DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Foreign Priority Claim Status
Acknowledgment is made of the Applicant's claim for foreign priority from the Application Data Sheet filed 27 March 2024, based on the application filed in Japan on 29 March 2023. It is noted, however, that applicant has not filed a certified copy of the JP2023-052706 application as required by 37 CFR 1.55.
The Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country. The present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), the Applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application (see 37 CFR 1.55(d)(1)). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the applicable petition fee under 37 CFR 1.17(m)(1) or (m)(2).
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claims Status
Claims 1-10 are pending and under current examination in this application.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-6, and 8-10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Sheran and Haile (US20180092827A1; published 05 April 2018, hereinafter referred to as “Sheran”).
Sheran teaches an artificial photopolymerizable cosmetic composition for coating nails (Abstract) comprising a polymerizable compound component as one or more methacrylate monomers (about 5-60 wt % of the total composition; claim 1c), such as the urethane methacrylate oligomer, urethane methacrylate (¶[0038]), and optionally, one or more methacrylate oligomers (0-80 wt% of the total composition; claim 1b), such as the methacrylate monomers having an ethylenically unsaturated group including hydroxyethyl methacrylate (HEMA) and hydroxypropyl methacrylate (HPMA) (¶[0037]). The composition also comprises a urethane polymer particles component as one or more classes of particles having an about 1-100 micrometers (μm) mean particle size (claim 1a), wherein the class of particles is selected from the group consisting of a polyurethane (about 20-80 wt % of the total composition; claim 1a), including a polyurea, a polyurethane, or a copolymer of any of the preceding or an encapsulated version of any of the preceding, and a mixture thereof" (¶[0104]). The composition further comprises a polymerization initiator component as one or more photoinitiators (claim 1e), listing suitable photoinitiators (¶[0041] and ¶[0211]), such as 2,4,6-trimethylbenzoyldiphenylphosphine oxide (¶[0211]).
The disclosure of Sheran of the "photopolymerizable composition for forming a cosmetic coating for nails" (¶[0022]) is integrally suitable for and intended for use as a nail polish, gel nail, or acrylic nail composition or to obtain an artificial nail from the composition (via curing the composition to form an artificial cosmetic nail coating on a natural nail or artificial acrylic nail, as in ¶[0240]-[0251]), given the title of the invention, the specification background field of invention (¶[0002] and description of related technology sections outlining nail manicuring applications relevant to the invention, including gel applications for nails (¶[0017]), nail enamel compositions (¶[0019]) and acrylic nail forms (¶[0006]) with compositions and methods for UV-curable natural and artificial nail coatings (¶[0018]), stated advantages (¶[0030], ¶[0080]-[0088]) and use as such (¶[0240]-[0251]). No modification is required.
Sheran also teaches a method comprising applying the claimed cosmetic composition on a nail and exposing it to UV light to cure the composition and form an artificial nail coating on a natural nail or an artificial acrylic nail (¶[0240]-[0251]). Thus, instant claims 1, 5-6 and 8-10 are anticipated by the teachings of Sheran.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Sheran and Haile (US20180092827A1; published 05 April 2018, hereinafter referred to as “Sheran”).
Sheran teaches the limitations of instant claim 1, as described above, from which instant claims 2-4 and 7 depend, as described above, however does not explicitly teach the specific limitations of instant claims 2-4 and 7.
The mean urethane polymer particle size range of about 1-100 μm (claim 1a), with a more preferred range between about 5-50 μm or 5-30 μm (¶[0028]), taught by Sheran strongly overlaps the instant claim 2 range of a 0.8-52 μm average particle size and strongly aligns with and encompasses the preferable instant specification ranges of 5-52 μm, and more preferably 5-25 μm (instant specification ¶[0037]). Thus, in the absence of evidence of unexpected results or criticality of the lower range limit of 0.8-1 μm of the instant claimed range, selecting particles within the specific range of 0.8-52 μm for optimal film smoothness and performance constitutes routine optimization in the art of cosmetic nail coatings from that of the range taught by Sheran.
