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.
Examiner’s Note
The Applicant's amendments and arguments filed 06 July 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 06 July 2026, it is noted that claim 1 has been amended, claim 2 has been canceled, and no new claims have been added. Support for the amendment can be found the canceled claim. No new matter has been added.
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, 3-9 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 Formulas 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 1, 3, and 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 1, 3, and 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.
Response to Arguments
Applicant's arguments filed 06 July 2026 have been fully considered but they are not persuasive.
The Applicant argues that “routine optimization” doctrine does not apply (Remarks, pg. 7).
Applicant’s argument is not found persuasive. Saito does teach the amounts of the components recited in the instant claims. 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.
Furthermore, the adjustment of particular conventional working conditions (e.g., determining result effective amounts of the ingredients beneficially taught by the cited references, especially within the broad ranges instantly claimed), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly, this type of modification would have been well within the purview of the skilled artisan and no more than an effort to optimize results.
The Applicant argues unexpected results regarding the appearance and thixotropic properties of the claimed invention (Remarks, pgs. 7-9).
Applicant’s argument is not found persuasive. Table 2 of the instant specification shows specific compounds for Components A-D in regards to Examples 1-5. Additionally, any alleged evidence of better appearance and thixotropic properties do not have a causal relationship with the merits and scope of the claimed invention, which is, broadly, a compound having a (meth)acryloyl group (Component A), any polythiol compound (Component B), any photoinitiator (Component C), and a filling agent (Component D). As such, the data are not commensurate in scope with the claims.
“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 [95 USPQ2d 1525] (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 [97 USPQ2d 1673] (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp., 463 F.3d at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 [16 USPQ2d 1934] (Fed. Cir. 1990).
The Applicant argues that Saito does not teach polythiol (Remarks, pgs. 9-10).
Applicant’s argument is not found persuasive. Saito teaches mercaptopropyltrimethoxysilane (pg. 10, para. 3), a silane coupling agent, which is interpreted as capable of forming polythiol compounds and used as a precursor when used as a coupling agent. The product formed is interpreted as inherently occurring and necessarily present in the composition as a result of the reaction. Furthermore, mercaptopropyltrimethoxysilane is known in the art as a coupling agent to form polysulfides (sinosil.com, pg. 1), where polysulfides or compounds with a sulfide bond is interpreted as included in the scope of polythiols (instant specification, para. 44).
Conclusion
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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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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