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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/21/2025 has been entered.
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, 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.
Claims 25, 29, 30, 33-35, and 37-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller (US 7,143,770).
Keller discloses an artificial fingernail extension for use with a person’s fingernail, comprising a unitary body (10A) having opposing top and bottom surfaces and extending along a longitudinal axis, a distal end and a proximal end and two opposing sides extending between the proximal and distal ends, the proximal end having an offset ledge (20) being bound by two arcuate edges spaced from each other and both being convex relative to the distal end of the offset ledge, formed in the bottom surface so as to face the fingernail during use and extending between the opposing sides, the fingernail extension has a convex curve between the proximal and distal ends in the direction a finger bends, and the proximal end is curved convexly from side to side with the ends having a crescent shape and the offset ledge has a uniform length measured parallel to the longitudinal axis and being configured to improve adhesion with an adhesive and used to fasten the body to the fingernail (see Figures 1 and 4; col. 2, lines 30-40) a first thickness and the body immediately adjacent to the offset ledge having a second thickness greater than the first thickness.
Keller discloses the artificial nails can be made clear, however, does not disclose the transparency of the offset ledge more transparent than the transparency of the immediately adjacent portion of the body. Keller does not disclose the uniform length is between 3 and 6 mm (the offset ledge has a length along the longitudinal axis of about 2-6 mm); offset ledge has a thickness of 40% to 60% the thickness of the artificial fingernail extension immediately adjacent the offset ledge, the transparency of the offset ledge being about 15% to 40% (50% the first attachment region transparent and the nail attachment region adjacent is about 70% transparent) more than transparent than the transparency of the immediately adjacent portion of the body. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the thickness of the offset ledge offset ledge be 40% to 60% the thickness of the artificial fingernail extension; the uniform length is between 3 and 6 mm; offset ledge have a thickness of 40% to 60% the thickness of the artificial fingernail extension immediately adjacent the offset ledge, the transparency of the offset ledge being about 15% to 40% more than transparent than the transparency of the immediately adjacent portion of the body, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In this instance case, Keller is an artificial nail tips applied to a user’s fingernail, providing the same function as applicant. Therefore, one of general skill would find if obvious to discover the optimum workable ranges of an artificial nail. Keller also discloses the artificial nails can be made clear, however, does not disclose the transparency of the offset ledge more transparent than the transparency of the immediately adjacent portion of the body by 15% to 40%. Applicant’s specification paragraph 88 states that you can achieve that level of transparency by the reduction in thickness of the offset portion alone, therefore, one having ordinary skill in the art would recognize the offset ledge of Keller would have less material than the body portion inherently creating a first and second magnitude of transparency.
Claims 1-5, 9-13, 15-24, 27, 28, 31-32, 36, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keller (US 7,143,770) in view of Huynh (US 2011/0132386).
Keller discloses an artificial fingernail extension for use with a person’s fingernail, comprising a unitary body (10) having opposing top and bottom surfaces and extending along a longitudinal axis, a distal end and a proximal end and two opposing sides extending between the proximal and distal ends, the proximal end having an offset ledge (20) being bound by two arcuate edges spaced from each other and both being convex relative to the distal end of the offset ledge, formed in the bottom surface so as to face the fingernail during use and extending between the opposing sides, the fingernail extension has a convex curve between the proximal and distal ends in the direction a finger bends, and the proximal end is curved convexly from side to side with the ends having a crescent shape and the offset ledge has a uniform length measured parallel to the longitudinal axis and being configured to improve adhesion with an adhesive and used to fasten the body to the fingernail (see Figures 1 and 4; col. 2, lines 30-40). Keller further discloses a method of applying an artificial fingernail extension to a person’s fingernail using the artificial fingernail discloses and applying a fingernail adhesive (18) to the textured offset ledge (20); aligning the offset ledge with the distal end of the person’s fingernail; and placing the offset ledge on top of the person’s fingernail with an interior edge of the offset ledge at a distal end of the person’s fingernail (see Figure 4). Regarding the limitation at least a portion of the being configured to be bendable between a first configuration and a second configuration different from the first configuration (col. 2, lines 32-38) (i.e. the user is capable of bending the attachment end since it is of a thinner material that then distal end to cause flexing) to facilitate conforming of the body to the fingernail during attachment of the body to the fingernail.
