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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 13 January 2026. Claims 1-22 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 April 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-12 and 17-22) in the reply filed on 03 March 2026 is acknowledged. Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The present invention relates to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Drawings
The drawings received on 16 April 2024 are acceptable.
Claim Objections
Claims 1, 4-6, 17 and 21 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, the Examiner suggests “… includes a curved surface such that the center of the nail sticker is upwardly curved.” for sentence structure clarity.
Regarding claim 4, it is suggested to include a colon “:” in the phrase “… of a temperature of 25 °C:” to separate the claim limitation clause from Equation 1.
Regarding claim 5, it is suggested to include a colon “:” and insert words in the phrase “… atmosphere of a temperature of -10°C:” to separate the claim limitation clause from Equation 1 and to be consistent with claims 3 and 4 and 20.
Regarding claim 6, it is suggested to include a colon “:” and insert words in the phrase “… atmosphere of a temperature of 40°C:” to separate the claim limitation clause from Equation 1 and to be consistent with claims 3 and 4 and 20.
Regarding claim 17, the Examiner suggests “… includes a curved surface such that the center of the sticker is upwardly curved…” for sentence structure clarity.
Regarding claim 21, the last word of the claim is misspelled and should be “silicone.”
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.
Claims 3-6, 9-11, 19, and 20 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 3, the reference to “the atmosphere” lacks sufficient antecedent basis as no such atmosphere is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…in an [[the]] atmosphere…”. See MPEP § 2173.05(e).
Regarding claim 4, the reference in lines 1-2 to “when the nail sticker is disposed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…disposed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 5, the reference in lines 1-2 to “when the nail sticker is disposed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…disposed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 5, the reference to “the atmosphere” lacks sufficient antecedent basis as no such atmosphere is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…in an [[the]] atmosphere…”. See MPEP § 2173.05(e).
Regarding claim 6, the reference in lines 1-2 to “when the nail sticker is disposed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…disposed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 6, the reference to “the atmosphere” lacks sufficient antecedent basis as no such atmosphere is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…in an [[the]] atmosphere…”. See MPEP § 2173.05(e).
Regarding claim 9, the reference to “the adhesive layer” lacks sufficient antecedent basis as no such atmosphere is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to claim 8 which provides proper antecedent basis for this term.
Regarding claim 9, the phrase “located below the nail sticker to configure at least a part of the lower surface of the nail sticker” is unclear. It is not clear what the adhesive layer configures the nail sticker to do. The Examiner has considered the context of the claim with the specification and it appears that applicant intends for the adhesive layer to be disposed on at least a part of the lower surface of the nail sticker. The Examiner suggests reciting: “…wherein the adhesive layer is located on ”
Regarding claim 10, the reference in line 2 to “is placed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…placed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Claim 10 contains the trademark/trade names PUSH GAGE and IMADA Inc. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name, particularly since the composition of the goods or products may change over time. Further, the proprietary nature of trademarks utilized in a patent application should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks, wherein it is noted that the use of trademarks in a claim might adversely affect their validity as trademarks.
Regarding claim 11, the reference in lines 1-2 to “is placed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…placed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 19, the reference in line 2 to “the nail sticker is disposed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 17, upon which this claim depends. The Examiner suggests referring to “…disposed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 20, the reference in line 2 to “the nail sticker is disposed on the flat floor” lacks sufficient antecedent basis as no such flat floor is referred to in claim 17, upon which this claim depends. The Examiner suggests referring to “…disposed on a [[the]] flat floor…”. See MPEP § 2173.05(e).
Regarding claim 20, the reference to “the atmosphere” lacks sufficient antecedent basis as no such atmosphere is referred to in claim 1, upon which this claim depends. The Examiner suggests referring to “…in an [[the]] atmosphere…”. See MPEP § 2173.05(e).
Claim Rejections - 35 USC § 102
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, 2, 7-9, 11, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 10-2184087 B1. A machine translation of KR ‘087 was relied upon for analysis.
Regarding claim 1, KR ‘087 describes a gel nail sticker for attachment to a user’s nails, see paragraph [0001] of the translation. The nail sticker is formed with heat to a predetermined curvature as described at paragraph [0078] and shown in FIG. 3 (reproduced below) which is a shape more similar to a user’s nails and thus improves adhesion and retention. The curve is upward as shown in FIG. 3. The nail sticker may then be applied to a user and cured with UV irradiation, see paragraphs [0017] and [0020-0021].
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Regarding claim 2: as seen in FIG. 3, the center of the nail sticker is spaced apart from the floor.
Regarding claim 7, KR ‘087 teaches that the nail includes various coating layers including a semi-cured resin layer 140 which is curable by UV, see paragraphs [0011] and [0017].
Regarding claim 8, the nail sticker includes a base film 100 which includes adhesive layer 110, see paragraph [0011].
Regarding claim 9, the adhesive layer 110 is located on the bottom surface of the nail sticker as shown in FIG. 3. See description at paragraph [0017].
Regarding claim 11, as shown in FIG. 3, the bottommost part of the nail sticker is the edge portions of the bottom layer 110. Such is the portion that would contact a flat floor.
