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 .
Formal Matters
Applicant’s response in the reply filed on 22 July 2026 are acknowledged and have been fully considered. Claims 1-12 are pending. Claims 1-11 are under consideration in the instant office action. Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claims.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-11) in the reply filed on 22 July 2026 is acknowledged. Additionally, Applicant’s election without traverse of the below species for examination on the merits in the reply filed on 22 July 2026 is also acknowledged.
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on 19 September 2024 noted and the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. A signed copy is attached herein.
Objection to the title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title of the instant application is “PHOTOCURABLE COMPOSITION FOR NAILS”. The title should be brief but technically accurate and descriptive and should contain fewer than 500 characters. The title does not reflect the main inventive concept of Applicant’s invention and the major components of the “PHOTOCURABLE COMPOSITION FOR NAILS”. The title is generic and can be applicable to any “PHOTOCURABLE COMPOSITION FOR NAILS”. The examiner advises Applicant to consider including the main components of the composition in the title. Inasmuch as the words "new," "improved," "improvement of," and "improvement in" are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Similarly, the articles "a," "an," and "the" should not be included as the first words of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.
Claim Objections
Claim 1 is objected to for a grammatical inconsistency in component (C). The claim introduces component (C) as “a monomer as a component (c-1) and/or a component (c-2),” but the “and” alternative is two monomers, not “a monomer.” The same singular/plural mismatch appears in claim 7 (“the component (C)”). Applicant should recite component (C) as at least one monomer selected from component (c-1) and component (c-2), and state that, when both are present, the amount is the total.
Claims 2 and 7 are objected to under 37 CFR 1.75(i) as failing to use clear, idiomatic language. Each recites that a stated amount “is comprised with respect to 100 parts by mass of the component (A).” “is comprised” does not identify what contains the recited parts by mass. Applicant is advise to use the language: “wherein the composition comprises 80 to 150 parts by mass of the component (B) with respect to 100 parts by mass of the component (A)” (claim 2), and the corresponding wording for component (C) in claim 7.
Claim 4 is objected to because the variable in the structure and the variable in the “wherein” clause are not clearly the same label. The amendment shows R¹ on the structure and then defines “R1.” The structure and the definition should use one identical label.
Claim 6 is objected to for failing to refer to an earlier recitation with proper antecedent basis. Claim 1 already recites “a weight average molecular weight of 25,000 to 100,000.” Claim 6 should recite “the weight average molecular weight,” not “a weight average molecular weight.” Appropriate clarifications and corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim requires the durometer hardness of “a coating film formed by curing the photocurable composition.” The specification describes that range only for a bulk cured specimen 10 mm thick measured by Shore E under JIS K 6253-3:2012. It does not describe E10 to E50 for a coating film of the thickness used on a natural nail, and it does not describe that the 10 mm plaque value is the hardness of that film. Possession of the plaque measurement does not show possession of the coating-film limitation as claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010).
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.
Claims 1-11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “chain monomer” in component (c-1) in claim 1 does not reasonably apprise a person of ordinary skill of the metes and bounds of the claim. The specification says that “[c]hain refers to a hydrocarbon chain, an alkylene oxide chain, or an ether chain, or the like, and the component (c-1) does not have a cyclic structure and has only a chain structure,” while listing ditrimethylolpropane tetra(meth)acrylate, pentaerythritol tetra(meth)acrylate, dipentaerythritol penta(meth)acrylate, and dipentaerythritol hexa(meth)acrylate. Those examples are branched polyol (meth)acrylates, not linear chains. “Or the like,” together with “only a chain structure,” does not distinguish a linear monomer, a branched acyclic monomer, and a monomer that contains both a chain and a ring (for example a caprolactone-modified or isocyanurate-containing poly(meth)acrylate, which the claim places in (c-2)). The corresponding TW disclosure uses 直鎖状 (“linear”), which is narrower than the examples. Because the claim does not import a closed definition, “chain monomer” is indefinite.
