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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/15/2025 is acknowledged. However, upon further consideration the restriction is WITHDRAWN as the claims are linked by a common technical feature and there is no burden to search the various inventions and species.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
It is also noted that the information disclosure statement (IDS) submitted on 04/16/2024 incorrectly recites document number of cited documents 3 and 5. Citation 3 is to the application number instead of the publication number and citation 5 is to the A publication while the B publication was provided.
Drawings
Figures 1-3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because
reference character “A2” has been used to designate both a point where the nail sticker has a maximum thickness (measured before pressure is applied) and a maximum thickness of a soft layer (measured after pressure is applied)
reference characters "A2" and "B1" have both been used to designate a point where the nail sticker has a maximum thickness (measured before pressure is applied).
reference characters “F”, "F1", and "F2" have all been used to designate the flat floor.
reference characters "100b" and "Q" have both been used to designate an area that pressure is applied.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
"T" a predetermined thickness for the substrate.
"H" a vertical direction of the substrate.
"F" described as a flat floor (previously defined as both F1 and F2 see paragraph below).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
“each people” should be “every person” on page 1 paragraph “4”.
“…radius) so that there is a problem in that it is difficult…” should be just “…radius), making it difficult…” on page 1 paragraph “4”.
".
a "nail sticker has the maximum thickness" is repeated on page 22 paragraph "3" where one is supposed to be "soft layer has the maximum thickness".
"applies the pressure" is repeated at the bottom of page 4, paragraph "6"..
Appropriate correction is required.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: On page 4, paragraph "1" there is a long run-on sentence the size of a paragraph is unclear and not concise, pages 17, 18, 26, 28, 29, and 31 which have large repeated sections making it further not concise. Additional examples are listed above.
Claim Objections
Claim 4 objected to because of the following informalities: "a" should be "an" since it is next to "ultraviolet" that begins with a vowel. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 recites the limitation "the ultraviolet ray" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the atmosphere" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the atmosphere" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the substrate" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention, so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1 and 3 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 12 of copending Application No. 18/701,671 (Published as Um et al (US-20250241424-A1)). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Regarding claim 1, application 18/701,671 teaches a curable nail sticker (see e.g. nail sticker curable by ultraviolet ray in claim 1 and a nail sticker in claim 12), comprising: a soft layer (see e.g. soft layer claim 12), wherein the soft layer includes a resin for the soft layer (see e.g. soft layer includes a resin for the soft layer in claim 12), and the resin for the soft layer includes at least one of cellulose acetate butyrate and cellulose acetate propionate (see e.g. resin for the soft layer includes at least one of cellulose acetate butyrate and cellulose acetate propionate in claim 12).
Regarding claim 3, application 18/701,671 teaches that the soft layer is cured by irradiating ultraviolet ray (see e.g. nail sticker curable by ultraviolet ray in claim 1)
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oshima (JP-2022021394-A).
Regarding claim 1, Oshima teaches a curable nail sticker (see e.g. photocurable gel nail composition where cured film has a multilayer structure in paragraph 44), comprising: a soft layer (see e.g. an intermediate layer “16” that has a varying amount of cellulose resin in paragraph 44), wherein the soft layer includes a resin for the soft layer (see e.g. cellulose resin in paragraph 44), and the resin for the soft layer includes at least one of cellulose acetate butyrate and cellulose acetate propionate (see e.g. preferable that cellulose resin is a cellulose acetate butyrate resin or cellulose acetate propionate resin in paragraphs 15 and 40-41).
Regarding claim 3, Oshima teaches that the soft layer is cured by irradiating ultraviolet ray (see e.g. where the urethane acrylate resin and cellulose based resin have excellent curing properties in paragraph 83 and ultraviolet light is irradiated to cure intermediate layer “16” in paragraph 69).
Regarding claim 4, Oshima teaches that the soft layer further includes a ultraviolet curing material for the soft layer (see e.g. urethane acrylate resins or polyester-backed urethane acrylate resins, polycarbonate-backed urethane acrylate resins or any combination in paragraph 29).