Regarding claim 17, FIG. 4 of KR ‘087 depicts a release film support sheet 400 comprising a plurality of the nail stickers, see description at paragraphs [0062] and [0076-0078]. The nail stickers are each upwardly curved as shown in FIG. 3. Each nail sticker may then be applied to a user and cured with UV irradiation, see paragraphs [0017] and [0020-0021].
Regarding claim 19: as seen in FIG. 3, the center of the nail sticker is spaced apart from the floor when removed from the support sheet 400.
Claims 1, 2, 7-9, 11, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lotti (U.S. Pub. 2022/0133013).
Regarding claim 1, Lotti describes light-curable artificial nails having a curved surface prior to being cured, see FIG. 1B reproduced below and description at p. 5, [0081]. The artificial nails have a lower adhesive layer 118 which reads on being a nail sticker as claimed. The artificial nails are curable by UV light, see p. 11, [0135].
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Regarding claim 2, Lotti shows that the light-curable artificial nails are curved upward and thus the center of the nail is spaced apart from a floor as claimed. See FIGS. 1B (reproduced above) and 1D (reproduced below).
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Regarding claim 7, The artificial nails are curable by UV light, see p. 6, [0069] and p. 11, [0135].
Regarding claim 8, the artificial nails include a base layer (strengthening layer 120 in FIG. 1D) and adhesive layer 118B shown in FIG. 1D. See description at p. 6, [0093-0094].
Regarding claim 9, the adhesive layer is formed on at least a portion of the lower surface of the artificial nail as shown in FIG. 1B and FIG. 1D and described at p. 6, [0094].
Regarding claim 11, as the curable artificial nails are curved upward as shown in FIGS. 1B and 1D, the bottommost part of the nail sticker is the edge portions of the bottom layer 118B. Such is the portion that would contact a flat floor.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lotti (U.S. Pub. 2022/0133013).
Regarding claims 3-6, Lotti describes light-curable artificial nails having a curved surface prior to being cured, see FIG. 1B reproduced below and description at p. 5, [0081]. The artificial nails have a lower adhesive layer 118 which reads on being a nail sticker as claimed. The artificial nails are curable by UV light, see p. 11, [0135]. The nails include a strengthening layer 120 which provides strength and structure to the light-curable artificial nail, see p. 4, [0073].
While Lotti does not specify the strain rate as measured by the width of the nail sticker immediately after being placed on a flat floor and the width again measured after 1 hour at various temperatures as claimed, Lotti does teach that a strengthening layer is present, and also specifies the modulus of elasticity of the semi-cured light curable composition used for the artificial nail to be up to about 2.50 GPa, and also specifies the Rockwell hardness to be in the range of 1 to 110 g/cm3, see p. 2, [0039]. While this does not directly teach the strain rate as claimed, it is clear that the materials of the artificial nail provide for structural integrity and thus the Examiner has reason to believe that the artificial nail is self-supporting with minimal change in width after 1 hour at various temperature conditions.
The Examiner notes that the courts have held that where 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. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘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 Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses an artificial nail meeting the structural requirements of claim 1 and also having a measured modulus of elasticity and Rockwell hardness which are properties referring to the strength of the artificial nail layers. Therefore, one of ordinary skill in the art would expect the same or similar strain rate properties to arise. Since the prior art discloses the artificial nail of claim 1, the Examiner believes the claimed properties are either anticipated or highly obvious.
Regarding claim 10, as Lotti teaches the artificial nail of claim 1 as described above, it is expected that the nail also exhibits the claimed property when a 10N force is applied.
The Examiner notes that the courts have held that where 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. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘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 Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses an artificial nail meeting the structural requirements of claim 1 and also having a measured modulus of elasticity and Rockwell hardness which are properties referring to the strength of the artificial nail layers. Therefore, one of ordinary skill in the art would expect the same or similar strain rate properties to arise. Since the prior art discloses the artificial nail of claim 1, the Examiner believes the claimed properties are either anticipated or highly obvious.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lotti (U.S. Pub. 2022/0133013) in view of JP 2022-021394 A. A machine translation of JP ‘394 was relied upon for analysis.
Regarding claim 12, Lotti is relied upon as described above to describe the artificial nail of claim 1. Lotti teaches that cellulose esters may be used in the artificial nail, see p. 9, paragraph [0126]. However, Lotti does not specify a soft layer formed of cellulose acetate butyrate or cellulose acetate propionate as claimed.
JP ‘394 also describes photocurable gel nail components. Ultraviolet light is used to cure the coating layer resin. See paragraph [0068]. The preferable resin of the nails is cellulose acetate butyrate or cellulose acetate propionate resin, see paragraph [0015]. These cellulose acetates are preferred as they are compatible with a urethane acrylate resin over a wide range and are easier to maintain adhesion to natural nail substrates as well as having resistance to yellowing and water damage, see paragraph [0040].
Lotti and JP ‘394 are analogous as they each disclose UV-curable artificial nail materials formed of cellulose esters. Thus they are similar in structure and function and are both suitable for use as artificial nail components.
