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.
As such, Applicants’ effective filing date, for the purposes of consideration on the merits, is 27 March 2024.
Status of the Claims
Amendments to the Claims and Arguments/Remarks filed 16 April 2026, in response to the Office Correspondence dated 17 December 2025, are acknowledged.
The listing of Claims filed 16 April 2026, have been examined. Claims 1, 3, 4, and 6-10 are pending. Claim 1 is amended, claims 2 and 5 are canceled, and no new claims have been added.
Response to Amendment
The prior requirement concerning foreign priority remains outstanding. The applicant has not yet fully resolved the matters previously raised regarding certified copy of the Japanese priority application, compliance with 37 CFR 1.55, and certified English translation where required. These matters are maintained.
Claims 2 and 5 have been canceled, thus the rejections of such are moot. The applicant’s Remarks state that claims 1, 3, 5 and 6-10 remain pending, however, claim 5 has been expressly canceled. Examination proceeds on the claims presently pending in the claim listing. Claim 7 is newly rejected under 35 U.S.C. § 112(b) for lack of proper antecedent basis from amended claim 1, as detailed below.
The applicant has amended claim 1 to include the limitation of having an oligomer molecular weight from 300-30,000. As such, the prior rejection of the claims under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 are withdrawn and new grounds of rejection for the claims under 35 U.S.C. § 103 have been made, as necessitated by amendment for the claims, as detailed below. The evidence presently of record does not establish criticality of the claimed particle-size endpoints, unexpected results commensurate in scope with the claims, or nonobviousness of the newly recited oligomer/monomer selections.
New Rejections
The following new rejections are made from the previous Office Correspondence dated 17 December 2025, as the applicant's amendment necessitated the new grounds of rejection presented below based on the amended/newly cited limitations.
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites "a component (A)", "a component (B)" and "a component (C)", however the components have already introduced in claim 1, from which they depend. Thus, the indefinite article "a" should be replaced with "the".
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, 3, 4, and 6-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Sheran et al. (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]).
Thus, Sheran teaches combined use of oligomers and monomers in the same photopolymerizable composition. It would have been obvious to select one or more urethane (meth)acrylate oligomers and one or more known acrylate/methacrylate monomers from the presently recited classes because they are art-recognized materials used to tune viscosity, adhesion, flexibility, and cure profile in UV-curable nail formulations.
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]). 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]).
However, Sheran does not explicitly teach an oligomer molecular weight of between 300-30,000. Evidentiary references, Chen et al. (US5716603A; published 10 February 1998), Vu et al. (US20120083547A1; published 05 April 2012), and Kazuo et al. (JP2017171633A; published 28 September 2017), all teach that such molecular weights are conventional for urethane acrylate oligomers used in radiation-curable coatings and nail formulations (Chen et al., claim 2, teaches a nail polish composition comprising an aqueous solution containing an acrylic resin crosslinked with a difunctional acrylated urethane oligomer having an average molecular weight of 5,000 to 180,000; Vu et al., ¶[0030] teaches nail coating system comprising a polymerizable liquid composition of a urethane (meth)acrylate resin with a molecular weight from about 100 to about 20,000; and Kazuo et al. (Abstract) teaches photocurable artificial nail composition containing a urethane (meth) acrylate oligomer having a weight average molecular weight of 1,000 or less). Thus, selection of oligomer molecular weight within that range would have been an ordinary formulation parameter optimized for viscosity, handling, and cured film properties. The applicant has not identified any unexpected result attributable specifically to the claimed molecular-weight boundaries.
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 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.
Response to Arguments
Applicant Arguments/Remarks of the reply, filed 16 April 2026, have been fully considered.
The amendment narrows claim 1 by incorporating a range that substantially overlaps with the range taught by Sheran. Sheran teaches polyurethane particles having a mean particle size of about 1-100 μm (claim 1(a)), and preferred particle sizes of about 5-50 μm and about 5-30 μm; ¶[0028]). The presently claimed range of 0.8-52 μm materially overlaps Sheran’s expressly disclosed preferred range of 5-50 μm. Where claimed and prior art ranges overlap, a prima facie case of anticipation or obviousness is established unless the applicant demonstrates criticality throughout the claimed range (see In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)). Accordingly, mere incorporation of the former dependent limitation does not, by itself, overcome the prior rejection.