In claim 5 the recitations “Visible light photoinitiator” and “non-visible light photoinitiator” have no boundary in the claim. The specification states that a visible-light photoinitiator “has the strongest light absorption in the visible light region, and mainly refers to an acylphosphine oxide-based photopolymerization initiator,” and points to JIS Z8120:2001 for visible light, with 2,4,6-trimethylbenzoyldiphenylphosphine oxide and bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide as examples, and acetophenones, benzoins, and benzophenones, including 1-hydroxycyclohexyl phenyl ketone, as non-visible-light examples. “Mainly” is not exclusive, and “strongest light absorption” is not tied to a solvent, concentration, or spectrum. Initiators used in this art, including acylphosphine oxides, absorb in both the near-UV and the short-wavelength visible region. The claim also uses “includes,” so it is unclear whether both types must be present as component (D) or whether one may be an unrecited extra initiator. The claim therefore does not define which initiators are inside and which are outside the combination.
In claim 10 “Durometer hardness of a coating film … is E10 to E50 in an atmosphere at 25°C” does not specify the scale, the standard, the specimen, or the measurement conditions that fix that number. The specification measures a square cured product 10 mm thick, with a smooth surface, “in accordance with JIS K 6253-3:2012 using a Shore E hardness tester,” at 25°C. The claim instead says “coating film,” does not require Shore E or JIS K 6253-3, and does not recite thickness, dwell, or indenter load. Durometer hardness depends on thickness and the method. A nail coating film and a 10 mm plaque will not give the same reading. “E10 to E50” is therefore not a definite property of the claimed composition. The dependent claims do not resolve the issues described above.
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 of this title, 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.
Claims 1–11 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2017-197532, machine English Translation provided) in view of Takemoto (US Patent No. 10,500,144), Ijdo (WO 2015/195659), and Saito (KR 20190098956, machine English translation provided) Note: The claims are examined with respect to the elected species set forth below:
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Applicant Claims
Applicant claims a photocurable composition for a nail. On the elected species, component (A) is a urethane-modified oligomer having acryloyl groups and a weight average molecular weight of 65,000 (MB-111); component (B) is ethyl carbitol acrylate; component (C) is dipentaerythritol hexaacrylate and caprolactone-modified tris-(2-acryloxyethyl) isocyanurate; and component (D) is 1-hydroxycyclohexyl phenyl ketone and 2,4,6-trimethylbenzoyldiphenylphosphine oxide. The dependent claims recite 80 to 150 parts of (B) and 0.01 to 10 parts of (C) per 100 parts of (A), a further hydroxy mono(meth)acrylate, an alicyclic (meth)acrylate of formula A, the initiator combination, molecular weight 50,000 to 100,000, a hydroxybenzophenone ultraviolet absorber, durometer hardness E10 to E50 at 25°C, and a base coat agent.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Takahashi teaches a photocurable artificial-nail composition for a natural nail containing a urethane (meth)acrylate oligomer, a radically polymerizable compound, and a photopolymerization initiator, the radically polymerizable compound being an acrylate monomer (see abstract and descriptions). The composition is particularly usable as a base-coat gel nail, and also under a color coat and a top coat. The oligomer is used at 10 to 99 wt%, preferably 30 to 70 wt%, to obtain low odor, elongation, and gloss. Initiators that cure under an LED or light of about 365 to 410 nm include trimethylbenzoyldiphenylphosphine oxide, bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide, 1-hydroxycyclohexyl phenyl ketone, and benzophenone, at 0.5 to 20.0 wt%, preferably 5 to 15.0 wt%. The monomer list includes dipentaerythritol hexaacrylate (logS −4.42, PSA 157.80), and the working initiators are named as hydroxycyclohexyl phenyl ketone and trimethylbenzoyldiphenylphosphine oxide (descriptions see machine English translations).
Ascertainment of the Difference Between Scope of the Prior Art and the Claims
(MPEP §2141.012)
Takahashi supplies the nail use, the urethane (meth)acrylate oligomer, dipentaerythritol hexaacrylate, both elected initiators, benzophenone, and base-coat use. Takahashi does not recite ethyl carbitol acrylate, isobornyl acrylate, 2-hydroxyethyl acrylate, molecular weight 65,000, or caprolactone-modified tris-(2-acryloxyethyl) isocyanurate, and Takahashi does not use the designation MB-111. These deficiencies are cured by the teachings of Takemoto, Ijdo, and Saito.