Keller does not disclose the surface roughness having a matt finish being between 0.35- and 2.8 Ra, the offset ledge having a thickness about 35% to 65% of an average thickness of the artificial fingernail immediately adjacent to the offset ledge, the surface of the offset ledge being textured to have a surface roughness greater than a surface roughness of the bottom of the artificial fingernail; the uniform length is between 3 and 6 mm (the offset ledge has a length along the longitudinal axis of about 2-6 mm); offset ledge has a thickness of 40% to 60% the thickness of the artificial fingernail extension immediately adjacent the offset ledge, the transparency of the offset ledge being about 15% to 40% more than transparent than the transparency of the immediately adjacent portion of the body. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the thickness of the offset ledge about 35% to 65% of an average thickness of the artificial fingernail immediately adjacent to the offset ledge; the uniform length is between 3 and 6 mm (the offset ledge has a length along the longitudinal axis of about 2-6 mm); offset ledge have a thickness of 40% to 60% the thickness of the artificial fingernail extension immediately adjacent the offset ledge, the transparency of the offset ledge being about 15% to 40% more than transparent than the transparency of the immediately adjacent portion of the body, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In this instance case, both Keller and applicant’s invention are both artificial nail tips applied to a user’s fingernail, therefore, since both devices are meant to provide the same function and placed on the same arbitrary user’s fingernail one of general skill would find if obvious to discover the optimum workable ranges of an artificial nail. Keller also discloses the artificial nails can be made clear, however, does not disclose the transparency of the offset ledge more transparent than the transparency of the immediately adjacent portion of the body by 15% to 40%. Applicant’s specification paragraph 88 states that you can achieve that level of transparency by the reduction in thickness of the offset portion alone, therefore, one having ordinary skill in the art would recognize the offset ledge of Keller would have less material than the body portion inherently creating a first and second magnitude of transparency.
Furthermore, Huynh teaches an artificial nail having a roughened surface on the bottom that comes into contact with the user’s nail to increase adhesion properties to the user’s natural nail (see Figure 5; paragraph 17and 37). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the roughness be between 0.35 and 2.8 Ra, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. It further would have been obvious to one having ordinary skill in the art before the effective filing date to have the offset ledge of Keller be textured different that the remainder bottom portion as taught by Huynh to allow area that comes in contact with the user’s nail a roughened profile to facilitate adhesion of the user’s natural nail. Regarding claims 9-11, the combination of Keller and Huynh disclose the top and bottom surface being polished (see Figure 1 of Keller and Figures 4-6 or Huynh).
Response to Arguments
Applicant's arguments filed 8/21/2025 have been fully considered but they are not persuasive.
I. Prima Facie Case of Obviousness Established – No Hindsight
The Examiner respectfully maintains the rejection of independent Claim 15 under 35 U.S.C. § 103. Applicant argues that the rejection improperly relies on impermissible hindsight and Applicant’s own disclosure to establish the claimed features. However, this assertion is not supported by the totality of the record. The Examiner acknowledges that Keller does not explicitly disclose numerical ranges of transparency or thickness. Nevertheless, the concept of varying transparency through material thickness is a well-understood and commonly applied principle in the art of polymer-based artificial nails. Applicant’s own specification at paragraph [0008] (as cited in the Office Action) reinforces the fact that transparency variation is a direct consequence of altering material thickness, a principle that would be readily appreciated by a person of ordinary skill in the art. Citing the Applicant’s disclosure is not for the purpose of forming the rejection, but to confirm that such relationships, between material thickness and transparency, were known and recognized in the art. Use of Applicant’s specification to inform understanding of known relationships does not constitute hindsight, but rather is consistent with MPEP § 2141.03, which permits reference to Applicant’s disclosure to establish the level of ordinary skill and knowledge in the art.