Regarding claim 5, Oshima teaches the ultraviolet curing material for the soft layer is included in the soft layer in an amount of 10 wt% to 90 wt% (see e.g. urethane acrylate resin is ranged from 20-60% by weight relative to total weight in paragraph 31 and Table 1, Table 2, and calculated weight percents in Table 3.
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481
1012
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Table 1: Translated and Labeled Oshima (JP-2022021394-A) Published 2022
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351
772
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Table 2: Translated Oshima (JP-2022021394-A) Published 2022
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204
518
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Table 3: Calculated values from Table 2 Examples 6 and 7 from Table 1
Regarding claim 6, Oshima teaches a base layer (see e.g. base layer “12” that has better adhesion and can either be clear or have a coloring agent added in paragraph 69), wherein the soft layer is disposed on the base layer (see e.g. Figure 2d shows that the intermediate layer “16” is on top the base layer “12” and their order is established in paragraphs 68-69).
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362
526
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Figure 2d: Labeled Oshima (JP-2022021394-A) Published 2022
Regarding claim 7, Oshima teaches a coating layer (see e.g. protective layer “13” in paragraph 69), wherein the coating layer is disposed on the soft layer (see e.g. Figure 2d shows the protective layer “18” is on top of the intermediate layer “16” and describes it in paragraphs 68-69).
Regarding claim 8, Oshima teaches that the coating layer includes an ultraviolet curing material for the coating layer and a resin for the coating layer (see e.g. the protective layer “18” has a varied blend of cellulose resin and urethane acrylate resin that may differ from the intermediate layer “16” to have different properties such as smoothness in paragraph 44).
Regarding claim 9, Oshima teaches that the nail sticker is cured when the ultraviolet ray is irradiated (see e.g. Figure 2d where ultraviolet rays irradiate the layers and in paragraph 69).
Claims 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (KR-102184087-B1).
Regarding claim 10, Lee et al teaches a curable nail sticker, comprising: a soft layer (see e.g. base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” in Figure 2 and paragraph 28), wherein a maximum thickness of the soft layer is increased when a pressure is applied to a part of an upper surface of the nail sticker after attaching the nail sticker on a flat floor (see e.g. semi-cured resin layer “140” has dual curing resin allowing for softness in gel nail sticker, allowing customization across nails or toenails, being made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing in paragraphs 32-33 and 35-38, the base gel layer “120” is a flexible transparent film in paragraph 45, and the fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength in paragraphs 47-51).
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476
743
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Figure 2: Labeled Lee et al (KR-102184087-B1) Published 2020
Regarding claim 11 The nail sticker according to claim 10, wherein a thickness increase rate of the soft layer according to Equation 1 is 2% or higher.
[Equation 1]
Thickness increase rate of soft layer = [(A2-Ai)/A1]x 100
A1 is a maximum thickness of the soft layer measured when the pressure is not applied to the nail sticker attached to the floor and A2 is a maximum thickness of the soft layer measured after applying the pressure for 3 seconds, removing the pressure, then leaving the nail sticker for 30 minutes in the atmosphere of a temperature of 36°C, and as the pressure, a force of 38.5 N is downwardly applied to an area with a size corresponding to 40% to 80% of the entire size of the upper surface of the nail sticker in the atmosphere of a temperature of 36°C.
Lee et al teaches the claimed invention above but fails to teach the thickness increase, the equation, or the conditions used of the soft layer. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
Regarding claim 12, Lee et al teaches a curable nail sticker (see e.g. photocurable gel nail sticker in paragraph 10), comprising: a soft layer (see e.g. base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” in Figure 2 and paragraph 28), wherein a maximum thickness of the nail sticker is increased when a pressure is applied to a part of an upper surface of the nail sticker after attaching the nail sticker on a flat floor (see e.g. semi-cured resin layer “140” has dual curing resin allowing for softness in gel nail sticker, allowing customization across nails or toenails, being made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing in paragraphs 32-33 and 35-38, the base gel layer “120” is a flexible transparent film in paragraph 45, and the fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength in paragraphs 47-51, where base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” are all a part of the base film in between the protective film “300” and adhesive layer “110”/release film “400” in paragraphs 43, 47, and Figure 2).
