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 § 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 8,225,800) in view of Phillips (US 2,421,432).
Byrne discloses a lash extension for application under natural lashes comprising a plurality of groupings of hairs (617) protruding from a base (62), each grouping of the plurality of groupings of hairs comprising two or more hairs, wherein at least two groupings of the plurality of groupings of hairs protrude from distinct locations along the base (see Figure 6); and wherein the two or more hairs (617) of a grouping of hairs in the plurality of groupings include at least two hairs that contact one another. The base of the lash extension is configured to attach to the natural lashes at an underside thereof, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987), and wherein the base of the lash extension is configured to a solid state during attachment to natural lashes (see Figure 6). However, regarding the limitation wherein the two or more hairs of the grouping of hairs are joined to one another by at least applying heat to a portion of the two or more hairs or the base. Phillips teaches a base 3 and hairs (2) that are heat fused to the base (col. 2, lines 45-55). It would have been obvious to one having ordinary skill in the art before the effective to have the hairs of Byrne be manufactured by heat fused to a base since heat fusing was a known method of manufacture to create a lash assembly with a thin base.
Claims 2 and 12, Byrne further discloses the two or more hairs of the grouping are joined to one another at one end of each of the two or more hairs (see Figure 6).
Claims 3 and 13, Byrne as modified by Phillips further discloses the grouping of hairs is formed by applying the heat at the one end of each of the one or more hairs of the grouping to join the two or more hairs to one another.
Claims 4 and 14, Byrne further discloses each grouping of the plurality of groupings is spaced apart from one another along a length of the base (see Figure 6).
Claims 5 and 15, Byrne further discloses the two or more hairs of each of the plurality of groupings comprises at least a natural material comprising at least one of silk or authentic hair (col. 7, lines 35-40).
Claims 6 and 16, Byrne discloses the two or more hairs of each of the plurality of groupings includes at least a synthetic material. However, does not disclose the synthetic material comprising at least one of acrylic resin, polybutylene terephthalate (PBT), or synthetic hair made of polyester. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the synthetic material be at least one of acrylic resin, polybutylene terephthalate (PBT), or synthetic hair made of polyester, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claims 7 and 17, the combination of Byrne and Phillips teaches the two or more hairs of the grouping of hairs are joined to the base by an attachment process comprising at least in part applying the heat to the two or more hairs and the base. (Phillips col. 2, lines 45-55).
Claims 8 and 18, the combination of Byrne and Phillips teaches the attachment process further comprises: arranging the plurality of groupings of hairs to form intersecting portions of hairs (at base of Byrne); and joining the hairs of the intersecting portions to secure the plurality of groupings to one another (as modified by Phillips).
Claims 9 and 19, the combination of Byrne and Phillips teaches the attachment process further comprises applying heat to the intersecting portions of hairs (Phillips; col. 4, lines 40-65).
Claims 10 and 20, the combination of Byrne and Phillips further teaches the attachment process further comprises applying adhesive to the hairs of the intersecting portions; and applying heat to cure the adhesive (Phillips; col. 4, lines 45-50).
Response to Arguments
Applicant's arguments filed 9/19/2025 have been fully considered but they are not persuasive.
The applicant’s arguments have been fully considered but do not overcome the prima facie case of obviousness established by the combination of Byrne and Phillips.
In response to applicant’s argument that Byrne fails to teach attachment of the lash extension to the underside of natural lashes, instead attaching lash subassemblies to the eyelid. This distinction is not persuasive. The attachment location constitutes a matter of design choice. A person of ordinary skill in the art would have found it obvious to modify Byrne to attach the lash apparatus to the underside of the lashes, especially in view of Phillips, which provides additional guidance on artificial lash application techniques. Such a modification would have been within the skill of the ordinary artisan and does not result in a non-obvious difference over the prior art combination. Furthermore, prior art submitted by Examiner and Applicant have shown the technique of attaching lash extension to the underside of natural lashes is well known and readily practiced.
In response to applicant’s argument that Phillips does not teach joining hairs via heat application. This is inaccurate. Phillips explicitly teaches a plastic base material that fuses when subjected to heat, thereby securely holding the lash strands in place (Phillips, Col. 2–3, lines 44–1). While the applicant attempts to distinguish the reference based on an example involving parallel hairs, such an arrangement is merely exemplary. A person of ordinary skill in the art would readily recognize that the use of heat to join synthetic fibers is broadly applicable and not limited to a specific hair orientation. The claimed joining method is therefore taught or suggested by Phillips.
In response to applicant’s argument that Phillips does not disclose a “plurality of groupings of hairs.” This argument is unpersuasive. Phillips discloses multiple eyelash hairs, and it would have been readily apparent to one of ordinary skill in the art that such hairs could be arranged in groupings. Moreover, Byrne explicitly discloses multiple “lash subassemblies,” which are reasonably understood as groupings of hairs. When combined, the teachings of Byrne and Phillips would lead a skilled artisan to the claimed arrangement without undue experimentation.
In response to applicant’s argument that the claims should not be treated as product by process is persuasive, however, claims still stand rejected under Byrne in view of Phillips.
The applicant’s reliance on In re Garnero and In re Nordt Dev. Co. is misplaced. Those cases involved process limitations that gave rise to specific, verifiable structural characteristics integral to the claimed inventions. In contrast, the applicant has not shown that the claimed joining process results in any distinctive or non-obvious structural configuration. Accordingly, the cited precedent does not support the applicant’s position. References to rulings from district court proceedings involving related patents are not controlling in the context of patent examination. The patentability of the present claims must be evaluated independently, based on the prior art of record and the specific claim limitations, rather than litigation outcomes or claim interpretations in unrelated proceedings.
For the foregoing reasons, the rejection of claims 1–20 under 35 U.S.C. § 103 is maintained. The applicant’s arguments do not overcome the prima facie case of obviousness established by the combination of Byrne and Phillips.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
10/6/2025