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 .
Priority
The instant application was filed 08 May 2024 and is the national stage entry of PCT/JP2022/040731 filed 31 October 2022. The Applicant claims priority to foreign application JP2021-184529 filed 12 November 2021. An English copy of the foreign document has not been provided. Therefore, the effective filing date of the instant application is 31 October 2022.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito (WO 2018116798 A1).
Saito teaches a photocurable composition for nails or artificial nails (title; pg. 15, para. 2; entire teaching) that may comprise a compound with a methacryloyl group (abs; pg. 3, para. 3), a silane coupling agent, such as mercaptopropyltrimethoxysilane (pg. 10, para. 3), a photoinitiator (abs), and fumed silica treated with compounds, such as polydimethylsiloxane or hexamethyldisilazane (pg. 9, para. 8), which is interpreted as addressing Formula 1 and 2 when fumed silica is treated with these compounds (instant specification, paras. 57-60), addressing claim 1. The silane coupling agent is interpreted as capable of forming polythiol compounds and used as a precursor when used as a coupling agent. The compound with a methacryloyl group may include a methacrylate oligomer and a methacrylate monomer (pg. 3, para. 10), addressing claim 5. The methacryloyl groups may have functional groups, such as hydroxyl groups (pg. 3, para. 4), addressing claims 6 and 7. Bifunctional methacrylate monomers include tricyclodecane dimethanol dimethacrylate (pg. 5, para. 8), which is interpreted as addressing claim 8. The composition is used for nail gel (pg. 15, para. 2), addressing claim 9.
Saito does not specifically teach an exact combination of components in claim 1 or the mass ratios in claims 2-4.
In regards to selecting the combination of the compounds in instant claim 1, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Saito teaches compositions and methods for making a photocurable nail composition comprising a compound with a methacryloyl group (abs; pg. 3, para. 3), a silane coupling agent, such as mercaptopropyltrimethoxysilane (pg. 10, para. 3), a photoinitiator (abs), and fumed silica treated with compounds, such as polydimethylsiloxane or hexamethyldisilazane (pg. 9, para. 8), whereas the claimed invention is directed towards a photocurable composition for nail comprising a compound with a methacryloyl group, a polythiol compound, a photoinitiator, and fumed silica treated with compounds of Formulas 1 and 2. Since Saito teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
In regards to the mass ratios of claims 2-4, Saito teaches 0.1 to 200 parts by mass of fumed silica (pg. 9, para. 7), 25 parts by mass of a photoinitiator pg. 7, para. 3), and 0.05 to 30 parts of a silane coupling agent (pg. 10, para. 3). That being said and in lieu of objective evidence of unexpected results, the mass ratios of components can be viewed as a variable that achieves the recognized result of successfully making the photocurable composition, which a skilled artisan would have been easily motivated to modify and adjust. The optimum or workable mass ratios can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Applicants provide no evidence of any secondary consideration, such as unexpected results, that would render the optimized mass ratios of components as nonobvious.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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