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 .
Claim Status
Claims 1-24 are pending.
Priority
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Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France (2308063) on 07/26/2024. It is noted, however, that applicant has not filed a certified copy of the foreign application as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/12/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 13 is objected to because of the following informalities: the term “tricyclodecanedimenahnol” appears to be a misspelling of ‘tricylcodecanedimethanol’. Appropriate correction is required.
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.
Claim(s) 1-6 and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kergosien et al. (US20160296455).
Regarding claim 1, Kergosien et al. disclose a cosmetic nail composition example containing (Examiner added highlighting):
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[0321]. As can be seen, there is a UV portion comprising a plurality of UV-curable materials in a total amount of at least 19% by weight of the composition including a difunctional acrylate oligomer (isophorone urethane dimethacrylate, PEG-400 urethane dimethacrylate, tetrahydrofurfuryl methacrylate, pyromellitic dimethacrylate), isophorone urethane dimethacrylate, photoinitiator and a plurality of solvents (isopropyl alcohol, ethyl acetate and butyl acetate). The presence of the UV curable materials and solvents inherently creates an ultraviolet gel portion.
Regarding claim 2, it appears from the example above that the difunctional acrylate oligomer comprises a urethane monomer and the plurality of UV-curable materials consists of the urethane monomer and polymerizable (meth)acrylates.
Regarding claims 3-4, Kergosien et al. disclose in the example above that the urethane monomer is a urethane acrylate monomer (10.5% isophorone urethane dimethacrylate, which is within the claimed range of 8-15%), and the polymerizable (meth)acrylate is 6% pyromellitic dimethacrylate, which is within the claimed range of 2-8%.
Regarding claims 5-6, Kergosien et al. disclose in the example above that the photoinitiator is 4% ethyl trimethylbenzoyl phenylphosphinate.
Regarding claims 9-11, Kergosien et al. disclose in the example above the addition of film forming nitrocellulose in the solvent isopropanol.
Regarding claims 12-14, Kergosien et al. disclose in the example above the addition of MMA/BMA copolymer, a film forming copolymer [0179-0182], which reads on an acrylates copolymer, as well as film forming nitrocellulose in addition to disclosing adding at least one film forming polymer (Claim 10) comprising at least one poly(meth)acrylate (Claim 11) and wherein the film-forming polymer comprises at least one polysaccharide or polysaccharide derivative selected from the group consisting of nitrocellulose, an ether of a polysaccharide and an ester of a polysaccharide (Claim 12) in a total content greater than or equal to 2% by weight (Claim 13).
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, 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 7-8 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kergosien et al. (US20160296455), as applied to claims 1-6 and 9-14 above.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103, the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103.
Applicant claims, for example:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic nail varnish research scientist working with UV polymerizable polymers (gel systems) and requires specialized knowledge of polymer chemistry, light curing technology, and product application. They understand UV-curable products transform from liquid monomers and oligomers into solid, cross-linked polymer networks through a photo-initiated chain reaction.1 Such an educated artisan will draw conventional ideas from nail gel technology including conventional energy curable resins, photoinitiators, solvents and application methods— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art
(MPEP 2141.01)
It is well settled that “a disclosure that anticipates under § 102 also renders the claim invalid under §103, for anticipation is the epitome of obviousness. See MPEP 1207.03(a)(II) states: “"lack of novelty is the epitome of obviousness." May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))”. Accordingly, the claims rejected under §102 above are also invalid under §103.
Regarding claims 23 and 24, Kergosien et al. teach application of a composition to a nail [0315] followed by application of UV radiation to crosslink the composition applied to the nail so as to form a film [0316], thus curing the composition by exposure to UV light, and future removal after a period of time [0319-0320]. See also claims 19-20 and [0282-0284].
Regarding claims 1 and 22, Kergosien et al. claim photo-crosslinkable cosmetic compositions (Claims 1-18) and provide a cosmetic nail composition example containing:
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[0321].
As can be seen, there is a UV portion comprising a plurality of UV-curable materials in a total amount of at least 19% by weight of the composition including a difunctional acrylate oligomer (isophorone urethane dimethacrylate, PEG-400 urethane dimethacrylate, tetrahydrofurfuryl methacrylate, pyromellitic dimethacrylate), isophorone urethane dimethacrylate, photoinitiator and a plurality of solvents (isopropyl alcohol, ethyl acetate and butyl acetate). The cosmetic nail composition is substantially free of all other materials.
Regarding claims 2 and 22, it appears from the example above that the difunctional acrylate oligomer comprises a urethane monomer and the plurality of UV-curable materials consists of the urethane monomer and polymerizable (meth)acrylates. Alternatively, claim 1 of Kergosien et al. suggests a polyurethane pol(alk)acrylate, which contains urethane monomer and photo-crosslinkable (alk)acrylates, which appears to meet the “consists” of limitation of claim 2.
Regarding claims 3-4 and 22, Kergosien et al. teach in the example above that the urethane monomer is a urethane acrylate monomer (10.5% isophorone urethane dimethacrylate, which is within the claimed range of 8-15%), and the polymerizable (meth)acrylate is 6% pyromellitic dimethacrylate, which is within the claimed range of 2-8%.
Regarding claims 5-6, 8 and 22, Kergosien et al. teach in the example above that the photoinitiator is 4% ethyl trimethylbenzoyl phenylphosphinate, which is within the range of 3-6%.
Regarding claims 9-11, Kergosien et al. teach in the example above the addition of film forming nitrocellulose in the solvent isopropanol.
