DETAILED ACTION
Status of the Claims
Claims 1-13 are pending in the instant application and are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant Application is a 371 of international Application PCT/JP2022/040729 filed 10/31/2022 and claims priority to JP-2021-184527 filed 11/12/2021.
The U.S. effective filing date has been determined to be 10/31/2022, the filing date of the PCT/JP2022/040729. Applicant's claim for a foreign priority date of, 11/12/2021, the filing date of document JP-2021-184527, is acknowledged, however no English translation of the foreign priority document has been provided such that the examiner can confirm written description (112(a)) support therein.
Information Disclosure Statement
The information disclosure statement submitted on 04/24/2024 was filed before/after the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim capitalization of “Component” is unnecessary. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 6 is rejected as being indefinite because the claim recites “wherein the composition does not comprise any storage stabilizer other than the component (D).” in referencing claim 1 which recites “Component (D) : a storage stabilizer having a pKa of 1.0 to 4.0 containing no component (A).” And the instant Specification discloses that: “Throughout the description, unless particularly stated otherwise, any expression in a singular form should be understood to encompass the concept of its plural form. Therefore, unless particularly stated otherwise, the article specifying a single form (for example, "a", "an", "the", and the like in the case of English language) should be understood to encompass the concept of its plural form.” (p. 7, lines 15-22). And consistent with this understanding instant claim 4 recites “wherein the component (D) is at leas one selected from the group consisting of […]” That is, it is clear that “a storage stabilizer” as recited in claim 1, component (D) is generic to any number of “storage stabilizers” and it is therefore unclear what is being excluded by claim 6 reciting “wherein the composition does not comprise any storage stabilizer other than the component (D).” as “the component (D)” is generic to numerous unrecited species within the genus. Appropriate clarification is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over OKAZAKI (US 2015/0252234; published September, 2015) in view of COOKE (US 2013/0146077; published June, 2013) and TAKEMOTO (US 2017/0312201; published November, 2017).
Applicants Claims
Applicant claims a photocurable composition comprising components (A) to (D): (A) a compound having a (meth) acryloyl group component; (B) a polythiol compound component; (C) a photoinitiator Component; and (D) : a storage stabilizer having pKa of 1.0 to 4.0, containing no component (A) (instant claim 1). Applicant further claims the photocurable composition according to claim 1, wherein the component (D) is at least one selected from the group consisting of phosphoric acid, oxalic acid, 2-ethylhexyl (2-ethylhexyl)phosphonate, phenylphosphonic acid, vinylphosphonic acid and methylphosphonic acid. Applicant further claims the photocurable composition according to claim 9, wherein the [component (A)] monofunctional (meth) acrylate is a monofunctional (meth) acrylate having a hydroxyl group (instant claim 10) and photocurable composition according to claim 9, wherein the [component (A)] difunctional (meth) acrylate is dimethylol tricyclodecane diacrylate (instant claim 11). Applicant further claims the use of the composition of claim 1, in a nail or artificial nail (instant claims 12-13).
Determination of the scope
and content of the prior art (MPEP 2141.01)
OKAZAKI teaches a polymerization composition and a cured article (title), and particularly “According to the present invention, a polymerizable composition having excellent storage stability can be provided by adding an acid that serves as a stabilizing agent and a free radical polymerization inhibitor to a polymerizable composition that contains a polythiol compound and an enic compound having a phenylthio backbone as monomer components. In the present invention, an embodiment in which the acid is at least one compound having a protonic acid-type functional group which is selected from phosphoric acid, phosphonic acid, phosphinic acid, sulfonic acid, sulfoneimide and carboxylic acid is preferred.” (Abstract, see whole document)(instant claim 1, items (B) and (D)).
OKAZAKI teaches that: “In the present invention, to a polymerizable composition comprising at least one polythiol compound (hereinafter sometimes referred to as "Component A") and at least one enic compound having a phenylthio backbone (hereinafter sometimes referred to as "Component B"), an acid (hereinafter sometimes referred to as "Component C") and a free radical polymerization inhibitor (hereinafter sometimes referred to as "Component D") are added, thereby providing a polymerizable composition having practically sufficient stability. […] In addition, another polymerization inhibitor, a photopolymerization initiator, a thermal polymerization initiator, an antioxidant, a light stabilizer, an ultraviolet absorber, an adherence agent, a mold release agent, a pigment, a dye, etc. can be added thereto according to need.” ([0030])(instant claim 1, items (C) & (D)).
