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 .
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.
Claims 1-2, 4-12, 16-21 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 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.
Regarding claim 1, lines 11-12 recite “a deforming step of deforming the tubular body into a helix form by pulling out a portion of the lock-of-hair holding body” and lines 21-22 recite “the tubular body automatically rolls up into the helix shape upon being released from the stretched state”. However, applicant’s specification does not provide an embodiment in which the method includes both deforming the tubular body into a helix form and also where the tubular body automatically rolls up into a helix shape. Rather, the specification defines a deforming step of the tubular body as an alternative to a tubular body that automatically rolls up, i.e. claim 1 appears to be mixing two different embodiments. Applicant’s specification describes two different tubular bodies, described as reference numeral 1, and reference numeral 1a. The embodiment of reference numeral 1 requires a deformation step (refer at least to applicant’s specification paragraph [0019]), whereas the embodiment of reference numeral 1a, described in paragraph [0040] of applicant’s specification explicitly states “the present hair treatment method does not include the above-described deforming step”.
Claims 2, 4-12, 16-21 are rejected due to their dependency on claim 1.
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 1-2, 4-12, 16-21 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.
Claim 1 recites the limitation "the stretched state" in line 22. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “a rolling-up step of rolling up the tubular body”, “a deforming step of deforming the tubular body into a helix by pulling out a portion of the lock-of-hair holding body” and “the tubular body automatically rolls up into the helix shape upon being released”. It is unclear how the deforming step deforms the tubular body into a helix if the body automatically rolls into a helix upon being released from a stretched state. Upon completing the previous rolling up step, the lock-of-hair holding body will have already been formed into a helix due to its shape memory property that automatically rolls the body into a helix shape, thus there will be no deformation into a helix shape since the tubular body is already a helix upon rolling up.
Claims 2, 4-12, and 16-21 are rejected due to their dependency on claim 1.
Response to Arguments
Applicant's arguments filed 07/14/2025 have been fully considered but they are not persuasive. Applicant respectfully submits that the deforming step is still necessary even with a shape memory material that is maintained in a helix state by the shape memory (see page 4 of the remarks). This statement appears to be contradictory to what is described in the specification. Applicant’s specification, when describing the embodiment having a shape memory that retains the hair holder in a helix shape, explicitly states that “The present hair treatment method can have a configuration similar to the configuration of the above-described hair treatment method illustrated in FIGS. 3A to 3D, except that the tubular body 2a is rolled up into a helix in the rolling-up step and the present hair treatment method does not include the above-described deforming step.” Thus, in light of the originally filed specification, it is not evident that the deforming step is required for the embodiment having a shape memory where the shape memory provides the tubular body in an already formed helix, i.e. the embodiment described by reference numeral 1a and depicted in Figure 7. It is noted that the specification does disclose that the embodiment of Figures 1A-5 may comprise a shape memory material (see at least paragraph [0013] of applicant’s specification) that would permit the tubular body to be rolled up into its “original roll shape”, as shown in Figure 2. When describing this condition, the specification refers to reference numeral 2, i.e. the embodiment of Figures 1-5. In light of the specification, there is an apparent distinction between the roll shape of Figure 2 and the helix shape of Figure 7.
Applicant refers to Figures 5 and 7 in their remarks; as evident when comparing
these figures, the reference numerals are different. Figure 5 depicts an embodiment described by reference numeral 1 and Figure 7 depicts an embodiment described by reference numeral 1a; i.e. Figures 5 and 7 appear to be describing two different embodiments.
The written description delineates these two embodiments by the difference in their natural states. Based on applicant’s specification, “natural state” describes a condition where the hair holder has no “eternal force”, which is an apparent typo but understood to be no external force (see paragraph [0013]). And two “natural states” are described, a first is a natural rolled up state (refer to paragraph [0013]) and a natural helix state (refer to paragraph [0037]). Further, if the hair holder is already naturally in a helix state, it is unclear how the helix can be deformed into a helix because it is already a helix. Thus, there is an indefiniteness issue with requiring a step of deforming an already formed helix into a helix, as required by claim 1.
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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/SARAH WOODHOUSE/Examiner, Art Unit 3772
/THOMAS C BARRETT/SPE, Art Unit 3799