DETAILED ACTION
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 .
Status of the claims
Claims 1, 5-14, 17-24 are pending. Claims 8-14 and 17 have been withdrawn. Claim 2 has been cancelled.
Claims 1, 5-7, and 18-24 are currently under examination.
Withdrawn Rejections
Applicants arguments filed 08/31/2026 with respect to the rejections of claims under 35 USC 103 obviousness have been fully considered and are persuasive. Therefore, the rejections made over Petereit et al. in view of Porter et al., further in view of Shimizu et al. have been withdrawn. However, upon further consideration a new grounds of rejections are made which have been applied as set forth below.
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 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, 5, 7, 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Socci et al. (US6565835B1, Published 05/20/2003) in view of Ikeda et al. (US4222908A, Published 09/16/1980) as evidenced by Eckart (METALURE L-55350, Published 09/14/2024), as evidenced by Bornshlegl et al. (RU2536665C2, Published 12/27/2014), as evidenced by MatWeb (Eckart METALURE L-55350 Pigment Dispersion, 2026), as evidenced by Kichisaki et al. (JP2013241528A, Published 12/05/2013).
Applicant’s invention
The applicant’s claims are drawn to a pigment suspension comprising: at least one aluminum pigment comprising a substrate plate; and at least one first polyethylene glycol having an average molecular weight 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight from 1000 g/mol to 35,000 g/mol, wherein a weight ratio of the at least one first polyethylene glycol to the at least one second polyethylene glycol is from 15:1 to 1:1.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Socci teaches nail enamel compositions of the present invention for coating natural or synthetic human nails broadly include the ingredients of one or more film forming components, one or more solvents and aluminum particles in the form of platelets (i.e., substrate plate) (abstract). Socci also teaches the nail enamel composition includes aluminum particles in the nature of platelets which, in accordance with one example, are sold under the mark Metalure® (column 2, first paragraph), wherein the preferred dispersion or suspension of aluminum platelets are those dispersed in ethyl acetate, Metalure® Product No. L-55350 (i.e., pigment suspension)(column 2, second paragraph). Socci further teaches in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets.
Regarding claim 5, Socci teaches in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets. As evidenced by Eckart, Metalure L-55350 is a vacuum Metalized pigment. Although Socci does not explicitly teach wherein the at least one aluminum pigment comprises a vacuum metalized pigment, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Regarding claim 7, Socci teaches in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets. As evidenced by Bornshlegl, In another embodiment, the piezochromic liquid crystal material can be crushed or crushed to form lamellar pigments after formation or crosslinking of the elastomer, respectively. Corresponding technology is known for manufacturing processes of Metalure pigments (Eckart) (Page 4, paragraph 6). Although Socci does not explicitly teach wherein the substrate plate comprises a lamellar substrate plate, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Regarding claims 18 and 24, Socci teaches in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets. As evidenced by MatWeb, Metalure L-55350 has an average particle size of 11-12µm (i.e., average diameter) (Physical Properties section). Although Socci does not explicitly teach wherein the substrate plate has an average diameter of from 2µm to 200µm, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Regarding claim 19, Socci teaches, in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets. As evidenced by Kichisaki, Metalure L-55350 has an thickness of 35-40 nm (Note 2 section). Although Socci does not explicitly teach wherein the substrate plate has an average thickness of at most 150nm, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Regarding claim 20, Socci teaches in example 1 Metalure L 55350 as the nail enamel composition which incorporates aluminum platelets. As evidenced by MatWeb, Metalure L-55350 has an average particle size of 11-12µm (i.e., average diameter) (Physical Properties section). As evidenced by Kichisaki, Metalure L-55350 has an thickness of 35-40 nm (Note 2 section). Therefore, the ratio range of the average diameter to the average thickness is 11/0.040= 275 to 12/0.035=342. Although Socci does not explicitly teach wherein a ratio of the average diameter to the average thickness is at least 80, such property must necessarily be present. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. See In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. In re Best, Bolton, and Shaw, 195 USPQ 430, 433 (CCPA 1977) citing In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Socci does not teach wherein the at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol (instant claim 1); and wherein a weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol is from 15:1 to 1:1 (instant claim 1). Socci also does not teach wherein the average molecular weight of the first polyethylene glycol is about 400g/mol (instant 21); wherein the average molecular weight of the second polyethylene glycol is about 6,000g/mol (instant claim 22); and wherein the weight ratio of the first polyethylene glycol to the second polyethylene glycol is about 8:1. However these deficiencies are cured by Ikeda et al.