Claims 17-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lotti (U.S. Pub. 2022/0133013) as applied above, and further in view of GB 2,582,667 A.
Regarding claim 17, Lotti describes light-curable artificial nails having a curved surface prior to being cured, see FIG. 1B reproduced below and description at p. 5, [0081]. The artificial nails have a lower adhesive layer 118 which reads on being a nail sticker as claimed. The artificial nails are curable by UV light, see p. 11, [0135].
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Lotti does not disclose that the nail stickers are present as a nail sticker set including a support structure and support unit having an upwardly curved surface that contacts the nail sticker as claimed.
GB ‘667 describes an artificial nail assembly kit with a plurality of artificial nails including a cover that substantially rigid and dimensionally stable, see FIG 8 and p. 2, lines 15-26 and p. 7, lines 12-14 and p. 8, lines 9-11. The cover includes an adhesive engaging portion which has a 3-dimensional shape that generally corresponds to the contour of the bottom surface of the artificial nail, see p. 3, lines 12-21. See also FIG. 6 showing such a contoured cover engaging with an artificial nail.
Lotti and GB ‘667 are analogous because they each disclose artificial nails, and the references are suitable for the mutual purpose of presenting ready-to-use artificial nails for a user to apply. The references are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the artificial nails of Lotti with a support cover structure as described in GB ‘667 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to use a support cover as in GB ’667 as this ensures that the adhesive is substantially distributed and maintained within an intended region of the artificial nail (see p. 3, lines 29-33).
Regarding claim 18, GB ‘667 teaches that the adhesive engaging portion of the support cover may exactly match the contour of the bottom surface of the artificial nail, thus providing maximum contact. See p. 3, lines 16-21.
Regarding claim 19, Lotti shows that the light-curable artificial nails are curved upward and thus the center of the nail is spaced apart from a floor as claimed. See FIGS. 1B and 1D (reproduced above). Thus the nail is expected to have such a structure when removed from the support of GB ‘667 and placed on a floor as claimed.
Regarding claims 20, Lotti describes light-curable artificial nails having a curved surface prior to being cured, see FIG. 1B reproduced below and description at p. 5, [0081]. The artificial nails have a lower adhesive layer 118 which reads on being a nail sticker as claimed. The artificial nails are curable by UV light, see p. 11, [0135]. The nails include a strengthening layer 120 which provides strength and structure to the light-curable artificial nail, see p. 4, [0073].
While Lotti does not specify the strain rate as measured by the width of the nail sticker immediately after being placed on a flat floor and the width again measured after 1 hour at various temperatures as claimed, Lotti does teach that a strengthening layer is present, and also specifies the modulus of elasticity of the semi-cured light curable composition used for the artificial nail to be up to about 2.50 GPa, and also specifies the Rockwell hardness to be in the range of 1 to 110 g/cm3, see p. 2, [0039]. While this does not directly teach the strain rate as claimed, it is clear that the materials of the artificial nail provide for structural integrity and thus the Examiner has reason to believe that the artificial nail is self-supporting with minimal change in width after 1 hour at various temperature conditions.
The Examiner notes that the courts have held that where 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. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘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 Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses an artificial nail meeting the structural requirements of claim 1 and also having a measured modulus of elasticity and Rockwell hardness which are properties referring to the strength of the artificial nail layers. Therefore, one of ordinary skill in the art would expect the same or similar strain rate properties to arise. Since the prior art discloses the artificial nail of claim 1, the Examiner believes the claimed properties are either anticipated or highly obvious.
Regarding claim 22, GB ‘667 teaches that the structure includes a plurality of artificial nails and a plurality of support covers, see p. 7, lines 12-14 and p. 8, lines 9-11.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lotti (U.S. Pub. 2022/0133013) as applied above, and further in view of GB 2,582,667 A and Kim (U.S. Pub. 2015/0050492).
Regarding claim 21, Lotti and GB ‘667 are relied upon as described above in regards to claim 17. GB ’67 teaches that a release agent is provided between the adhesive surface of the artificial nail and the adhesive engaging portion of the support cover, see claim 15. However, GB ‘667 does not specify the chemical component of the release agent.
Kim describes a nail sticker having a first release layer, adhesive layer, intermediate layer, print layer, and second release layer in order, see p. 2, [0039]. The release layers are removed before applying the nail sticker to a user, see p. 2, [0040]. The adhesive portion of the nail sticker is in contact with the first release layer which prevents the adhesive component from being fixed, see p. 2, [0040]. The material of the first and second release layer may be polyethylene or polypropylene, see p. 2, [0041]. The nail sticker may include a UV-curing paint, see p. 4, [0078].
Lotti, GB ‘667, and Kim are analogous as they each disclose nail stickers with UV curable resins suitable to be applied to user’s nails. Thus they are similar in structure and function.
It would have been obvious to have used polyethylene or polypropylene release materials as taught in Kim as the release layer of the cover structure of GB ‘667 to arrive at the claimed invention, as these materials are suitable for protecting the nail adhesive from being fixed prematurely. See Kim at p. 2, [0040-0041].
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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