperidionol) citrate (limitations of instant claims 1 and 3). The composition also contains acetyl tributyl citrate (i.e. a plasticizer; limitation of instant claim 2). With regard to claim 1, the composition contains bumetrizole, which is a benzotriaxole compound. The examiner notes that claim 1 currently recites “wherein the composition is substantially free of avobenzone, octocrylene, benzophenones, benzotriazoles and/or merocyanines” (emphasis added). The examiner interprets the phrase “and/or” to limit the claimed invention to compositions substantially lacking only one of the listed substances. Accordingly, as the composition disclosed by MINTEL does not contain avobenzone, octocrylene, benzophenones, and merocyanines, the composition anticipates the instant claims.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Malnou (US 2004/0022749; publication date: 02/05/2004) in view of Grumelard et al. (WO 2021/254998; publication date: 12/23/2021).
In example 2, para 0038, Malnou discloses a nail composition (title, abstract) comprising isopropanol, ethyl acetate, butyl acetate (solvents; limitations of instant claims 1, 4, and 5), red 7 lake, red 34 lake, mica titane (mica titane is a pearlescent pigment coloring agent; limitations of instant claims 1 and 6), and nitrocellulose (i.e. a polymer of natural origin that acts as a film forming agent in the formulation; limitations of instant claims 1, 7, and 8). With regard to instant claim 3, the composition contains acetyl tributyl citrate. The compositions disclosed by Malnou do not contain avobenzone, octocrylene, benzophenones, benzotriazoles, and/or merocyanines. The composition can further comprise UV quenchers (claim 11); however, Malnou does not disclose a piperidinol compound as required by the instant claims.
Grumelard discloses that tris(tetramethylhydroxypiperidinol) citrate is a photostabilizing quenching agent (page 18, lines 24-page 19, line 5).
With regard to claims 1 and 2, it would have been prima facie obvious to add tris(tetramethylhydroxypiperidinol) citrate to Malnou’s nail composition. The skilled artisan would have been motivated to do so in order to provide stability against light exposure and had reasonable expectation because (1) Malnou suggests adding the UV quencher class of substances and (2) because Grumelard establishes tris(tetramethylhydroxypiperidinol) citrate to have been an effective photostabilizing quencher as of the instant effective filing date.
With regard to claim 9, the example nail compositions contain color and are therefore considered to fall within the scope of “color coat”.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617