OKAZAKI teaches “The polythiol compound (Component A) is a compound
having a plurality of thiol groups in one molecule. […] Component A may be used solely, or two or more types of compounds corresponding to Component A may be used in combination, or a monofunctional thiol may be used in combination therewith.” ([0031]). OKAZAKI teaches specific examples of alkyl polythiols ([0033] through [0045]). OKAZAKI teaches that: “When using as an optical material having a high refractive index, Component A is added preferably in an amount of 5 to 80 parts by mass, and more preferably in an amount of 10 to 70 parts by mass relative to 100 parts by mass of monomers. Note that the monomers in this case mean Component A, Component B and other polymerizable compounds contained.” ([0032])(instant claim 7, amount of item (B) – MPEP §2144.05(I) - In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
OKAZAKI teaches that: “As the acid (Component C), any type of acid such as protonic acid, Lewis acid, organic acid and inorganic acid can be used as long as the acid has solubility of the ene-thiol composition. […] Specific examples of Component C include: […] phosphoric acids, phosphonic acids and phosphinic acids such as KAYAMER PM-2 and PM-21 (both are methacrylate phosphate, manufactured by Nippon Kayaku Co., Ltd.), methane phosphonic acid, benzenephosphonic acid and benzenephosphinic acid; […].” ([0049]). And teaches specific examples including “oxalic acid (anhydrous), benzene-phosphonic acid” ([0052])(instant claims 2-4).
OKAZAKI teaches that: “The optimum amount of the acid to be added varies depending on the acid strength and the molecular weight of the acid, but in the case of a strong acid having a PKa value of 2 or less such as a sulfonic acid derivative, the amount thereof to be added is preferably 0.01 to 1 parts by mass, and particularly preferably 0.02 to 0.5 parts by mass relative to 100 parts by mass of the monomers. When using a moderately strong acid having a PKa value of 2 to 4 such as phosphoric acid, the amount thereof to be added is preferably 0.05 to 10 parts by mass, and particularly preferably 0.1 to 5 parts by mass. In the case where the adding amount is small, the effect of polymerization inhibition is not sufficient, and in the case where the adding amount is large, the ene-thiol composition becomes destabilized, and therefore, in both the cases, it is difficult to obtain practically sufficient thermal stability.” ([0053])(instant claim 5).
OKAZAKI teaches that: “Further, in order to cure the polymerizable composition obtained according to the present invention, various polymerization initiators can be mixed therewith. The polymerization initiator is not particularly limited, and general radical polymerization initiators can be used. Specific examples of the polymerization initiator include: photopolymerization initiators such as 2,2-methoxy-1,2-diphenylethane-l-one, 1 -hydroxy-cyclohexyl phenyl ketone, 2-hydroxy-2-methyl-1-phenylpropane-l-one, 2-methyl-1-[(methylthio)phenyl]-2-morpholino propan-1-one, 2-benzyl-2-dimethylamino-l-( 4-morpholino phenyl)-butanone-1, bis(2,4,6-trimethyl benzoyl)-phenylphosphine oxide and 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide; […]. These compounds may be used solely, or two or more of them may be used in combination. The content of the polymerization initiator is not particularly limited, but is preferably 0.1 to 10 parts by mass, and more preferably 0.5 to 5 parts by mass relative to 100 parts by mass of the polymerizable composition.” ([0058])(instant claim, 1, item (C), instant claim 7 amount of the same - MPEP §2144.05(I)).
Regarding instant claim 1, item (A), OKAZAKI teaches inclusion of 4,4'-bis(methacryloylthio)diphenylsulfide (hereinafter referred to as"MPSMA") which is a representative phenylthio(meth)acrylate compound, specifically Examples 1-7, as Component B therein ([0065], Table 1, Component B).
OKAZAKI teaches “The ene-thiol reaction is progressed by light and heat even if no polymerization initiator is used, but as a practical curing method, a photo-curing method or thermal curing method using a radical polymerization initiator is widely used. The ene-thiol reaction has characteristics such as a high reaction rate, little influence of oxygen inhibition and low cure shrinkage. For this reason, intended use as a rapid curing resin such as a coating material, […].” ([0020]).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of OKAZAKI is that OKAZAKI does not expressly teach the component (A) species including a monofunctional meth(acrylate) having a hydroxyl group such as 2-hydroxypropyl methacrylate (instant claims 9-10); or a difunctional (meth)acrylate species dimethylol tricyclododecane diacrylate (instant claims 9 & 11).
OKAZAKI does not expressly teach the use in as a nail coating (instant claims 12-13), however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim, as is the case here (instant claims 12-13). However, for completeness the examiner cites COOKE clearly teaching the reasoning for using polythiol compounds in nail coatings.
