DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/23/25 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. In the instant case: “power means” in claim 31 (Page 10 of applicant’s disclosure indicates this can be a “battery”), “heating means” in claim 31 (Page 8 of applicant’s disclosure indicates this can be “an electrical heating element”, “an internal electrical heating element such as a coil or the like”), “mode selecting means” of claim 31 (Page 18 of applicant’s disclosure indicates this is a button), “biasing means” of claim 46 (Page 10 of applicant’s disclosure indicates this can be a “spring”) and any known equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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(s) 31, 34-35, 37-42, and 45-50 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 31: this claim was amended in the last lines to recite “the mode selection means comprising means for selecting one of a plurality of modes for styling hair so as to determine which of the three heatable styling surfaces are to be heated, wherein in one of the modes it is determined…”; however, this language is entirely undefined by applicant’s disclosure thereby precluding one of ordinary skill in the art from determining what structure this language is supposed to imply or require. Instead applicant’s disclosure broadly states on Page 9 “Ideally, the mode selection means comprising means for determining which of the three heatable styling surfaces are to be heated”; however, this does not indicate any structure capable of “determining” anything. Applicant’s disclosure does not discuss any type of sensors nor any type of processors or logic circuits, etc. that would explain to one of ordinary skill in the art how to make the invention. How does this undefined “means” determine what surface to heat? This is an enablement rejection.
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(s) 31, 34-35, 37-42, and 45-50 is/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 31: this claim was amended in the last lines to recite “the mode selection means comprising means for selecting one of a plurality of modes for styling hair so as to determine which of the three heatable styling surfaces are to be heated, wherein in one of the modes it is determined…”; however, this language is entirely undefined by applicant’s disclosure making it impossible to determine what structure this language is supposed to imply or require and making it impossible to determine the metes and bounds of the claim. Instead applicant’s disclosure broadly states on Page 9 “Ideally, the mode selection means comprising means for determining which of the three heatable styling surfaces are to be heated”; however, this does not indicate any structure capable of “determining” anything. Applicant’s disclosure does not discuss any type of sensor nor any type of processor or logic circuit etc., which as best understood by the office is required for any type of logic output in a circuit, which is what “determining” requires. The language “means for selecting…so as to determine” does not make sense because nothing is being “determined” by the device as claimed without some kind of sensor or logic circuit, and how is this “determined”? The claim language is confusing and unclear. For examination purposes, the claim will be treated as reciting “the mode selection means enabling heating of the three heatable styling surfaces”. Clarification or correction is requested.
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 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) 31, 34-35, 37-42, and 45-50, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Barton (US 20110259356) in view of Tsuji (US 5223694).
Claim 31: Barton discloses a hair styling apparatus (1) having a plurality of modes for styling hair [0038] in a variety of fashions comprising: two elongate arms (see Fig 7) pivotally coupled about a joint (11), the at least two elongate arms pivotally movable about the joint between an extended (see Fig 7) and a closed position (see Fig 1-2). The two elongate arms comprise a first elongate arm and a second elongate arm (see Figs 1 & 7) and the first elongate arm and the second elongate arm each comprises a first styling part (31, Fig 5; exterior of 13 & 17), a second styling part (29, Fig 5; interior of 13 & 17), and a handle (15 & 19, Fig 2) and wherein the first styling part of the first elongate arm is correspondingly located along the first elongate arm in a manner that mirrors the location of the first styling part of the second arm (see Figs 1-7) allowing the first styling parts to cooperate with its counterpart in use, the second styling part of the first elongate arm is correspondingly located along the first elongate arm in a manner that mirrors the location of the second styling part in the second elongate arm allowing the second styling parts to cooperate, the handles of the first and second elongate arms also mirror each other and cooperate in use. The first and second styling parts are located at one end of each elongate arm opposite to the handles located on the opposite end of each elongate arm and the joint between the two elongate arms is proximal to the ends of the handles distal to the first and second styling parts with the cross-sectional area of the first and second styling parts tapering along the entirety of their length (see Figs 1-7). The device is electrically powered [0019] meaning it has a power means and the first styling part of the first arm and first styling part of the second arm combine when pivotally engaged into the closed position (see Figs 1-2) to comprise an outer styling surface and the second styling part of both elongate arms of the apparatus comprises the interior styling surface of the device (see Figs 1-7). The device can comprise mode selecting means allowing for heating one or both of the styling parts and/or to heat the interior styling surface and/or the exterior styling surface [0037-0038], which means it “determines” which of the styling surfaces are to be heated, as best understood. There can be a mode where only the exterior surface is heated or only the interior surface is heated [0037-0038] and a mode selecting means (23) in the form of a series of buttons with different “positions” in that they are located in different positions and can each be pressed to change the settings thereby enabling whichever desired respective surfaces to be heated. Barton discloses the invention essentially as claimed except for the device further comprising a clamp coupled to one of the first and second arms and movable between an open and a closed position and this clamp being heated.
