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 .
Election/Restrictions
Applicant's election with traverse of invention group I, claims 1-11, in the reply filed on 04/14/2026 is acknowledged. The traversal is on the ground(s) that there is no burden to search both invention groups. This is not found persuasive because there is indeed burden to search all invention groups together. For example, the search of invention group I would not necessarily find invention group II.
The requirement is still deemed proper and is therefore made FINAL.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 04/14/2026.
Applicants further elected acrylate / Ethylhexyl acrylate copolymer as specific acrylic latex polymer, polyurethane-34 as specific polyurethane, sucrose acetate isobutylate as specific saccharide ester of at least one C2-C4 organic acid. Claims 1-11 read on the elected species and are under examination. For compact prosecution purpose, polyurethane is also examined.
Claims 1-12 are pending, claims 1-11 are under examination
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/11/2024 and 01/21/2025 is being considered by the examiner.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cruz et al. (US20120160258) in view of Cauvin et al. (US20150157724).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Cruz et al. teaches an adhesive composition including a non-allergenic latex for attaching a cosmetic material or device. There is also provided a method for the use of said adhesive composition to attach a cosmetic material or device, including a false eyelash to a person's eyelid. The composition can be provided in a kit including one or more false eyelashes and a sealed container including the adhesive composition (abstract). The present invention includes an effective amount of non-allergenic latex to affix a cosmetic material or accessory to a person. Typically, such effective amount of the non-allergenic latex is a latex solids content of from about 1.0 percent by weight (wt %) to about 90 wt % of the total composition, preferably from about 15 percent by weight (wt. %) to about 40 wt % of the total composition; and more preferably, from about 20 wt % to about 30 wt % of the total composition ([0013]). The present invention also may comprise an effective amount of one or more film forming agents, including hydrophilic and hydrophobic film forming agents. The film forming agents may be any material suitable for use in a cosmetic or personal care composition including, waxes, oils, and polyols, but is preferably a film forming polymer. The term film forming polymer may be understood to indicate a polymer which is capable, by itself or in the presence of at least one auxiliary film forming agent, of forming a continuous film which adheres to a surface, such as a human integument. Polymeric film forming agents include cellulosics, polyolefins, polyvinyls, polyacrylates, polyurethanes, silicones, silicone acrylates, polyamides, polyesters, fluoropolymers, polyethers, polyacetates, polycarbonates, polyimides, epoxys, formaldehyde resins, and homopolymers and copolymers of any of the foregoing; preferably, cellulosics, polyacrylate copolymers, and mixtures thereof. Preferably such effective amount of film forming, agent is from about 0.1 wt % to about 20.0 wt % of the total composition; more preferably, from about 10.0 wt % to about 15.0 wt. %. of the total composition ([0014]). The present invention also may include an effective amount of one or more gellants to provide a gel structure or form to the composition. The gellant should be a cosmetically acceptable gellant such as silica; hydroxyethylcellulose, methylcellulose, hydroxypropylmethylcellulose, hydrox ypropylcellulose; cetyl hydroxyethylcellulose; guar gums: quaternized guar gums, nonionic guar gums, Xanthan gums: carob gums, Scleroglucan gums, gellangums, rhamsangums: karaya gums; alginates; maltodextrin; starches: hyaluronic acid and salts thereof; clays, including montmorillonites, hectorites and laponites; acrylates copolymer, crosslinked poly acrylic acid polymers; polyglyceryl(meth)acrylate polymers; polyvinylpyrrolidone; polyvinyl alcohol; crosslinked acryla mide polymers and copolymers; crosslinked methacryloy loxyethyltrimethyl ammonium chloride homopolymers; associative polymers including associative polyurethanes; and mixtures thereof; preferably crosslinked polyacrylic acid polymers, hydroxyethylcellulose, polyvinylpyrrolidone and mixtures thereof. Preferably such effective amount of gellant is from about 0.1 wt % to about 10.0 wt % of the total composition; more preferably, from about 0.1 wt % to about 5.0 wt % of the total composition ([0015]). The present invention also may comprise an effective amount of a plasticizer to increase the plasticity or fluidity of the composition. The plasticizer should be a cosmetically acceptable plasticizer such as dibutyl phthalate (DBP) and other phthalates, tributyl acetyl citrate and other citrates, ethyl toluene sulfonamide (ethyl tosylamide), n-cyclohexyl para-toluene sulfonamide, glycerol and other glycols including butylene glycol, propylene glycol, dipropylene glycol, hexylene glycol, glycol ethers, glycol esters, hydrogenated castor oil or expoxidized oils, polyesters, polybutylenes, low molecular weight aliphatic polyurethanes (about 2000 to about 10000 MW), toluene sulfonamide urea formaldehyde, γ-butyral lactone, n-butylphthalimide/isopropylphthalimide, ethylhexyl diphenyl phosphate, wool fat derivatives, chlorinated paraffins, glyceryl triacetate, camphor, and sucrose acetate isobutyrate (SAIB), and mixtures thereof, preferably butylene glycol, propylene glycol and mixtures thereof. Preferably such effective amount is from about 1.0 wt % to about 9.0 wt % of the total composition; more preferably, from about 2.0 wt % to about 5.0 wt % of the total composition ([0017]). In example of False Eyelash Adhesive, Acrylates/Ethylhexyl Acrylate Copolymer is included and 39.18% of water is present ([0025]).