Regarding claim 13, The nail sticker according to claim 12, wherein a thickness increase rate of the nail sticker according to Equation 2 is 2% or higher
[Equation 2]
Thickness increase rate of nail sticker = [(B2-B1)/B1]x 100
B1 is a maximum thickness of the nail sticker measured when the pressure is not applied to the nail sticker attached to the floor and B2 is a maximum thickness of the nail sticker measured after applying the pressure for 3 seconds, removing the pressure, then leaving the nail sticker for 30 minutes in the atmosphere of a temperature of 36°C, and as the pressure, a force of 38.5 N is downwardly applied to an area with a size corresponding to 40% to 80% of the entire size of the upper surface of the nail sticker in the atmosphere of a temperature of 36°C.
Lee et al teaches the claimed invention above but fails to teach the overall thickness increase, the equation, or the conditions used. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51). When the soft layer increases in thickness it follows that the overall nail sticker would too.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
Regarding claim 14, A curable nail sticker, comprising: a soft layer, wherein a rectangular parallelepiped substrate with a thickness of 0.7 mm disposed on a flat floor is prepared and the nail sticker is attached on an upper surface such that an area having a length corresponding to 70% the entire length of the nail sticker is in contact with the flat upper surface of the substrate, when measuring after a force of 38.5 N is applied to at least a part of the upper surface of the nail sticker which overlaps the substrate in a vertical direction toward a floor, the force is removed and then the nail sticker is left for 30 minutes at 36°C, a shortest distance between an area where a part of the nail sticker which does not overlap the substrate in the vertical direction and protrudes out of the substrate is in contact with the floor and the substrate is 1.5 mm or less, and the force is applied to an area corresponding to 40% to 80% the entire area of the upper surface of the nail sticker.
Lee et al teaches the claimed invention above but fails to teach the overall thickness increase, the equation, or the conditions used. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51). When the soft layer increases in thickness it follows that the overall nail sticker would too.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (KR-102184087-B1) in view of Oshima et al (JP-2022021394-A) as evidenced by Hayashi et al (JP-2003306577-A).
Regarding claim 1, Lee et al teaches a curable nail sticker (see e.g. dual photocurable gel nail sticker in paragraph 10), comprising: a soft layer (see e.g. a base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” but best depicted as the semi-cured resin layer “140” in Figure 2 and paragraph 28), wherein the soft layer includes a resin for the soft layer (see e.g. semi-cured resin layer “140” has dual curing resin composition of thermosetting resin composition and UV curing resin composition in paragraph 17), and the resin for the soft layer can be made of thermosetting resins (see e.g. thermosetting resin includes epoxy resin, acrylic resin, and polyester resin with solvents such as butyl acetate or ethyl acetate in paragraph 35) but does not teach that the resin for the soft layer includes at least one of cellulose acetate butyrate and cellulose acetate propionate.
Oshima teaches that the resin for the soft layer includes at least one of cellulose acetate butyrate and cellulose acetate propionate (see e.g. preferable that cellulose resin is a cellulose acetate butyrate or cellulose acetate propionate resin in paragraphs 15 and 40-41).