COOKE teaches nail polish (title, see whole document), and particularly that: “This invention relates to nail coating compositions, to packages including the nail coating compositions, to methods of applying the nail coating composition to a nail and to a use of an additive compound to improve the properties of the nail coating composition of the present invention. In particular, the invention relates to nail coating compositions having improved chip resistance, good adhesion to the nail, a high gloss finish and a short dry-to-touch time.” (Abstract). COOKE teaches that: “The term "nail" includes both natural nails and also artificial and false nails.” ([0059]). And that: “In accordance with the present invention there is provided a use of a thiol compound in a nail composition of the invention for improving the adhesion of the nail coating composition to the nail.” ([0056]). And that: “In accordance with the present invention there is provided a use of a thiol compound in a nail composition of the invention for increasing the chip resistance of the nail coating composition.” ([0057]).
COOKE teaches the inclusion of a Radiation Curable Component ([0015]) and particularly, “Generally, a radiation curable composition will include an acrylate or methacrylate component. The term "acrylate" is used in the broad sense to include moieties having an alpha-beta unsaturated carboxyl group […].” ([0118]), and including monofunctional acrylates ([0126]) difunctional acrylates ([0146]-[0147]), and monofunctional acrylates including a hydroxyl group: “In an embodiment, the acrylic acid ester monomer component is a monofunctional monomer for example hydroxypropyl methacrylate.” ([0174])(instant claims 9 & 10).
COOKE teaches that: “In accordance with the present invention there is provided a package comprising: (i) a nail coating composition comprising: a radiation curable component comprising an acrylate-terminated oligomer in combination with at least one acrylate monomer; and a thiol component present in an amount of from about 5% to about 90% w/w of the nail coating composition, […].” [emphasis added]([0038])(instant claim 8).
COOKE does not expressly teach the inclusion of the difunctional (meth)acrylate species dimethyloltricyclodecan diacrylate (INCI tricyclodecanedimethanol diacrylate; PubChem CID 3036974).
TAKEMOTO teaches photocurable compositions for topcoat of tails or artificial nails (title, see whole document), including components (A) to (C), and “The object of the present invention is to provide a photocurable composition for a topcoat of nails or artificial nails having excellent glossiness and a colorless and transparent outer appearance.” (Abstract). TAKEMOTO teaches that: “In the composition of the present invention, other monomers may be contained in addition to the components (A) to (D). Other monomers are not particularly limited and preferably contain a monofunctional and/or bifunctional (meth)acrylic monomer from the viewpoint of having copolymerization with the component (A) and the component (B).” ([0019]). And that: “Specific examples of the bifunctional (meth)acrylic monomer include […] dimethylol tricyclodecane di(meth) acrylate, […]. Among them, from the viewpoint of enhancing the hardness of a cured product, a bifunctional (meth)acrylic monomer having an alicyclic structure is preferable, and isocyanuric acid EO modified di(meth)acrylate and dimethylol tricyclodecane di (meth) acrylate are particularly preferable. Furthermore, those compounds may be used either singly or in combination of two or more kinds thereof.” ([0050] & [0068])(instant claims 9 & 11).
Regarding instant claim 6, it would have been within the ordinary level of skill in the art to select the appropriate species of storage stabilizer such as phosphoric acid, as suggested by OKAZAKI, and to select only one for time/cost savings.
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 before the effective filing date of the claimed invention to produce a coating composition, and specifically a nail coating composition including a polythiol compound in combination with acrylate monomers/oligomers and a storage stabilizer such as phosphoric acid, as suggested by OKAZAKI and COOKE, in order to produce a (nail) coating composition that is chip resistant and having good adhesion, as suggested by COOKE ([0056]-[0057]), while providing good stability as suggested by OKAZAKI; and further to utilize known (meth)acrylate polymers for such coating compositions such as 2-hydroxypropyl methacrylate and/or dimethylol tricyclodecane diacrylate, as suggested by TAKEMOTO.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because it would have required no more than an ordinary level of skill to formulate a (nail) coating composition including conventional known ingredients for the same. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,508,219 (hereafter ‘219) in view of OKAZAKI (US 2015/0252234); COOKE (US 2013/0146077) and TAKEMOTO (US 2017/0312201).
The instant claims are discussed above.
‘219 claim 1 recites a photocurable composition for nails or artificial nails, comprising the following components (A) to (D), wherein a molecular weight of the components (C) is 200 or more; a component (A): a urethane (meth)acrylate oligomer, a component (B): a monomer selected from the group consisting of (meth)acrylate monomer, a (meth)acrylamide monomer, and (meth)acrylic acid (excluding the component (A)), a component (C): polyglycerol having no (meth)acryloyl group and/or a compound having a polyglyceryl ether skeleton having no (meth)acryloyl group, a component (D): a photoinitiator. ‘219 claim 7 recites the photocurable resin composition for nails or artificial nails according to claim 1, further comprising a polyfunctional thiol compound.
