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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/24/26 has been entered.
Claims 1-10 are pending. Claim 9 is withdrawn. Claim 1 is amended. Claim 10 is new. Claims 1-8 and 10 are under consideration.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied and constitute the complete set presently being applied to the instant application.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 8/14/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 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 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.
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 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2017/0319461; cited in IDS) in view of Takeoka et al. (JP 2020/055771-A).
Chen et al. teaches a photo-curing nail gel composition (e.g. abstract).
Regarding Claim 1, Chen teaches a photocurable composition (e.g. abstract and Examples) comprising:
component (A) : a polyurethane (meth) acrylate oligomer (e.g. paragraph 0021, Examples);
component (B) : a polyfunctional (meth)acrylate including tri(meth)acrylate (i.e. a compound having three or more functional groups which are (meth)acryloyl groups) (e.g. paragraph 0011, 0025; Examples);
component (C): a polyfunctional thiol compound (e.g. paragraph 0029; Examples); and
component (D) : a photoinitiator (e.g. paragraph 0028, Examples).
Regarding the concentration of (C), Chen et al. exemplify a composition comprising 65 wt% (A), 4 wt% (B), 3 wt% (C), and 2 wt% (D) (e.g. Example 3). This results in 4 parts by weight of (C) compared to the total of (A) and (B), which is slightly above the claimed range. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. In the instant case, a ratio of 4 parts of (C) and 3 parts of (C) are expected to have the same curing and nail coating properties. In addition, Chen et al. more broadly teach 50 wt % to 80 wt % of the polyurethane (A), 1 wt% to 30 wt% of the trifunctional (B), and 1 wt% to 10 wt% of the polyfunctional thiol (C) (e.g. paragraphs 0021, 0026 and 0029). Which results in ratios within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding the concentration of (B), Chen et al. exemplify a composition comprising 65 wt% (A) and 4 wt% (B) (e.g. Example 3). This results in 6 parts by weight of (B) compared to the 100 parts of (A), which is slightly below the claimed range of 10-50 parts. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. In the instant case, a ratio of 6 parts of (B) and 10 parts of (B) are expected to have the same curing and nail coating properties. In addition, Chen et al. more broadly teach 50 wt % to 80 wt % of the polyurethane (A) and 1 wt% to 30 wt% of the trifunctional (B) (e.g. paragraphs 0021 and 0026). Which results in ratios within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding component (A), Chen teaches the polyurethane (meth)acrylate resin of the invention may be obtained from commercially available products, such as: 6148-J75 produced by Eternal Materials Co., Ltd, CN966-J75 produced by Sartomer Co., DM553, DM5433H and DM5232 produced by Double Bond Chemical Inc., Co., Ltd. However, the invention is not limited thereto, and other commercially available products may also be used according to the actual operation condition (e.g. paragraph 0021). Chen does not teach that the polyurethane (meth)acrylate resin has a polyether skeleton. This is made up for by the teachings of Takeoka et al.
Takeoka et al. teach a curable gel nail composition capable of forming a gel nail that is easy to spread wet on a nail surface, and is excellent in adhesion between a nail and a cured coating film and in durability (e.g. abstract). Takeoka et al. teach the inclusion of a urethane (meth) acrylate comprising a polyether, and exemplify Art Resin UN-6303, which has a polyether skeleton (e.g. page 3-4; and 13). Takeoka et al. teach that Art Resin UN-6303 is a non-yellowing polyurethane (e.g. page 13).
Regarding Claim 1, it would have been obvious to one of ordinary skill in the art at the time of filing to select the Art Resin UN-6303 of Takeoka et al. for use in the nail composition of Chen et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are useful as nail gel compositions comprising similar ingredients and one of ordinary skill would have been motivated in order to provide the benefits of non-yellowing, as taught by Takeoka et al. “When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). In the alternative, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the nail gel compositions of Chen and Takeoka to form a new nail gel composition comprising the claimed ingredients. "It 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, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding Claim 2, Chen teaches that the polyfunctional thiol compound may comprise trimethylolpropane (e.g. paragraph 0030).
Regarding Claim 3, Chen teaches that the polyfunctional (meth)acrylate has three functional groups (e.g. paragraph 0025; Examples).
Regarding Claims 4 and 5, Chen further teaches the inclusion of a monofunctional and difunctional methacrylate monomers, including polyethers (e.g. dipropylene glycol diacrylate (DPGDA)) (e.g. paragraphs 0023 and 0024; Examples).
Regarding Claim 6, Chen is silent as to the gloss of the cured product. However, “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In addition, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant's “glossiness of a surface of a cured product when the photocurable resin composition is applied so as to have a film thickness of 0.1 mm and cured at an integrated light quantity of 7.5 kJ/m2 and an uncured product on the surface of the cured product is wiped off with a solvent is 67 or more and 88 or less at 200” differs, and if so to what extent, from the teachings of Chen. The US Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent Applicant may present previously unmeasured characteristics. When PTO shows a sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 7, the limitations are directed to an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the composition of Chen et al. comprises the claimed components in the claimed amounts, therefore the claim has been met. Chen further teaches coating a substrate with the claimed composition prior to curing (e.g. Examples; paragraph 0047). In addition, Takeoka et al. teach the composition may be used as a topcoat (e.g. page 11).
Regarding Claim 8, Chen further teaches coating a substrate with the claimed composition prior to curing (e.g. Examples, paragraph 0047). Takeoka also further teaches coating a substrate with the claimed composition prior to curing (e.g. page 11).
Regarding Claim 10, Takeoka et al. further teach the inclusion of one or more polyfunctional monomers including ethoxylated bisphenol A di (meth) acrylate (e.g. page 6).
Response to Arguments
Applicant’s arguments with respect to claims 1-8 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 claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/Primary Examiner, Art Unit 1619