The statement in the Office Action that Keller’s offset ledge inherently possesses a different transparency than the adjacent body portion, by virtue of its structure and function, is not speculation but is based on the principle that changes in thickness (which Keller implies via the structure of its offset ledge) naturally result in different light-transmission characteristics. This is a predictable result grounded in physical and optical principles well understood in the art prior to the effective filing date.
II. Examiner Has Properly Addressed the Limitations of Claim 15
Applicant alleges that the Examiner improperly applied limitations from Claim 1 to Claim 15 and failed to address the specific language of Claim 15. The Examiner respectfully disagrees. While Claim 15 uses slightly different language, the underlying structural and functional characteristics, a difference in transparency between the offset ledge and the adjacent portion of the artificial nail body have been addressed.
Claim 15 recites:
“…the offset ledge having a transparency through the matt finish that differs from the transparency of the immediately adjacent portion of the body by about 15% to 30% in transparency, so as to enhance the contrast between the offset ledge and the remainder of the body.”
The Examiner notes that the feature of a “matt finish” does not structurally preclude the inherent transparency differences resulting from thickness variation. In fact, it is well known in the art that matte or textured finishes may slightly scatter light but do not eliminate or negate the underlying transparency differential resulting from material thickness. Therefore, even with a matt finish, an offset ledge that is thinner than the adjacent region would predictably exhibit a measurable transparency difference, falling within the claimed 15% to 30% range. Furthermore, the claim’s functional language “so as to enhance the contrast” merely states the intended result of the physical structure, and as a result does not impart patentable distinction to an otherwise obvious structure.
III. Routine Optimization Properly Applied
Applicant contends that the rejection based on routine optimization is unsupported due to the absence of “general conditions” in the prior art references. This position is inconsistent with the controlling legal standards under In re Aller, 220 F.2d 454 (CCPA 1955), and MPEP § 2144.05(II). The Examiner notes that both Keller and Huynh are directed to artificial nails for the same purpose and field of application. The general structure of an artificial nail with an offset ledge, used to assist in alignment or blending with the natural nail, is clearly established by Keller. As stated in the Office Action, the optimization of the transparency or thickness of the offset ledge to enhance visual contrast or facilitate application is a design consideration within the routine skill of an artisan. The fact that Keller discloses artificial nails with varying structure and appearance provides sufficient basis for a person having ordinary skill in the art to adjust parameters such as thickness or texture to optimize appearance, adherence, or performance. No undue experimentation would be required to empirically determine that reducing the thickness of a section results in increased transparency or that a transparency difference within a certain range (e.g., 15%-30%) enhances visibility especially in a field driven by visual aesthetics and user preference. As noted in MPEP § 2144.05(II)(B), the Examiner is not required to show that the exact numerical ranges were taught in the art, only that their discovery would have been the result of routine experimentation, which is indeed the case here. Applicant has not provided persuasive evidence to the contrary.
IV. No Evidence That Claimed Transparency Range Is Unexpected
Applicant has not alleged, nor provided, any objective evidence (e.g., comparative data, secondary considerations) suggesting that the claimed transparency differential results in unexpected results or solves a technical problem in a manner not predictable from the prior art. Without such evidence, the slight variance in transparency percentage falls squarely within what would be considered an obvious parameter optimization.
The Examiner respectfully maintains that the rejection under 35 U.S.C. § 103 is proper. The prior art references, in combination with the general knowledge in the field, render the claimed invention obvious. The structural features and transparency differentials are predictable results based on known principles of optics and material properties. The Applicant’s arguments do not overcome the clear teaching or suggestion within the prior art, nor do they rebut the Examiner’s reasoning regarding routine optimization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
10/7/2025