Tsuji, however, teaches providing hair styling apparatuses (see Figs 1 & 11-12) comprising two elongate arms (30+10 & 20+40) pivotally coupled about a joint (41, Fig 2) between an extended (see Fig 11) and a closed (see Fig 1) position. The two elongate arms including a first elongate arm (30+10) and a second elongate arm (20+40) and each of the first and second elongate arms comprises a first styling part (curved exterior of 10 and curved exterior of 20), a second styling part (flat interior of 10 and flat interior of 20), and a handle part (30 & 40) with the first and second styling parts located at one end and the handle part of each elongate arm located at the opposite end of arm. The pivot joint between the handle parts is located at a distal most end of the handle parts opposite where the styling parts join the handle parts (see Figs 1-12). The first and second styling parts of the first elongate arm mirrors the respective first and second styling part of the second elongate arm (see Figs 1-11) and the handle parts also mirror each other. The apparatus further comprises a clamp (50) that is also heated at least via the steam that moves through the steam outlets (41) on the clamp (Col 5, 30-50) and the clamp is coupled to the elongate arms and movable between a first open position (see Fig 1) and a second closed position (see Figs 11-12) in order to provide a user with a variety of different curling and styling options during use. In other words, Tsuji teaches providing combination curling/straightening/styling apparatuses with a heated clamp coupled to one of the elongate arms and movable between a first open position and a second closed position in order to provide more styling options with the device. Therefore, it would have been obvious to one possessing ordinary skill in the art at the time of filing to modify the device of Barton by providing it with an additional heated clamp as taught by Tsuji in view of Tsuji in order to provide a user with additional styling options when using the device.
Claim 34-35: Barton discloses the outer styling surface being generally conical in shape [0044] and the first styling part and second styling parts of the arms are hemi-conical [0046] together forming the generally conical outer surface (see Figs 1-7).
Claim 37: Barton discloses the interior styling surface comprising plates with a width that tapers proportionately to the width of the first styling parts along the length of the first and second elongate arms (see Figs 1-7).
Claim 38: the proposed modification is to provide the conically shaped hair curling iron of Barton with a clamping arm in view of Tsuji and Tsuji teaches the clamping arm to include an actuating lever (60 or 55A) and a curved plate (50 or 50A). So, the proposed modification would also teach these limitations.
Claims 39-41: the proposed modification is to provide the conically shaped hair curling iron of Barton with a clamping arm in view of Tsuji and Tsuji teaches the clamping arm to include an actuating lever (55A) that pivotally attaches a curved plate (50A) to one of the elongate arms proximal the first styling parts (see Figs 13-14). Tsuji also teaches the curved elongate plate (50A) corresponding in shape and length to the outer styling surface of the apparatus meaning that the clamp would correspond in shape and length to the outer styling surface of the apparatus and the elongate plate would be hemi-conical corresponding with the shape of the curler of Barton. So, since Tsuji already teaches the clamp having these features, the proposed modification would also teach these limitations. Since the clamp and the outer and interior styling surfaces are heat conductive, the heating means heats all of these components with the proposed modification resulting in “three heatable styling surfaces”.
Claim 42: the clamp is biased towards one of the elongate arms of the apparatus by a biasing means (55A, see Figs 13-14).
Claim 45: the proposed modification is to provide the conically shaped hair curling iron of Barton with a clamping arm in view of Tsuji and Tsuji teaches the clamping arm to include an actuating lever (55A) that can act to prevent a user’s hand from moving from the handle to the styling part in use thereby acting as a physical barrier. So, since Tsuji already teaches the clamp having these features, the proposed modification would also teach these limitations.
Claim 46: Modified Barton discloses the invention essentially as claimed except for an elongate arm biasing means for biasing the elongate arms apart. Tsuji, however, teaches providing the pivot hinge between the two elongate arms to be spring biased (Col 4, 35-55) into the open position in order to make inserting hair therebetween easier. Therefore, it would have been obvious to one possessing ordinary skill in the art at the time of filing to modify the device of modified Barton by providing the hinge between the elongate arms to spring bias the arms in an open position in view of Tsuji in order to make inserting the hair easier during use.
Claim 47: Barton discloses the apparatus comprising a lock (27, Fig 4) operable to lock the elongate arms together (see Fig 4).
Claims 48-50: Barton discloses the mode selecting means and a lock and discloses the invention essentially as claimed except for these being formed as one component rather than as multiple. However, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the hair styling apparatus of Barton by combining the mode selecting means with the locking mechanism since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. See MPEP 2144.04(V)(B). In the instant case, Barton already teaches heating only the exterior in some modes and logically that would be a mode when the two elongate arms are locked together because that is when only the exterior of the apparatus is accessible for use for styling the hair so logically it would make sense for that mode to correspond with the sliding lock of locking the arms together and then heating the interior styling surfaces when the sliding lock is unlocked and those surfaces are accessible.
Response to Arguments
Applicant’s arguments filed 9/23/25 have been considered but are all drawn to the newly amended claim limitations, which have been addressed above.
Applicant argues that “selection of modes” as now claimed by applicant is not taught by the prior art references. As discussed above, this “means for determining” is not enabled by applicant’s disclosure and renders the metes and bounds of the claims unclear and impossible to determine because applicant fails to describe sufficiently to one of ordinary skill in the art what structure this means should include or exclude. The argument is not persuasive and the claims are unclear. The rejections are maintained because structurally applicant claims a styler with three heated surfaces and a button for controlling the heated surfaces and this is taught by the combination of references as outline above.
Applicant then appears to assert, with no evidence to support this, that somehow Barton fails to teach different heating modes because in applicant’s opinion, the different heating modes disclosed by Barton require the entire implement to be “designed/manufactured one way” and is not describing “modes”. This is not supported by any evidence in the reference. It is not persuasive. Barton contemplates heating the various components, which the office interprets as different heating “modes”. The word “mode” is not required to be explicitly recited because one of ordinary skill in the art would understand what is being discussed. The device does not need to be “redesigned” to heat the different surfaces as argued by applicant nor is there any evidence in the reference to support this argument made by applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772