Takemoto supplies ethyl carbitol (meth)acrylate, isobornyl (meth)acrylate, 2-hydroxyethyl (meth)acrylate, and the same initiator pair used together, but its preferred oligomer molecular weight stops at 50,000. None of the four references names MB-111 or the caprolactone-modified isocyanurate triacrylate. Takemoto teaches a photocurable composition for a nail or artificial nail whose component (A) is a urethane-modified (meth)acrylic oligomer and whose component (D) is a photoinitiator, the cured product being a base coat (abstract; column 2, lines 31-40; column 3, lines 1–12). The oligomer preferably has 2 to 10 (meth)acryl groups (column 3, lines 20–28) and a weight average molecular weight of 500 to 50,000, more preferably 500 to 30,000 (column 3, lines 10–19). Component (D) includes 1-hydroxycyclohexyl phenyl ketone and benzophenones (column 5, lines 19–42). A visible-light initiator is an acylphosphine oxide having an absorption maximum from 400 to 800 nm, preferably 400 to 500 nm, exemplified by 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide, used at 0 to 70%, preferably 20 to 60%, of component (D) (column 5, lines 13-67). Monofunctional monomers include ethyl carbitol (meth)acrylate, isobornyl (meth)acrylate, cyclohexyl (meth)acrylate, dicyclopentanyl (meth)acrylate, and 2-hydroxyethyl (meth)acrylate (column 5, lines 45–62). The examples use both 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide, labeled the visible-light initiator, and 1-hydroxycyclohexyl phenyl ketone, labeled the non-visible-light initiator (Table 1).
Ijdo teaches a nail coating of a reactive (meth)acrylate monomer and a reactive (meth)acrylate-terminated polyether or polyester urethane having at least two acrylate groups (page 3, lines 1–34; claim 1). The photoinitiator is selected from benzoylphenylphosphinates, cyclohexyl phenyl ketones, benzyl ketals, and mixtures thereof, including 2,4,6-trimethylbenzoyldiphenylphosphinate, hydroxycyclohexyl phenyl ketone, benzyl dimethyl ketal, and mixtures thereof (claims 13-14).
Saito teaches a photocurable resin for a nail or artificial nail in which “component (A) includes a urethane (meth) acrylate oligomer” (claim 4; fourth embodiment). The oligomer “is preferably one having a weight average molecular weight of 1,000 or more and 100,000 or less,” more preferably 2,000 to 30,000, particularly preferably 3,000 to 20,000, by GPC against polystyrene (description, oligomer-definition and molecular-weight paragraphs). The urethane oligomer is preferred “from the viewpoint of adhesion and durability to the nail,” and “a commercial item or a synthetic product” may be used; named commercial products include UF-8001G and RUA-075, “but it is not limited to this” (description, specific-example paragraph). Component (A) preferably contains the urethane oligomer and a monofunctional (meth)acrylate, “particularly” one “having an alicyclic structure,” at an oligomer:monomer mass ratio of 50:50 to 95:5, more preferably 55:45 to 80:20 (description, preferred-combination paragraph). The monomer molecular weight is preferably less than 1,000, more preferably 500 or less, “to improve the workability when the photocurable resin composition is reduced in viscosity and applied” (description, monomer-molecular-weight paragraph).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to make the natural-nail gel of Takahashi, using ethyl carbitol acrylate as the monofunctional diluent, dipentaerythritol hexaacrylate as the crosslinker, and 1-hydroxycyclohexyl phenyl ketone together with 2,4,6-trimethylbenzoyldiphenylphosphine oxide as the initiators, and to select the urethane oligomer at a weight average molecular weight of 65,000 because the initiator pair is named in Takahashias described above and is used together in Takemoto, where one is identified as the visible-light initiator and the other as the non-visible-light initiator. Ijdo, claims 13-14, claims mixtures of the same two classes. One of ordinary skill in the art would have been motivated to combine them to cure under a lamp that emits both ultraviolet and near-visible light, which Takahashi, already addresses by preferring initiators effective at 365 to 410 nm. Ethyl carbitol (meth)acrylate is listed by Takemoto as described above, as a monofunctional diluent in the same nail composition. It has two ether groups and one (meth)acryloyl group. The reason to use it in the