In the analogous art of nail enamel, Ikeda teaches according to the present invention, since non-volatile substances having a high boiling point are used as substances which are capable of swelling the organically modified montmorillonite clay, the afore-mentioned problems are completely solved. Examples of such substances are: for example, polyethylene glycol, preferably, having a weight-average molecular weight of about 200 through about 4000 (column 3, paragraphs 3-4). Ikeda also teaches the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below (column 4, paragraph 4).
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Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol in Socci’s nail enamel compositions comprising Metalure (i.e., aluminum pigment). Socci teaches nail enamel compositions of the present invention for coating natural or synthetic human nails broadly include the ingredients of one or more film forming components, one or more solvents and aluminum particles in the form of platelets (i.e., substrate plate) (abstract). The artisan of ordinary skill would have been motivated to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol because Ikeda teaches that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). Therefore, the hardness of the coating for the nail enamel can be optimized by having more than one polyethylene glycol and adjusting the molecular weights of the polyethylene glycols. The skilled artisan would have had a reasonable expectation of success because Socci teaches the nail enamel compositions according to the present invention may include at least one plasticizer to soften and plasticize particularly the film forming compounds and Ikeda teaches the use of polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4) as a plasticizer for the hardness of the coating for an nail enamel.
With regards to claims 1 and 8, the limitation wherein the weight ratios of the at least one first polyethylene glycol to the at least one second polyethene glycol being from 15:1 to 1:1 and about 8:1, it would have been obvious to optimize the weight ratio of the first and second polyethylene glycol. One would have understood in view of Ikeda that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). It would have been obvious to optimize the weight ratios of the first and second polyethylene glycol because Ikeda teaches that the hardness of the coating for the nail enamel can be optimized by having more than one polyethylene glycol and adjusting the molecular weights of the polyethylene glycols. Therefore, one of ordinary skill in the art can use the teachings of Ikeda as a starting point using routine experimentation for the desired results of. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
With regards to claim 22, the limitation wherein the average molecular weight of the second polyethylene glycol is about 6,000 g/mol, it would have been obvious to optimize the molecular weight of the second polyethylene glycol to about 6,000 g/mol. One would have understood in view of Ikeda that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). Ikeda further teaches that the higher the molecular weight of the polyethylene glycol is, there is a decrease in the hardness of the coating. Therefore, it would have been obvious to optimize the molecular weight of the second polyethylene glycol to about 6,000 g/mol because Ikeda teaches that the hardness of the coating for the nail enamel can be optimized by adjusting the molecular weights of the polyethylene glycols. Therefore, one of ordinary skill in the art can use the teachings of Ikeda as a starting point using routine experimentation for the desired results of the hardness of the coating. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Claims 1, 5-7, 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Lechner et al. (WO2020187728A1, Published 05/20/2003) in view of Ikeda et al. (US4222908A, Published 09/16/1980).
Applicant’s invention
The applicant’s claims are drawn to a pigment suspension comprising: at least one aluminum pigment comprising a substrate plate; and at least one first polyethylene glycol having an average molecular weight 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight from 1000 g/mol to 35,000 g/mol, wherein a weight ratio of the at least one first polyethylene glycol to the at least one second polyethylene glycol is from 15:1 to 1:1.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 1, Lechner teaches a method for dyeing keratinous material, comprising the following steps: - applying an agent (a) to the keratinous material, said agent (a) containing: (a1) at least one organic silicon compound from the group comprising silanes, said compound having one, two or three silicon atoms; and (a2) at least one first chromophoric compound comprising at least one pigment based on a lenticular substrate plate (abstract). Lechner also teaches substrate platelets made of aluminum are very particularly preferred (page 18, paragraph 3).
