DETAILED ACTION
Status of the Claims
Claims 1-22 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 .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
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 02/26/2026 was filed after the mailing date of the first office action on the merit, however Applicant has made a statement under 37 CFR 1.97(e)(1). 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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-22 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): component (A): a compound having a (meth)acryloyl group; component: (B) a polythiol compound; component (C): a photoinitiator; and component (D): a storage stabilizer having pKa of 1.0 to 4.0, containing no component (A), wherein the component (a) comprises a meth(acrylate) oligomer, and the component (D) is at least one selected from the group consisting of phosphoric acid, oxalic acid, and phosphonic acid compound represented by R1-P(=O)(OR2)2, wherein R1 is a hydrogen atom, or an organic group not bound to a phosphorus atom via an oxygen atom, and each R2 is independently a hydrogen atom or an organic group, the organic groups are an aromatic group or a hydrocarbon group, the hydrocarbon group may be substituted by a halogen atom, an amino group, a cyano group a nitro group, or a hydroxy group, each R2 may be the same or different, and R1 may be the same as or different from R2 (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 claims 5, 10 & 20 - 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: “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 claims 1, 8 & 15). COOKE teaches that: “The term "oligomer" includes compounds having a few monomer units, e.g. dimers, trimers and tetramers etc of monomers.” ([0129])(instant claim 14, 15, 18 & 22). COOKE teaches that: “In an embodiment, the oligomer component has a molecular weight of from about 100 to about 20,000 Da. In an embodiment, the oligomer component has a molecular weight of from about 100 to about 5,000 Da. For example, the oligomer component may have a molecular weight of from about 100 to about 2,000 Da. The oligomer component may therefore have a molecular weight of about 500± 100, about 600±100, about 700±100, about 800±100, about 900±100, about 1000±100, about 1100±100, about 1200±100, about 1300±100, about 1400±100 or about 1500±100 Da.” ([0130])(instant claims 16, 17 & 21).
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, such as 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.
Response to Arguments:
Applicant's arguments filed 04/24/2026 have been fully considered but they are not persuasive.
Applicant argues that: “OKAZAKI is directed to an entirely different technical field from that of COOKE and TAKEMOTO. OKAZAKI states that its "present invention relates to a polymerizable composition having practically sufficient storage stability, which has good optical characteristics regarding refractive index, transparency, etc. and can provide a cured product suitably used for an optical material such as an optical adhesive and an optical resin." OKAZAKI, para. 0001. OKAZAKI discloses that that "[t]he 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, a seal material, an encapsulation material and an adhesive, intended use for a molded product such as an optical resin, etc. have been proposed (Patent Document 1, Non-patent Document 1, etc.). Particularly, a polymerizable composition consisting of an enic compound and a thiol compound having a high refractive index has been proposed to be applied to an optical material having a high refractive index (Patent Documents 2, 3, etc.) " OKAZAKI, para. 0002 .. OKAZAKI further explains that "if a polymerizable composition comprising a polythiol compound and an enic compound having a phenylthio backbone having practically sufficient thermal stability is provided, it will lead to the development of a novel optical material having a high refractive index." OKAZAKI, para. 0018. OKAZAKI does not disclose or suggest using its composition for a nail or an artificial nail.” (paragraph bridging pp. 11-12).
Applicant further argues that: “COOKE and TAKEMOTO, by contrast, are directed specifically to nail coating compositions. See COOKE, Abstract ("nail coating compositions") ; TAKEMOTO, Abstract and para. 0001 ( "photocurable composition for a topcoat of nails or artificial nails"). Neither COOKE nor TAKEMOTO discloses or suggests the phenylthio-backbone ene-thiol polymerization system of OKAZAKI.” (p. 12, 2nd paragraph).
In response to applicant's argument that OKAZAKI is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, each of OKAZAKI, COOKE and TAKEMOTO are directed at photopolymerizable compositions, and particularly the field of UV cured coatings (OKAZAKI – title, abstract, [0002], [0064])(COOKE – [0040], [0015]-[0016], [0205], [0256]-[0261])(TAKEMOTO – Title, abstract, [0001], [0091]). Additionally, both OKAZAKI and COOKE include thiol components in their coatings (OKAZAKI – [0033]-[0046])(COOKE – [0073]-[0114]).
Applicant further argues that: “The Office Action's rationale appears to be that the ordinarily skilled artisan would have modified OKAZAKI to include a (meth)acrylate oligomer as taught by COOKE or TAKEMOTO in order to produce a nail coating. That rationale, however, starts from the presumption that OKAZAKI would be used as a nail coating – a presumption that is not supported by any teaching in OKAZAKI itself and that can be derived only from the claimed invention. Such reasoning is the hallmark of impermissible hindsight. See MPEP § 2145 (X) (A) ("'Any judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper', In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)" (emphasis added)). Here, OKAZAKI provides no suggestion that its phenylthio ene-thiol composition should be reformulated as a nail topcoat, and it is only with the benefit of Applicant's disclosure that the combination becomes apparent.” (p. 13, 2nd paragraph).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 1-22 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 1-22 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), 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 total of all having a (meth)acryloyl group is contained, and a content of the component (B) is 10 to 50 parts by mass with respect to 100 parts by mass of the component (A): the component (A): a urethane (meth)acrylate oligomer; the component (B): a compound having three or more functional groups which are (meth) acryloyl groups and 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 of Formula 1, and a component (D-2) is a surface treated fumed silica of Formula 2 (see claim for Formulas 1 & 2).
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.
Response to Arguments:
Applicant's arguments filed 04/24/2026 have been fully considered but they are not persuasive.
Applicant argues that: “Each rejection presumes a proper combination of OKAZAKI with the '219, '700 or '535 claims to supply the missing subject matter (a storage stabilizer having pKa of 1.0 to 4.0 and, as to the '219 and '700 claims, specific (meth)acrylate species) As set forth above, however, OKAZAKI is directed to high-refractive-index optical materials and nowhere discloses or suggests the use of its composition for a nail or an artificial nail, whereas each of the '219, '700 and '535 claims is expressly directed to a photocurable resin composition for a nail or an artificial nail. One of ordinary skill in the art would not have been motivated to combine OKAZAKI with the '219, '700 or '535 claims to arrive at the subject matter of the instant claims, for essentially the same reasons set forth above.” (p. 15, 1st paragraph).
In response the examiner does not find Applicants arguments over the combination cited references (OKAZAKI et al., as cited above) convincing for reasons set forth above, and incorporated herein by reference. Applicant has not filed any Terminal Disclaimers to obviate any ODP rejection(s), therefore the rejections are maintained.
Conclusion
Claims 1-22 are pending and have been examined on the merits. Claims 1-22 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.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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