Lee et al and Oshima are analogous in the art because both are related to making decorating nails preferably in a sticker, that allows for the wearer to shape the nail to their finger and be more comfortable. It would have been prima facie obvious for one of ordinary skill in the art to modify the soft layer of the nail sticker disclosed in Lee et al by the use of cellulose acetate butyrate or cellulose acetate propionate resin as the thermoset resin as taught in Oshima because cellulose acetate butyrate and cellulose acetate propionate resins can be used as thermoplastics that have increased flexibility, impact resistance, reusability, and a lower melting point making it better for a soft layer of a nail sticker when compared to a thermoset. When cellulose acetate butyrate or propionate are combined with other materials such as thermoplastic resins, they create a dispersed phase that can be turned into another shape with the addition of a force (see e.g. cellulose resin composition easily and efficiently transforms a dispersed phase into an anisotropic shape by applying shear force in paragraph 5 of Hayashi et al). In addition, the combined composition would provide a greater amount of flexibility, ductility (see e.g. dual cured resin gives increased ductility and flexibility in paragraphs 11 and 38 of Lee et al), deformation, and a higher viscosity (see e.g. cellulose derivatives have high melt viscosity in paragraph 54 of Hayashi et al).
Regarding claim 2, Lee et al teaches that the resin for the soft layer is included in the soft layer in an amount of 10 wt% to 90 wt% (see e.g. the dual composition resin may include 20 to 70 wt% of thermosetting resin in paragraph 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 3, Lee et al teaches that the soft layer is cured by irradiating ultraviolet ray (see e.g. semi-cured resin layer “140”, where the thermosetting is cured through heating and the UV-cured resin remains uncured until cured by UV light by user in paragraphs 72 and 63).
Oshima explicitly teaches the soft layer being cured by irradiating ultraviolet rays (see e.g. where the urethane acrylate resin and cellulose based resin have excellent curing properties in paragraph 83 and ultraviolet light is irradiated to cure intermediate layer “16” in paragraph 69).
It would have been prima facie obvious for one of ordinary skill in the art to modify the UV-cured resin used in the soft layer taught in Lee et al with the explicit use of irradiating ultraviolet rays to cure the soft layer as taught in Oshima because a UV-curable resin must be cured using ultraviolet rays.
Regarding claim 4, Lee et al teaches that the soft layer further includes a ultraviolet curing material for the soft layer (see e.g. semi-cured resin layer “140” as part of a dual curable resin composition includes an UV curing resin composition comprising of materials such as isobornyl acrylate and aliphatic urethane acrylate. Wherein urethane acrylate has excellent flexibility even after curing found in paragraphs 34 and 37-38).
Regarding claim 5, Lee et al teaches that the ultraviolet curing material for the soft layer is included in the soft layer in an amount of 10 wt% to 90 wt% (see e.g. dual curable resin composition may include 30 to 80 wt% of a UV curing resin composition in paragraph 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 6, Lee et al teaches a base layer (see e.g. adhesive layer “110”, base gel layer “120” and color layer “130” are all elements within the base film “100”), wherein the soft layer is disposed on the base layer (see e.g. the semi-cured resin layer “140” is disposed directly on top of the color layer and is above the adhesive layer “110” and the soft base gel layer “120” in paragraph 28 and Figure 2).
Oshima teaches a base layer (see e.g. base layer “12” that has better adhesion and can either be clear or have a coloring agent added in paragraph 69), wherein the soft layer is disposed on the base layer (see e.g. Figure 2d shows that the intermediate layer “16” is on top the base layer “12” and their order is established in paragraphs 68-69).
It would have been prima facie obvious for one of ordinary skill in the art to modify the base layer(s) taught in Lee et al to be directly under the soft layer as taught in Oshima because soft layer should be closer to the base layer that contains the adhesive and design layer to more closely adhere and shape to the user’s nail.
Regarding claim 7, Lee et al teaches a coating layer (see e.g. protective film “300” in Figure 2 and paragraph 10), wherein the coating layer is disposed on the soft layer (see e.g. a protective film “300” is on the upper surface of the base layer “100” that includes the semi-cured resin layer “140” in paragraph 10).
Oshima teaches a coating layer (see e.g. protective layer “13” in paragraph 69), wherein the coating layer is disposed on the soft layer (see e.g. Figure 2d shows the protective layer “18” is on top of the intermediate layer “16” and describes it in paragraphs 68-69).
