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
The Applicant’s reply filed on 3/16/26 is acknowledged. Claims 1-9 are pending. Claim 9 has been withdrawn. Claim 1 has been amended. Claims 1-8 are under consideration.
Objections Withdrawn
The objections of Claim 1 are withdrawn in view of the amended claim.
Rejections Withdrawn
The rejection of Claims 1-8 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
The rejection of Claims 1-8 under 35 U.S.C. 103 as being unpatentable over Kurata (US 2012/0157564; cited in IDS) is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
Terminal Disclaimer
The terminal disclaimer filed on 3/16/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 12,508,219 and 18/005,585 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 3/20/26. 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
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2017/0319461; cited in IDS).
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 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).
Regarding Claim 8, Chen further teaches coating a substrate with the claimed composition prior to curing (e.g. Examples, paragraph 0047).
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.
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 date of this final action.
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
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