Takahashi gel is the reason that reference uses acrylate monomers at all: the oligomer at 30 to 70 wt% must be diluted to a spreadable viscosity. Expectation of success is provided by the same column, which lists this monomer among the diluents already used with a urethane-modified oligomer. Dipentaerythritol hexaacrylate is already in the monomer list of Takahashi. Its function is the ordinary one of a hexafunctional acrylate, to raise crosslink density at a low level. The 0.01 to 10 parts of claim 7, and the 80 to 150 parts of ethyl carbitol acrylate of claim 2, are result-effective amounts of crosslinker and diluent. Finding them is routine optimization. Molecular weight 65,000, and the range 50,000 to 100,000 of claim 6, sit inside the 1,000 to 100,000 range taught by Saito. Saito teaches a photocurable resin for a nail or artificial nail in which “component (A) includes a urethane (meth) acrylate oligomer” (claim 4; fourth embodiment). The oligomer “is preferably one having a weight average molecular weight of 1,000 or more and 100,000 or less,” more preferably 2,000 to 30,000, particularly preferably 3,000 to 20,000, by GPC against polystyrene (description, oligomer-definition and molecular-weight paragraphs). The urethane oligomer is preferred “from the viewpoint of adhesion and durability to the nail,” and “a commercial item or a synthetic product” may be used; named commercial products include UF-8001G and RUA-075, “but it is not limited to this” (description, specific-example paragraph). Component (A) preferably contains the urethane oligomer and a monofunctional (meth)acrylate, “particularly” one “having an alicyclic structure,” at an oligomer:monomer mass ratio of 50:50 to 95:5, more preferably 55:45 to 80:20 (description, preferred-combination paragraph). The monomer molecular weight is preferably less than 1,000, more preferably 500 or less, “to improve the workability when the photocurable resin composition is reduced in viscosity and applied” (description, monomer-molecular-weight paragraph). The designation MB-111 is a commercial label for that oligomer and is not required for the structural limitations of component (A). Claim 3 is met by 2-hydroxyethyl (meth)acrylate, listed in Takemoto, column 5, lines 45–62, as a monomer having one (meth)acryloyl group and one hydroxyl group. It is added for adhesion to the nail. Claim 4 is met by isobornyl (meth)acrylate, also listed in that column. R is a C10 alicyclic hydrocarbon group, which is inside the claimed 6 to 14 carbon atoms. Cyclohexyl (meth)acrylate and dicyclopentanyl (meth)acrylate in the same list are further species of formula A. Claims 5 is met by the pairing in Takemoto TPO is identified as the visible-light initiator and 1-hydroxycyclohexyl phenyl ketone as the non-visible-light initiator. Claims 8 and 9 are met by the benzophenones of Takahashi, and of Tkemoto. A hydroxybenzophenone is the ordinary ultraviolet-absorbing species of that class and is added to limit yellowing at a level that still permits cure. Claim 10, hardness E10 to E50, is the softness expected from the oligomer of Saito plasticized with the low-Tg ether monoacrylate of Takemoto and only a small amount of the hexaacrylate of Takahashi. Takahashi, seeks elongation rather than a glassy film. That balance either produces E10 to E50 or is optimized to it. Claim 11 is expressly taught. Takahashi, states that the composition is particularly usable as a base-coat gel nail. Caprolactone-modified tris-(2-acryloxyethyl) isocyanurate is not named in these four references. On a claim construction that requires both (c-1) and (c-2), that species is not carried by this combination and would need a further reference teaching the isocyanurate triacrylate as a crosslinker in a photocurable acrylate composition. On the claim language “and/or,” the dipentaerythritol hexaacrylate species alone meets component (C). In the case where the claimed amounts of ingredients, molecular weights, and other measurable parameters "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Furthermore, differences in measurable parameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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).
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. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed.
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/TIGABU KASSA/Primary Examiner, Art Unit 1619