It would have been prima facie obvious for one of ordinary skill in the art to modify the coating layer taught Lee et al to directly disposed on the soft layer as taught in Oshima because then the soft layer would be given more structure and could properly fill in any irregularities of the nail.
Regarding claim 8, Lee et al teaches that the coating layer (see e.g. protective film “300” in paragraph 10) and can absorb ultraviolet rays (see e.g. protective film “300” includes a UV absorber which absorbs ultraviolet rays). Additionally Lee et al teaches of an additional layer made up of UV cured material (see e.g. fully cured resin layer “160” made of auxiliary resin and cured by soft acrylic monomers in paragraphs 51 and 71) but does not teach that it includes an ultraviolet curing material for the coating layer and a resin for the coating layer.
Oshima teaches that the coating layer includes an ultraviolet curing material for the coating layer and a resin for the coating layer (see e.g. the protective layer “18” has a varied blend of cellulose resin and urethane acrylate resin that may differ from the intermediate layer “16” to have different properties such as smoothness in paragraph 44).
It would have been prima facie obvious for one of ordinary skill in the art to modify the coating layer as taught in Lee et al to be made of a resin and ultraviolet curing material as taught in Oshima because it would allow for less dents and irregularities to form in the nail sticker before and during user’s use of it. It would also allow for a hard surface to apply pressure and help give the soft layer an initial shape.
Regarding claim 9, Lee et al teaches that the nail sticker is cured when the ultraviolet ray is irradiated (see e.g. gel nail sticker capable of being cured via ultraviolet rays of daily life and rapid curing using UV lamp in paragraph 9).
Regarding claim 10, Lee et al teaches a curable nail sticker (see e.g. photocurable gel nail sticker in paragraph 10), comprising: a soft layer (see e.g. base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” in Figure 2 and paragraph 28), wherein a maximum thickness of the soft layer is increased when a pressure is applied to a part of an upper surface of the nail sticker after attaching the nail sticker on a flat floor (see e.g. semi-cured resin layer “140” has dual curing resin allowing for softness in gel nail sticker, allowing customization across nails or toenails, being made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing in paragraphs 32-33 and 35-38, the base gel layer “120” is a flexible transparent film in paragraph 45, and the fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength in paragraphs 47-51).
Regarding claim 11 The nail sticker according to claim 10, wherein a thickness increase rate of the soft layer according to Equation 1 is 2% or higher.
[Equation 1]
Thickness increase rate of soft layer = [(A2-Ai)/A1]x 100
A1 is a maximum thickness of the soft layer measured when the pressure is not applied to the nail sticker attached to the floor and A2 is a maximum thickness of the soft layer measured after applying the pressure for 3 seconds, removing the pressure, then leaving the nail sticker for 30 minutes in the atmosphere of a temperature of 36°C, and as the pressure, a force of 38.5 N is downwardly applied to an area with a size corresponding to 40% to 80% of the entire size of the upper surface of the nail sticker in the atmosphere of a temperature of 36°C.
Lee et al teaches the claimed invention above but fails to teach the thickness increase, the equation, or the conditions used of the soft layer. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
Regarding claim 12, Lee et al teaches a curable nail sticker (see e.g. photocurable gel nail sticker in paragraph 10), comprising: a soft layer (see e.g. base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” in Figure 2 and paragraph 28), wherein a maximum thickness of the nail sticker is increased when a pressure is applied to a part of an upper surface of the nail sticker after attaching the nail sticker on a flat floor (see e.g. semi-cured resin layer “140” has dual curing resin allowing for softness in gel nail sticker, allowing customization across nails or toenails, being made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing in paragraphs 32-33 and 35-38, the base gel layer “120” is a flexible transparent film in paragraph 45, and the fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength in paragraphs 47-51, where base gel layer “120”, semi-cured resin layer “140”, and fully cured resin layer “160” are all a part of the base film in between the protective film “300” and adhesive layer “110”/release film “400” in paragraphs 43, 47, and Figure 2).
