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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 05/07/2026 is acknowledged. Claims 16 and 17 have been withdrawn and new claims 18-20 have been added. Claims 1-15 and 18-20 are under examination in the instant office action.
Priority
The examiner noted that the instant application claims FR 2213420 as foreign priority; however, the examiner couldn’t find the certified copy of the claimed FR 2213420 of record. The examiner would appreciate the assistance form the applicants in procuring the documents for addition to the file; otherwise, the claim to foreign priority will not be met and the right of priority may be lost. See MPEP 215.03:
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.
In the application data sheet: applicant bears the ultimate responsibility for ensuring that a copy of the foreign priority application is received by the office from the participating foreign intellectual property office or a certified copy of the foreign priority application is filed, within the time period specified in 37 CFR 1.55(g)(1).
Rejections withdrawn
Applicant’s amendments and arguments filed on 05/07/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the nonstatutory obviousness-type double patenting rejections of claims 1-15 over claims 1-16 of U.S. Patent No. 9,649,270 B2, 1-18 of U.S. Patent No. 10,071,046 B2 (corrected from 10,071,146), 1-19 of U.S. Patent No. 10,219,991 B2, 1-14 of U.S. Patent No. 10,568,815 B2, 1-18 of U.S. Patent No. 10,576,025 B2, and 1-22 of U.S. Patent No. 10,973,753 B2 from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. In addition, new claims are hereby included in the rejections.
Claim Rejections - 35 USC 112(b)
The following is a quotation of the second paragraph 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.
Claims 4 and 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of " the dispersion of acrylic polymer particles is a dispersion of C1-C4 alkyl (meth)acrylate polymer particles" in claim 1 and the recitations of “the acrylic polymer particles is methyl acrylate and/or ethyl acrylate polymer" in claim 4 and the recitation of “the acrylic polymer particles are at least one selected from the group consisting of: methyl acrylate homopolymers; ethyl acrylate homopolymers; methyl acrylate/ethyl acrylate copolymer; methyl acrylate/ethyl acrylate/acrylic acid copolymers; methyl acrylate/ethyl acrylate/maleic anhydride copolymers; methyl acrylate/acrylic acid copolymers; ethyl acrylate/acrylic acid copolymers; methyl acrylate/maleic anhydride copolymers; and ethyl acrylate/maleic anhydride copolymers” in claim 9 render claims 4 and 9 indefinite. The term (meth)acrylate, as an ester of acrylate, is different from acrylate and acrylate is not a species within (meth)acrylate. It is confusing to one of ordinary skill whether the acrylic polymer is “(meth)acrylate” as recited in claim 1 or is “acrylate" as recited in claims 4 and 9.
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The recitation of "the stabilizer is selected from the group consisting of: isobornyl (meth)acrylate homopolymers; and statistical copolymers of isobornyl (meth)acrylate and of C1-C4 alkyl (meth)acrylate" in claim 1 and the recitations of “the stabilizer is at least one selected from the group consisting of: isobornyl acrylate homopolymers; statistical copolymers of isobornyl acrylate/methyl acrylate; statistical copolymers of isobornyl acrylate/methyl acrylate/ethyl acrylate; and statistical copolymers of isobornyl methacrylate/methyl acrylate" in claim 10 render claim 10 indefinite. The term (meth)acrylate, as an ester of acrylate, is different from acrylate and acrylate is not a species within (meth)acrylate. It is confusing to one of ordinary skill whether the stabilizer is “(meth)acrylate” as recited in claim 1 or is “acrylate" as recited in claim 10.
To expedite the prosecution "(meth)acrylate” and ”acrylate" are given their broadest reasonable interpretations by the examiner in light of the specification in the 102 and 103 rejections as either "t(meth)acrylate” or ”acrylate".
Response to Applicants’ arguments:
Applicants argue that "(meth)acrylate” is known in the art to be related to both (meth)acrylate and acrylate.
However, this argument is not deemed persuasive. (meth)acrylate and acrylate are two different terms for two structurally different monomers, unless the specification clearly defines (meth)acrylate encompassing both (meth)acrylate and acrylate while the instant specification does not define (meth)acrylate encompassing both (meth)acrylate and acrylate. Please refer to MPEP 2111.01 IV:
The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess.
Claim Rejections - 35 USC § 102
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, 2, 4-15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by El-Khouri et al. (US 2016/0175232 A1).
El-Khouri et al. meet all of the limitations of claims 1, 2, and 4-15. El-Khouri et al. disclose an anhydrous (the instant claim 13) (claim 6) color cosmetic composition for nail (the instant claims 14 and 15) (paragraph 17 and 19) comprising
at least one dispersion of acrylic polymer particles,
about 19-30% by total weight of at least a plasticizing agent including phenyl trimethicone (the claimed silicone-organic polymer hybrid compound film forming polymer in the instant claim 1) (paragraph 111);
at least one volatile oil (the claimed base composition in the instant claims 1) (title and abstract) and
exemplified example 10 D in table 5 a composition comprising
51.02% by weight of oil dispersion example 3 (49% solids and 51% isododecane → 26.02% by total weight of isododecane, the claimed about 5-60% by total weight of solvent in the instant claim 1 and about 15-40% in the instant claim 18);
wherein the oily dispersion of example 3 contains methyl acrylate/ethyl acrylate/acrylic acid (24.5/62.8/12.7) copolymer particles (the claimed acrylic polymer particle in the instant claims 1 and 4-9) stabilized with an isobornyl acrylate/methyl acrylate/ethyl acrylate (92/4/4) statistical copolymer stabilizer (the claimed isobornyl methacrylate homopolymer or statistical copolymer in the instant claim 10) and total (stabilizer + particles) 10% acrylic acid, 20% methyl acrylate, 50% ethyl acrylate and 20% isobornyl acrylate.