Cauvin et al. teaches An aqueous dispersion capable of forming a tacky layer on drying, the dispersion composition also comprising a hydrosilylation catalyst and a polymeric film former and a surfactant of molecular weight below 1600, the composition being stabilised in dispersion form by the polymeric emulsifying agent and surfactant dissolved in the aqueous phase, wherein the polymeric film former is a polyether, anionic polymer, polyester, polysaccharide, chitosan derivative, plasticized nitrocellulose, vinylpyrrolidone polymer, polyacrylate, polymethacrylate, polyacrylamide, polyacrylonitrile or polyurethane (claims 1 and 6). Examples of suitable polyurethanes and copolymers include polyurethane-34 and 35 sold under the trade names ‘Baycusan®’ and ‘Avalure™ UR’. Polyurethane-34 is a complex polymer that is formed in a multi-step reaction. A copolymer of hexanediol, neopentyl glycol, and adipic acid is reacted with hexamethylene diisocyanate. The resulting polymer is further reacted with N-(2-aminoethyl)-3-aminoethanesulfonic acid and ethylenediamine. Polyurethane-35 is a copolymer of adipic acid, dicyclohexylmethane diisocyanate, ethylenediamine, hexanediol, neopentyl glycol and sodium N-(2-aminoethyl)-3-aminoethanesulfonate ([0034]). Personal care compositions in which the dispersion of the invention can be used to deliver a cosmetically active ingredient to eyeliner and eyelashes, etc. ([0076]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Cruz et al. is that Cruz et al. do not expressly teach polyurethane-34. This deficiency in Cruz et al. is cured by the teachings of Cauvin et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Cruz et al., as suggested by Cauvin et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to use polyurethan-34 in the adhesive composition because polyurethan-34 is a suitable ingredient in adhesive composition. Under guidance from Cruz et al. teaching polyurethan-34 as film forming agent in adhesive composition for eyelashes, Cauvin et al. teaching polyurethan-34 as suitable polyurethane film forming agent for skin care composition for eyelashes, it is obvious for one of ordinary skill in the art to use polyurethan-34 in the adhesive composition as film forming agent and procure instant claimed invention with reasonable expectation of success.
Regarding claims 1, prior art teaches an adhesive composition comprising 0.1 wt % to about 20.0 wt % of polyurethane-34 as film forming agent; about 0.1 wt % to about 10.0 wt % of acrylate copolymer with acrylate / ethylhexyl acrylate copolymer as example; about 1.0 wt % to about 9.0 wt % of sucrose acetate isobutylate as plasticizer.
Regarding the limitation of aqueous polyurethane dispersionas well as the ratio in claims 1 and 2, after the dispersion is added and mixed into the adhesive composition, there is no individual aqueous polyurethane dispersion existing in the composition, this is considered as product by process, which is not limiting. Thus, as long as prior art teaches polyurethane and water in the composition, the limitation of aqueous polyurethane dispersion. It is noted that claim 1 does not specify the solid content of polyurethane, since applicant’s specification disclosing preferably solid content of aqueous polyurethane from 20%to 60%, the solid content of polyurethane in claim is examined as 50%. Since prior art teaches 0.1% to 20% of polyurethane-34, when solid content Is 50%, when polyurethane-34 is added as aqueous dispersion, the amount of aqueous dispersion of polyurethane-34 would be (0.1%-20%)/50% = 0.2% to 40%, when acrylate / ethyl hexylacrylate copolymer is 10%, the aqueous dispersion of polyurethane-34 is 20% or 10% and, the ratio is 1:2 or 1:1, inside of claimed range of 1:3 to 3:1 and 1:1 to 2:1..
Regarding the limitation of glass transition temperature less than about -40ºC, and less than about -50ºC in claims 1 and 3, prior art teaches acrylate / ethylhexyl acrylate copolymer, which has glass transition temperature less than about -40ºC as evidenced by applicant’s specification ([0093]). Furthermore, applicants admitted that both claims 1 and 3 read on acrylate / ethylhexylacrylate copolymer.
Regarding claim 4, Cauvin et al. teaches polyurethane-34 prepared from hexanediol, neopentyl glycol, and adipic acid is reacted with hexamethylene diisocyanate. It is non-phenylated isocyanate. Furthermore, applicants admitted claim 4 read on polyurethane-34.
Regarding claims 5-6, wax, oil, silicone and polyol are recited as alternative to polyurethane, not required in the composition.
Regarding claims 7-11, optional additional adhesive polymer is not requited. Prior art teaches non-allergenic latex is a latex solids content of from about 1.0 percent by weight (wt %) to about 90 wt % of the total composition; aqueous dispersion of polyurethane-34 at 0.2% to 40% (as discussed above); about 0.1 wt % to about 10.0 wt % of acrylate / ethylhexyl acrylate copolymer; about 1.0 wt % to about 9.0 wt % of sucrose acetate isobutylate; if non-allergenic latex is regarded as additional adhesive polymer and at about 1%, meets the limitation of substantially free of (no more than about 1%) additional adhesive polymer in claim 11 according to applicant’s specification ([0016]), and the total amount of ingredients in claims 7-8 is 1% + (0.2% -40%) +(0.1% -10%) +(1%-9%) = 2.3% to 60%.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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