The difference between the instantly rejected claims and the claims of ‘219 is that the claims of ‘219 do not expressly claim a storage stabilizer (instant claim 1, item D), or the species of (meth)acrylate monomer/oligomers (instant claims 9-11).
OKAZAKI teaches the inclusion of a storage stabilizer such as phosphoric acid, as discussed above and incorporated herein by reference.
COOKE teaches nail coating compositions including a thiol for chip resistance, and a monofunctional monomer for example hydroxypropyl methacrylate, as discussed above and incorporated herein by reference.
TAKEMOTO teaches photocurable compositions for topcoat of tails or artificial nails, and including dimethylol tricyclodecane di (meth) acrylate as a particularly preferable bifunctional (meth)acrylate species, as discussed above and incorporated herein by reference.
It would have been prima facie obvious before the effective filing date of the claimed invention that the instantly rejected claims are an obvious variant of the claims of ‘219 because they include all of the same components except for (D) which would have improved the storage stability of the compositions. The skilled artisan would have been motivated to modify the claims of ‘219 and produce the instantly rejected claim because to improved the storage stability of the compositions. Furthermore, the skilled artisan would have had a reasonable expectation of success in producing the invention of the instantly rejected claims because it would have required no more than an ordinary level of skill in the art to combine a storage stabilizer such as phosphoric acid in a nail composition such as defined by the claims of ‘219.
Claim 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application Nos. 18/563,700 (claims 1-9; hereafter ‘700) and 18/708,535 (claims 1-9; hereafter ‘535) in view of OKAZAKI (US 2015/0252234); COOKE (US 2013/0146077) and TAKEMOTO (US 2017/0312201).
The instant claims are discussed above.
Copending ‘700 claim 1 recites a photocurable resin composition for a nail or an artificial nail, comprising components (A) to (D) below, wherein 0.01 parts by mass or more and 3.0 parts by mass or less of the component (C) with respect to 100 parts by mass of a compound having a (meth)acryloyl group is contained: the component (A): a urethane (meth)acrylate oligomer; the component (B): a compound having three or more functional groups which are (meth) acryloyl groups (excluding the component (A))' the component (C) the component (D) a polyfunctional thiol compound; and a photoinitiator.
Copending ‘535 claim 1 recites
a photocurable composition for a nail or an artificial nail, comprising the following components (A) to (D) : Component (A): a compound having a (meth)acryloyl group Component (B): a polythiol compound Component (C): a photoinitiator Component (D): a filling agent containing a component (D-1) and a component (D-2) Component (D-1): surface-treated fumed silica
The difference between the instantly rejected claims and the claims of copending ‘700 is that the claim of copending ‘700 do not expressly claim a storage stabilizer (instant claim 1, item D), or the specific (meth)acrylate monomers (instant claims 9-11).
The difference between the instantly rejected claims and the claims of copending ‘535 is that the claim of copending ‘535 do not expressly claim a storage stabilizer (instant claim 1, item D).
OKAZAKI teaches the inclusion of a storage stabilizer such as phosphoric acid, as discussed above and incorporated herein by reference.
COOKE teaches nail coating compositions including a thiol for chip resistance, and a monofunctional monomer for example hydroxypropyl methacrylate, as discussed above and incorporated herein by reference.
TAKEMOTO teaches photocurable compositions for topcoat of tails or artificial nails, and including dimethylol tricyclodecane di (meth) acrylate as a particularly preferable bifunctional (meth)acrylate species, as discussed above and incorporated herein by reference.
It would have been prima facie obvious before the effective filing date of the claimed invention that the instantly rejected claims are an obvious variant of the claims of ‘219 because they include all of the same components except for (D) which would have improved the storage stability of the compositions. The skilled artisan would have been motivated to modify the claims of ‘219 and produce the instantly rejected claim because to improved the storage stability of the compositions. Furthermore, the skilled artisan would have had a reasonable expectation of success in producing the invention of the instantly rejected claims because it would have required no more than an ordinary level of skill in the art to combine a storage stabilizer such as phosphoric acid in a nail composition such as defined by the claims of ‘219.
This is a provisional obviousness-type double patenting rejection.
Conclusion
Claims 1-13 are pending and have been examined on the merits. Claim 6 are rejected under 35 U.S.C. 112(b); claims 1-13 are rejected under 35 U.S.C. 103; and claims are (provisionally) rejected on the ground of nonstatutory double patenting as being unpatentable over claims of USPN 12,508,219, and Application Nos. 18/563,700 and 18/708,535. No claims allowed at this time.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619