CTFR 18/478,091 CTFR 90122 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of the Claims Pursuant to the amendment dated 04/17/2026, new claims 12-19 have been added. Claims 1-19 are pending. Claims 10 and 11 stand withdrawn with traverse. Claims 1-9 and 12-19 are under current examination. All rejections not reiterated have been withdrawn. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-9 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Socci et al. (US 5792447; issue date: 08/11/1998) in view of Grumelard et al. (WO 2021/254998; publication date: 12/23/2021) . With regard to claims 1, 2 and 3 , Socci discloses a nail enamel composition (title) comprising a solvent, primary film forming polymer, plasticizer (abstract), and a pigment (i.e. a coloring agent; col 5, line 58). The composition does not require any of avobenzone, octocrylene, benzophenones, merocyanines, or benzoatriazoles. Socci teaches that composition optionally contains (“the nail enamel compositions of the present invention may also include”(emphasis added)) an additional secondary film forming resin (col 4, lines 30-35). The additional resin embraces the aldehyde condensation products that are excluded by the instant claims but the resin also embraces substances such as acrylic polymers or polyvinyl resins (see col 4, lines 30-54), therefore it would have been obvious to use any resin other than the excluded aldehyde condensation products. Moreover, the second film forming resin is not required, as indicated by the phrase “may include” noted above. Socci teaches that the composition may contain a stabilizer, but does not disclose a piperidinol compound. 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 3 , it would have been prima facie obvious to add tris(tetramethylhydroxypiperidinol) citrate to Socci’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) Socci suggests adding the stabilizer 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 and can be used in nail compositions (page 10, line 27). With regard to claims 4, 5, and 12-15 , the solvents may be ethyl acetate, butyl acetate, isopropyl alcohol (e.g. claim 29). With regard to claims 6 and 16 , the pigment may include titanated mica (i.e. a pearlescent pigment (col 6, line 6). With regard to claims 7, 8, and 12-15 , the film forming polymer is preferably nitrocellulose, i.e. a cellulose polymer of natural origin; col 4, lines 1-5). With regard to claim 9 , the compositions may be inter alia a top coat, base coat, or color coat (abstract) . 07-22-aia AIA Claim s 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Socci et al. (US 5792447; issue date: 08/11/1998) in view of Grumelard et al. (WO 2021/254998; publication date: 12/23/2021) as applied to claim s 1-9 and 12-16 above, and further in view of Tanaka et al. (US 20090304612; publication date: 12/10/2009) . The relevant disclosures of Socci and Grumelard are set forth above. Neither reference discusses the contrast ratio of the composition. Tanaka teaches “a contrast ratio gives a measure of transparency. The contrast ratio is a measure of transparency and is calculated using a Y value relating to brightness in a tristimulus value of a XYZ color system determined by JIS Z8701. Specifically, a black background or a white background is contacted with a 200 μm cured artificial nail composition. Standard light C is irradiated, and a Y value in the reflected light is read. The contrast ratio (C) is determined from Yb/Yw where Yb denotes Y having a black background and Yw denotes Y having a white background. As the value C approaches 1, the cured body approaches an opaque cured body, while as the value C approaches 0, the cured body approaches a transparent cured body.” As the nail enamels of Socci can be used for any type of nail coating, including base coats, color coats, clear coats and protective top coats (abstract), the examiner considers the selection of degree of transparency as measured by contrast ratio to be merely an aesthetic design choice (see MPEP 2144.04((I)). Response to Arguments Applicant’s arguments traversing the rejection of the claims under 35 USC 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Conclusion No claims are allowed. 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 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 Application/Control Number: 18/478,091 Page 2 Art Unit: 1617 Application/Control Number: 18/478,091 Page 3 Art Unit: 1617 Application/Control Number: 18/478,091 Page 4 Art Unit: 1617 Application/Control Number: 18/478,091 Page 5 Art Unit: 1617 Application/Control Number: 18/478,091 Page 6 Art Unit: 1617
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