Regarding claims 12-14, Kergosien et al. teach in the example above the addition of MMA/BMA copolymer, a film forming copolymer [0179-0182], which reads on an acrylates copolymer, as well as teaching adding at least one film forming polymer (Claim 10) comprising at least one poly(meth)acrylate (Claim 11) and wherein the film-forming polymer comprises at least one polysaccharide or polysaccharide derivative selected from the group consisting of nitrocellulose, an ether of a polysaccharide and an ester of a polysaccharide (Claim 12) in a total content greater than or equal to 2% by weight (Claim 13).
Regarding claims 16-17, Kergosien et al. teach adding epoxy resins including tosylamide resins [0193].
Regarding claim 18, Kergosien et al. teach in the example above that the acrylates film forming agent MMA/BMA is present in 6.33%, which is less than nitrocellulose 6.67% and tetrahydrofurfryl methacrylate co-film forming agent at 7%.
Regarding claims 19 and 22, Kergosien et al. teach in the example above the presence of a colorant.
Regarding claims 20-22, Kergosien et al. teach adding various components [0243] including a filler in an amount of from 0.01-50% by weight [0260], which overlaps the claimed range of no more than 5% by weight and no more than 2% by weight and no more than 1% by weight, and names fillers such as calcium carbonate, magnesium carbonate, magnesium hydrogen carbonate [0262], which Applicant also teaches are pH-adjusting agents (Specification [0101-0102]). Kergosien et al. also teach adding metal oxides such as titanium dioxide or inorganic/organic pigments [0256-0257], which can serve as UV-absorbers, which are present from 0.1-5% by weight [0249], which overlaps the claimed range of no more than 1% by weight. In the example above, a first UV-curable material isophorone urethane dimethacrylate is present at 10.5%, which is within 8-15% and a second UV-curable material tetrahydrofurfryl methacrylate is present at 7% (see the example above) which is within 2-8%.
Regarding claim 22, Kergosien et al. teach that the solvent can be present greater than or equal to 10% by weight, where greater than 10% by weight includes values such as 50, 60, 70% or more, and in particular ranging from 20-50% by weight [0064] and the photoinitiator can be present greater than or equal to 0.1% by weight [0239], thus overlapping the claimed range of from 2-8% by weight.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02) and Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
The difference between the instant application and Kergosien et al. is that Kergosien et al. do not expressly teach wherein the UV gel portion is present in a total amount of 19-50% by weight of the cosmetic nail composition or the arrangement of components in claim 22 in a single embodiment. However, Kergosien et al. teach that photocrosslinkable compounds a), b) and c) can be present from greater than or equal to 1% by weight, 10% by weight and 1% by weight, respectively (Claims 1, 5 and 9), and thus it is merely routine optimization to arrive at a cosmetic nail composition where the UV gel portion is present in a total amount of 19-50% by weight of the cosmetic nail composition with a reasonable expectation of success. Similarly, Kergosien et al. teach overlapping ranges for the first and second UV curable materials, photoinitiator, plurality of solvents, plurality of film formers, UV absorbing agent, pH adjusting agent, filler and colorant as discussed above. Consequently, the ordinary artisan would optimize the cosmetic nail composition of Kergosien et al. and arrive at the claimed composition with a reasonable expectation of success.
The difference between the instant application and Kergosien et al. is that Kergosien et al. do not expressly teach the claimed method with the composition claimed. However, as discussed above, Kergosien et al. teach the composition claimed as well as applying a composition to a nail, curing by exposure to UV light and after a period of time removing the composition. It is then obvious to apply the composition taught by Kergosien et al. that reads on the claimed subject matter, in the method of Kergosien et al. and produce the claimed method with a reasonable expectation of success.
Claims 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kergosien et al. (US20160296455), as applied to claims 1-14 and 22-25 above, in further view of Burgess et al. (US20130263875) and Xu et al. (US20170119645).
Applicant claims, for example:
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The reference of Kergosien et al. is discussed in detail above and that discussion is incorporated by reference.
Kergosien et al. do not expressly teach wherein the acrylate film forming agent includes acrylates copolymer, acrylates/isobornyl acrylate copolymer, and/or tricyclodecanedimenahnol diacrylate and wherein the one or more co-film forming agents includes adipic acid/neopentyl glycol/trimellitic anhydride copolymer and/or hydrogenated acetophenone/oxymethylene copolymer. However, Burgess et al. teach curable nail enhancement where: “The cured composition exhibits good durability and yet can be readily and cleanly removed when desired by soaking briefly in acetone” (Abstract; see also claims 1-33) and Burgess et al. teach that suitable curable resins such as stearyl(meth)acrylate, isobornyl(meth) acrylate and tricyclodecanedimethanol di(meth)acrylates [0044] are known to the artisan. Suitable co-film forming agents are known in the through the teachings of Xu et al. Xu et al. is also directed to nail compositions (Abstract; [0001]; claims 1, 2, 4, 9, 11-13) and teach: “Specific examples of suitable co-film forming agents include, but are not limited to phthalic anhydride/glycerin/glycidyl decanoate copolymer, adipic acid/neopentyl glycol/trimellitic anhydride copolymer, tosylamide/epoxyresin, butyl acetate (and) acrylates copolymer, and hydrogenated acetophenone/oxymethylene copolymer.” [0116]. Thus, it is merely selection of known conventional acrylate film forming and co-filming agents taught in the art for the same purpose. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, “Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious." In re Fout 675 F.2d 297, 301 (CCPA 1982). Accordingly, the ordinary artisan would have a reasonable expectation of success in selecting these conventional components for the nail composition.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
1 See for example Sree Roy The Science of Gels: How Gel Nail Products Work 2011 [online] retrieved on 5/8/26 from: https://www.nailsmag.com/387143/the-science-of-gels-how-gel-nail-products-work ; 6 pages.
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