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
Claims 1-4, 7, 8, 14, 17, 20, 21, 34, 35, 39 and 41 are pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-4, 7, 8, 14, 17, 20, 21 and 41, drawn to a nail-enhancing composition; and the species of diethylene glycol di(meth)acrylate and ethyl (meth)acrylate, in the reply filed on 1/13/26 is acknowledged.
Claims 34, 35, and 39 are withdrawn as being drawn to a nonelected invention.
Claim 17 is withdrawn as Applicant elected a single first monomer component and claim 17 requires a “blend”.
Claims 1-4, 7, 8, 14, 20, 21 and 41 are under consideration to the extent that the composition comprises the elected species.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 11/28/23. 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 § 112
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 3 recites the limitation "The nail-enhancing, low-odor composition of claim 2" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 2 does not recite “low-odor”.
Claim 21 recites the limitation "the monomer liquid component" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 2 does not recite “monomer liquid”. Furthermore, it is unclear what the value is intended to describe (the monomer component as a whole, the first ester, the second ester, another ingredient?).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites that “the first (meth)acrylate ester of the monomer component is a di-, tri- or multi-functional (meth)acrylate ester”, however, this limitation is already recited in Claim 2. Claim 7 does not further limit claim 2.
Claim 8 recites that “the second (meth)acrylate ester of the monomer component has an alkyl side chain of 3 or less carbon atoms”, however, this limitation is already recited in Claim 2. Claim 8 does not further limit claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-4, 7, 8, 14, 20, 21 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Chisholm (US 2017/0137554; cited in IDS)
Chisholm teaches a multi-part acrylic cold curing composition (e.g. abstract). Chisholm teaches the composition comprises:
(i) a polymer comprising a copolymer of ethyl or methyl methacrylate and ethylhexyl acrylate (i.e. component formed from a first (meth)acrylate ester with an alkyl side chain of 3 or less carbon atoms; and a second (meth)acrylate ester with a primary, secondary or tertiary alkyl side chain of at least 5 carbon atoms) (e.g. paragraph 0036); and
an initiator (e.g. paragraph 0027 and 0040); and
(ii) a monomer component comprising a mixture of monofunctional and polyfunctional monomers (e.g. paragraph 0031) comprising:
diethylene glycol dimethacrylate (i.e. a first (meth)acrylate ester, where the (meth)acrylate ester is di-, tri-, or multi-functional) (e.g. paragraph 0031; Claim 2); and
ethyl methacrylate (i.e. a second (meth)acrylate ester with an alkyl side chain of 3 or less carbon atoms) (e.g. paragraph 0033); and
an accelerator (e.g. paragraph 0061).
Regarding Claims 1, 2, 7, 8, and 14, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention 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.
Regarding Claims 3 and 4, Chisholm teach that the monofunctional monomer is present at 0-20 wt% and the polyfunctional monomers are present at 2-30 wt% (e.g. paragraphs 0023 and 0033). This results in compositions wherein either of the first or second monomers are present in a greater amount by weight.
Regarding Claims 20 and 21, Chisholm is silent as to the vapor pressure and dynamic dilution olfactometry odor concentration of the monomer component. However, the compositions of Chisholm comprises the claimed monomers in the claimed amounts. “Products of identical chemical composition cannot 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 vapor pressure and dynamic dilution olfactometry odor concentration differs, and if so to what extent, from the teachings of Chisholm. Therefore the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding Claim 41, Chisholm does not explicitly teach a kit comprising instructions. However, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (see MPEP 2112.01.III).
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