Regarding claims 5-7, Lechner teaches substrate platelets can be used, for example, lenticular and lenticular metal platelets or so-called vacuum metallized pigments (VMP) (page 41, paragraph 3).
Regarding claims 18 and 24, Lechner teaches the substrate platelets have a mean largest diameter of about 2 to 200 μm (page 17, paragraph 7).
Regarding claim 19, Lechner teaches The substrate platelets have an average thickness of at most 50 nm (page 17, paragraph 3).
Regarding claim 20, Lechner teaches in a preferred embodiment, the aspect ratio, expressed by the ratio of the mean size to the average thickness, is at least 80 (page 17, paragraph 8).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Lechner does not teach wherein the at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol (instant claim 1); and wherein a weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol is from 15:1 to 1:1 (instant claim 1). Lechner also does not teach wherein the average molecular weight of the first polyethylene glycol is about 400g/mol (instant 21); wherein the average molecular weight of the second polyethylene glycol is about 6,000g/mol (instant claim 22); and wherein the weight ratio of the first polyethylene glycol to the second polyethylene glycol is about 8:1. However these deficiencies are cured by Ikeda et al.
In the analogous art of nail enamel, Ikeda teaches according to the present invention, since non-volatile substances having a high boiling point are used as substances which are capable of swelling the organically modified montmorillonite clay, the afore-mentioned problems are completely solved. Examples of such substances are: for example, polyethylene glycol, preferably, having a weight-average molecular weight of about 200 through about 4000 (column 3, paragraphs 3-4). Ikeda also teaches the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below (column 4, paragraph 4).
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Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol in Lechner’s method for dyeing keratinous material. Lechner teaches method for dyeing keratinous material wherein Keratinic material is understood to mean hair, skin, and nails (such as fingernails and / or toenails, for example). The artisan of ordinary skill would have been motivated to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol because Ikeda teaches that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). Therefore, the hardness of the coating for the nail can be optimized by having more than one polyethylene glycol and adjusting the molecular weights of the polyethylene glycols. The skilled artisan would have had a reasonable expectation of success because Lechner teaches method for dyeing keratinous material wherein Keratinic material is understood to mean hair, skin, and nails (such as fingernails and / or toenails, for example) and Ikeda teaches the use of polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4) as a plasticizer for the hardness of the coating for an nail enamel.
With regards to claims 1 and 8, the limitation wherein the weight ratios of the at least one first polyethylene glycol to the at least one second polyethene glycol being from 15:1 to 1:1 and about 8:1, it would have been obvious to optimize the weight ratio of the first and second polyethylene glycol. One would have understood in view of Ikeda that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). It would have been obvious to optimize the weight ratios of the first and second polyethylene glycol because Ikeda teaches that the hardness of the coating for the nail enamel can be optimized by having more than one polyethylene glycol and adjusting the molecular weights of the polyethylene glycols. Therefore, one of ordinary skill in the art can use the teachings of Ikeda as a starting point using routine experimentation for the desired results of. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
With regards to claim 22, the limitation wherein the average molecular weight of the second polyethylene glycol is about 6,000 g/mol, it would have been obvious to optimize the molecular weight of the second polyethylene glycol to about 6,000 g/mol. One would have understood in view of Ikeda that the swelling force and the plasticizing force of typical compounds which can swell the organically modified montmorillonite clay and also can plasticize nitrocellulose are shown in Table 3 below such as polyethylene glycol having a weight-average molecular weight of about 200 through about 4000 (column 4, paragraph 4). Ikeda further teaches that the higher the molecular weight of the polyethylene glycol is, there is a decrease in the hardness of the coating. Therefore, it would have been obvious to optimize the molecular weight of the second polyethylene glycol to about 6,000 g/mol because Ikeda teaches that the hardness of the coating for the nail enamel can be optimized by adjusting the molecular weights of the polyethylene glycols. Therefore, one of ordinary skill in the art can use the teachings of Ikeda as a starting point using routine experimentation for the desired results of the hardness of the coating. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Conclusion
No claims are allowed.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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