The weight percentage of stabilizer (isobornyl acrylate/methyl acrylate/ethyl acrylate) relative to stabilizer + particles is calculated to be 21.739% (20% / 92% = 21.739% based on 20% isobornyl acrylate in 100% stabilizer + particles and 92% isobornyl acrylate in isobornyl acrylate/methyl acrylate/ethyl acrylate) (within the claimed 1-40% by weight of stabilizer relative to stabilizer + particles in the instant claim 2).
No UV-curable material is disclosed by El-Khouri et al. (the 3rd wherein clause in the instant claim 1).
Though El-Khouri et al. do not expressly teach the properties in the instant claims 11 and 12, as a result of the composition having the same components as claimed, the composition would necessarily have the claimed properties, whether expressly recognized by El-Khouri et al. or not. See MPEP 2112.01 II:
"A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
Claims 1-15 and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over El-Khouri et al. (US 2016/0175232 A1).
The teachings of El-Khouri et al. are described in detail above and that discussion is hereby incorporated by reference.
El-Khouri et al. also teach the composition comprises about 7-40% by total weight of acrylic polymer particles, including all ranges and subranges therebetween (paragraph 74), i.e., including 7% by weight with sufficient specificity according to MPEP 2131.03. The weight percentage of acrylic particle relative to the dispersion is calculated to be 38.35% based on the dispersion of example 3 containing 49% solids with 21.74% stabilizer → dispersion containing 49% solids with 78.26% acrylic particle (100% - 21.74% = 78.26%) → dispersion containing 38.35% acrylic particle (49% x 78.26% = 38.35%). Thus, the weight percentage of dispersion relative to the composition is calculated to be 18.25% based on the composition comprising 7% by total weight of acrylic polymer particles (7% / 38.35% = 18.25%) (within the claimed 0.01-20% by weight of dispersion in the instant claim 3).
Or, alternatively, the weight percentage of dispersion relative to the composition is calculated to be 18.25-104.30% based on the composition comprising 7-40% by total weight of acrylic polymer particles (7% / 38.35% = 18.25% and 40% / 38.35% = 104.30%) (the instant claim 3).
A prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection. The claimed range of dispersion is 0.01-20% by weight and the range of dispersion taught in the prior art is 18.25-104.30% by weight and therefor, overlaps with the claimed range. Please refer to MPEP 2144.05:
“[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.”
Response to Applicants’ arguments:
Applicant’s arguments based on the amendments are addressed in the modified rejections above (newly underlined).
New ground of rejection necessitated by Applicant’s amendment
The new claims necessitate the following new ground of rejection.
Claims 19 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over El-Khouri et al. (US 2016/0175232 A1), as applied to claims 1, 2, 4-15, and 18 in the 102(a) rejection above and claims 1-15 and 18 in the 103(a) rejection above, in view of Kergosien et al. (US 2014/0314696 A1).
The teachings of El-Khouri et al. are discussed above and applied in the same manner.
El-Khouri et al. do not specify the plasticizer including ethyl tosylamide resin.
This deficiency is cured by Kergosien et al. who teach a nail composition (claim 11) comprising plasticizers including ethyl tosylamide resin and phenyl trimethicone (paragraph 154, 162, 165).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in El-Khouri et al. and Kergosien et al. to replace phenyl trimethicone plasticizer taught by El-Khouri et al. with ethyl tosylamide resin. Both ethyl tosylamide resin and phenyl trimethicone being suitable plasticizers in a nail composition was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replace phenyl trimethicone plasticizer taught by El-Khouri et al. with ethyl tosylamide resin flows from both having been used in the prior art, and from both being recognized in the prior art as useful for the same purpose.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-15 and 18-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 9,649,270 B2, 1-18 of U.S. Patent No. 10,071,046 B2 (corrected from 10,071,146), 1-19 of U.S. Patent No. 10,219,991 B2, 1-14 of U.S. Patent No. 10,568,815 B2, 1-18 of U.S. Patent No. 10,576,025 B2, and 1-22 of U.S. Patent No. 10,973,753 B2 in view of El-Khouri et al. (US 2016/0175232 A1) and Kergosien et al. (US 2014/0314696 A1).
The subject matter claimed in the instant application is fully disclosed in the patents and is covered by the patents since the patents in view of El-Khouri et al. (US 2016/0175232 A1) and Kergosien et al. (US 2014/0314696 A1) and the application are claiming common subject matter.
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same composition.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 05/07/2026, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are allowed.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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