The applicant argues the criticality of the 0.8-52 μm range by relying primarily on Example 18, which uses 75 μm particles and shows poor properties, while Examples 1-27 (except 18) show good properties, purportedly demonstrating criticality of the 0.8-52 µm range. This argument is not persuasive. The examiner agrees that 75 µm performs poorly. However, Example 18 compares only one composition at 75 μm, which lies outside both the presently claimed upper limit (52 μm), and Sheran’s expressly preferred range (5-50 μm; ¶[0028]). Thus, Applicant has not established that the alleged improvement arises from the entirety of the claimed range 0.8-52 μm, nor that the claimed range is critical relative to Sheran’s overlapping preferred range. The difference between 52 µm and 50 µm is trivial (4%). No evidence has been presented comparing 50 μm vs. 52 μm, 52 μm vs. 53 μm, 1 μm vs. 0.8 μm, or any data demonstrating an unexpected inflection at the presently claimed boundaries. Without such a comparison, no criticality is shown. A simple optimization of Sheran’s disclosed 5-50 µm range to 0.8-52 µm is obvious. Accordingly, the evidence does not rebut the prima facie case (see MPEP 716.02(a)).
In addition, the applicant’s own data undermine criticality. The specification’s working examples (Tables 3-6) do not systematically vary particle size across the claimed lower range. The smallest particle size tested appears to be in the micrometer range, but no example demonstrates that particles below 1 µm (down to 0.8 µm) produce results superior to 5 µm particles. The claimed lower limit of 0.8 µm, thus appears to be an arbitrarily selection. The applicant fails to show that 0.8 µm (barely above submicron) provides any unexpected benefit over 5 µm. MPEP § 2114.05 requires comparative data showing that the claimed range produces results different from and better than the prior art range across the entire range. The applicant has not compared the claimed 0.8-52 µm range to Sheran’s 1-100 µm or 5-50 µm ranges using identical formulations. The comparison of Example 18 (75 µm) to examples with ~5-25 µm particles merely shows that large particles (75 µm) perform poorly, which is a predictable result. It does not show that the narrow range of 0.8-52 µm is critical over Sheran’s 5-50 µm range.
The applicant further argues that advantageous effects are achieved by the specifically recited oligomer and monomer selections and that Sheran provides no basis for combining them. This argument is not persuasive. Sheran teaches urethane methacrylate oligomers (¶[0038]), methacrylate monomers including hydroxypropyl methacrylate, isobornyl (meth)acrylate, tetrahydrofurfuryl (meth)acrylate, trimethylolpropane tri(meth)acrylate, and triethylene glycol dimethacrylate (¶[0037]), and mixtures of monomers and oligomers within the same photopolymerizable nail composition. The remaining monomers (e.g., (meth)acryloylmorpholine, bis(2-(meth)acryloyloxyethyl) hydrogen phosphate) are conventional (meth)acrylate monomers that would be obvious alternatives for a skilled formulator seeking to adjust properties like adhesion, hydrophilicity, or hardness. The presently amended claim recites members selected from lists of known polymerizable acrylate and methacrylate materials conventionally employed in UV-curable nail systems. Selecting known members of known classes for their recognized curing, adhesion, viscosity, and film-forming functions would have constituted routine formulation choice absent evidence of unexpected results attributable to the specific claimed combinations. No comparative evidence has been provided demonstrating that the newly recited monomer/oligomer selections produce properties unexpectedly superior to Sheran’s disclosed systems.
The applicant contends that because Sheran describes polymerization initiator as optional, the presently claimed inclusion of component (C) is critical. This argument is not persuasive. The question is whether the combination would have been obvious, not whether it is necessary. Sheran repeatedly teaches photopolymerizable nail compositions containing photoinitiators, including claim 1(e), ¶[0041], and ¶[0211]-[0213]. Sheran expressly teaches photoinitiator levels up to about 10 wt%, and 0.5-5 wt% in preferred embodiments. That Sheran also discloses optional embodiments does not negate explicit disclosure of embodiments containing photoinitiator, wherein a reference is not limited to its broadest embodiment and expressly disclosed sub-embodiments remain prior art (see MPEP 2131). The applicant’s Comparative Example 6 merely confirms what Sheran already teaches that curing requires effective photoinitiator content. A skilled artisan seeking a UV-curable nail coating would include a photoinitiator as a matter of routine, as Sheran explicitly enables. The failure of a composition lacking initiator does not render the obvious combination non-obvious.
The reservation of rights/no disclaimer statements are noted, but does not affect the substantive patentability determinations. In addition, the applicant has not filed a certified copy of the Japanese priority application. The applicant is reminded of the requirement to file a certified copy of the Japanese priority application (JP2023-052706) under 37 CFR 1.55, or the priority claim will be considered waived. The examiner notes that the applicant’s own specification acknowledges the state of the art at ¶[0003]-[0012], describing artificial nail compositions containing polymerizable compounds, urethane polymer particles, and polymerization initiators. To the extent applicant argues that any limitation is missing from Sheran, the applicant’s own admitted prior art supplies that limitation, rendering the claimed composition a mere permutation of known components.
Conclusion
No claims are allowed.
The 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). The 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 nonprovisional extension fee (87 CFR 1.17(a)) 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 mailing date of this final action.
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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/RL Scotland/
Examiner, Art Unit 1615
/Jeffrey T. Palenik/Primary Examiner, Art Unit 1615
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