Regarding claim 13, The nail sticker according to claim 12, wherein a thickness increase rate of the nail sticker according to Equation 2 is 2% or higher
[Equation 2]
Thickness increase rate of nail sticker = [(B2-B1)/B1]x 100
B1 is a maximum thickness of the nail sticker measured when the pressure is not applied to the nail sticker attached to the floor and B2 is a maximum thickness of the nail sticker measured after applying the pressure for 3 seconds, removing the pressure, then leaving the nail sticker for 30 minutes in the atmosphere of a temperature of 36°C, and as the pressure, a force of 38.5 N is downwardly applied to an area with a size corresponding to 40% to 80% of the entire size of the upper surface of the nail sticker in the atmosphere of a temperature of 36°C.
Lee et al teaches the claimed invention above but fails to teach the overall thickness increase, the equation, or the conditions used. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51). When the soft layer increases in thickness it follows that the overall nail sticker would too.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
Regarding claim 14, A curable nail sticker, comprising: a soft layer, wherein a rectangular parallelepiped substrate with a thickness of 0.7 mm disposed on a flat floor is prepared and the nail sticker is attached on an upper surface such that an area having a length corresponding to 70% the entire length of the nail sticker is in contact with the flat upper surface of the substrate, when measuring after a force of 38.5 N is applied to at least a part of the upper surface of the nail sticker which overlaps the substrate in a vertical direction toward a floor, the force is removed and then the nail sticker is left for 30 minutes at 36°C, a shortest distance between an area where a part of the nail sticker which does not overlap the substrate in the vertical direction and protrudes out of the substrate is in contact with the floor and the substrate is 1.5 mm or less, and the force is applied to an area corresponding to 40% to 80% the entire area of the upper surface of the nail sticker.
Lee et al teaches the claimed invention above but fails to teach the overall thickness increase, the equation, or the conditions used. It is reasonable to conclude that the property is inherent to Lee et al. Support for said conclusion is found in the use of like materials which would result in the claimed property. The burden is upon the Applicant to prove otherwise.
The curable nail sticker has a soft layer, preferably made of cellulose acetate butyrate or cellulose acetate propionate and an UV curable acrylate oligomer. Lee et al teaches of three layers that serve as a soft layer, with the semi-cured resin layer “140” displaying the greatest similarity. The semi-cured resin layer “140” has dual curing resin (i.e. made of a thermosetting resin and UV resin) allowing for softness in gel nail sticker and allowing customization across nails or toenails. The thermosetting resin used in the instant invention is cellulose acetate butyrate and cellulose acetate propionate and the UV resin is preferably urethane acetate oligomers. The semi-cured resin layer “140” is made of thermosetting resin such as acrylic resin with solvents like butyl acetate and UV resins such as aliphatic urethane acrylate making for excellent flexibility even after partial curing (see e.g. paragraphs 32-33 and 35-38). The soft base gel layer “120” is a flexible transparent film (see e.g. paragraph 45). The fully cured resin layer “160” and semi-cured resin layer “140” have auxiliary resin compositions such as soft acrylic monomers along with a photoinitiator which allow for the fully cured resin layer “160” specifically to be able to be easily bent to the shape of a fingernail while having high strength (see e.g. paragraphs 47-51). When the soft layer increases in thickness it follows that the overall nail sticker would too.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of [anticipation or obviousness] has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (“Products of identical chemical composition cannot have mutually exclusive properties.”).
Additional References
Other references that may read on the recited claims are Yukawa (AU-2004290232-B2) and Yamamoto et al (JP-2009288544-A).
Conclusion
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/T.N.W./ Examiner, Art Unit 1781
/FRANK J VINEIS/ Supervisory Patent Examiner, Art Unit 1781
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