Sheran teaches an about 20-80 wt % discontinuous phase mixture comprised of at least class of particles selected from urethane polymer particles (claim 1a; ¶[0038]). The instant claim 3 range of 5-50 mass % partially overlaps with range taught by Sheran and the preferable instant specification range of 18-39 mass % (¶[0045]), is encompassed within the broader teachings of Sheran. It would have been obvious to a skilled formulator, seeking to increase the flexibility and reduce glossiness (matte texture) of a nail composition, as per the stated instant invention, to adjust by reducing the urethane polymer particles component mass % taught by Sheran to a lower range, and select a range such as 5-50 mass %, as matter of routine experimentation. One would be motivated to do so in optimizing matting properties and flexibility of the formulation, given that urethane acrylates are primarily used in the art of nail polish formulation as film-forming polymers providing a durable hard, high-shine finish upon polymerization by exposure to photoinitiators.
Sheran teaches that the polymers may be optionally crosslinked, provided the crosslinked particles would be "appreciably insoluble" in the continuous phase (¶[0033]), whereby one skilled in the art would recognize that selecting crosslinked urethane polymer particles would ensure the particles remain as a distinct, insoluble phase within the composition during storage an application, therefore would represent a preferred choice to achieve the key insolubility of the particles feature of Sheran.
Sheran teaches, “The photoinitiator is present in the photopolymerizable composition in amounts sufficient to be effective in aiding curing of the photopolymerizable composition. Such amounts may be determined empirically. The photopolymerizable composition comprises up to about 10 wt % of one or more photoinitiators. Under one embodiment, the photopolymerizable composition comprises about 0.5 to about 5.0 wt % of one or more photoinitiators.” (¶[0213]), wherein the relative concentration of the photoinitiator in the composition is taught to be adjustable to optimize the exotherm (¶[0227]). Thus, choosing a photoinitiator component content of 0.1 to 10 mass % for the composition would be a matter of routine experimental optimization from the teaching of Sheran.
Sheran also teaches the use of polymerizable compound component as one or more methacrylate monomers at about 5-60 wt % of the total composition (claim 1c) and optionally, one or more methacrylate oligomers at 0-80 wt% of the total composition (claim 1b), further limited to about 20-80 wt % of one or more (meth)acrylate oligomers (claim 14), thus the ranges of either the methacrylate monomers or methacrylate oligomers overlap with the instant claim 7 range of 49-94 mass %. The instant 7 claimed range of a polymerizable compound appears to be determined as the remainder of the composition after incorporating routine amounts of particles and initiator. Thus, Sheran suggests, by way including such a broad ranging wt % of both methacrylate monomers and oligomers in the invention, that a polymerizable compound content can be adjusted through ordinary optimization and both polymerizable methacrylate monomers and oligomers can be mixed (when mixed, encompassing the upper limit of the instant claimed range).
The instant specification working examples provided in Table 3-6 do not use a single polymerizable compound content above 45.8%, 55.6%, 24.2%, or 24%, respectively, or a total polymerizable compound content range from 44.5-93.3%, 53.6-85.1%, 67.3-67.4%, or 60.4-66.6%, respectively (instant specification, Tables 3-6). Thus, suggesting the working individual polymerizable compound content and total polymerizable compound content of the instant invention is comparable to that of the invention of Sheran. As such, in the absence of evidence of unexpected results or criticality of the instant claimed upper limit range of 80-94 mass %, it would have been obvious to arrive at the instant claimed composition within the ranges a polymerizable compound content of instant claim 7, based on the teachings of the Sheran, routine formulation practices and ordinary optimization.
Therefore, Sheran teaches an artificial nail composition containing all three claimed components: (A) polymerizable compound(s) (monomers and oligomers), (B) urethane polymer particles (polyurethane particles from the discontinuous phase), and (C) a polymerization initiator (photoinitiator) and it would have been prima facie obvious to one of ordinary skill in the art prior to the instant effective filing date to select crosslinked urethane polymer particles having an average particle size of 0.8- 52 μm, and at least one of a polymerizable urethane methacrylate oligomer or a polymerizable ethylenically unsaturated group monomer from the list of suitable materials taught by Sheran for formulating the composition.
Adjusting the composition component mass % from that of the teachings of Sheran to a 49-94 mass % polymerizable compound, 5-50 mass % urethane polymer particles and 0.1-10 mass % polymerization initiator would be motivated by the desire to achieve formulation properties like stability, viscosity control, reduced exotherm and ease of application per the teachings of Sheran (¶[0030], ¶[0080]-[0088]), with a reasonable expectation of success. Minor gaps in upper or lower range limits of the instant claims are bridged by Sheran’s teaching of broader, overlapping ranges and the motivation for routine optimization to achieve desired formulation properties.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L. SCOTLAND whose telephone number is (571) 272-2979. The examiner can normally be reached M-F 9:00 am to 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/RL Scotland/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615