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.
Claim21-23, 25-33, 40-41, and 45-49 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. The newly filed limitations state, “a non-linear varying cross-sectional shape along its length in an y-direction and a z-direction” the specification does not disclose the unitary casted body having a varying cross-section in both y-direction and z-direction and the drawings do not clearly set forth an embodiment from the unitary cased body as claimed with varying cross-section in the y-direction and z-direction. Page 12 of applicant’s specification states, “Referring now to Figs. 6-11, finished 3-dimensional eyelashes 600 formed using any of the methods described in Figs. 1-5 are illustratively depicted, according to various embodiments of the present invention.” This does not give support for “a unitary casted body that does not resemble a natural eyelash and has a non-linear varying cross-section shape along its length in an y-direction and a z-direction”, furthermore, the Figures are not labeled as to what view is being depicted making it unclear what direction is being shown.
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) 21-23, 25-33, 40-41, and 45-49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2014/0332025) in view of Dinh (US 7,600,519).
Regarding claim 21, Kim et al. disclose an artificial individual eyelash prosthetic comprising, an elongate member (20) comprising a unitary casted body having a varying cross-sectional shape along its length, wherein the elongate member has a proximal end configured to be attached to a user’s eyelid such that the elongate member extends outward and substantially perpendicularly from the user’s eyelid, wherein the elongate member is capable of covering at least a portion of a user’s natural eyelash, wherein a x-direction is from a proximal end to a distal end of the elongate member, the y-direction is from a first side of the elongate member proximate an inner corner of an eye to a second side of the elongate member proximate an outer corner of the eye, and the z-direction is perpendicular to both the y-direction and the x-direction (see Figures 5-7), the y-direction has a non-linear varying cross-section (Figures 2 and 7; tapering eyelashes). Kim et al. does not disclose the z-direction has a varying cross-section. Dinh discloses a unitary casted body having an x-direction, a y-direction and a z-direction that is perpendicular to the x-and y-direction (i.e. thickness); wherein the eyelash has a non-linear varying cross-sectional shape along the y-direction and z-direction (col. 5, lines 50-60) to provide a variety of looks. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash of Kim et al. be of varying cross-sectional shape in the z-direction as taught by Dinh to allow for a variety of eyelash looks.
Regarding claims 22 and 31, the three-dimensional shape comprises an insect leg’s shape (i.e. can be interpreted as a straight line or converge line see Figures 4d).
Regarding claims 23 and 32, the elongate member comprises a three-dimensional shape (30; Figure 4b).
Regarding claim 29, the three-dimensional strip comprises a silhouette, wherein the silhouette is dissimilar form the user’s natural eyelashes (see Figure 7).
Regarding claims 25, 48, and 49, the unitary casted body is formed at least in part from metal (paragraph 51; glitter).
Regarding claim 26, Kim et al. disclose a three-dimensional eyelash strip prosthetic comprising: a unitary casted body comprising: a base (20); and a plurality of elongate members (10) extending from the base in substantially the same direction, each of the elongate members having varying cross-sectional shapes along its length, wherein adjacent elongate member are dissimilar (see Figures 5-7). Kim et al. does not disclose the z-direction has a varying cross-section. Dinh discloses a unitary casted body having an x-direction, a y-direction and a z-direction that is perpendicular to the x-and y-direction (i.e. thickness); wherein the eyelash has a non-linear varying cross-sectional shape along the y-direction and z-direction (col. 5, lines 50-60) to provide a variety of looks. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash of Kim et al. be of varying cross-sectional shape in the z-direction as taught by Dinh to allow for a variety of eyelash looks.
Regarding claims 27, the plurality of elongate members comprises fewer than 10 elongate members (see Figure 7).
Regarding claims 28, the plurality of elongate members comprises greater than 10 elongate members (see Figure 5; paragraph 41).
Regarding claims 30 and 41, the three-dimensional shape comprises part of a flower’s shape (i.e. stem).
Regarding claim 33, Kim et al. disclose three-dimensional eyelash strip prosthetic comprising: a unitary casted body comprising: an arc-shaped base (Figure 3), the arc-shaped base adapted to be attached to a user’s eyelid; and a continuous eyelash portion (Figure 5) extending outward and substantially perpendicularly from the arc-shaped base, wherein the continuous eyelash portion comprises, a distal edge, wherein a perimeter of the distal edge is substantially jagged, and a length substantially equal to a length of the arc-shaped base (see Figures 3-5; paragraph 21). Kim et al. does not disclose the z-direction has a varying cross-section. Dinh discloses a unitary casted body having an x-direction, a y-direction and a z-direction that is perpendicular to the x-and y-direction (i.e. thickness); wherein the eyelash has a non-linear varying cross-sectional shape along the y-direction and z-direction (col. 5, lines 50-60) to provide a variety of looks. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash of Kim et al. be of varying cross-sectional shape in the z-direction as taught by Dinh to allow for a variety of eyelash looks.
Regarding claim 40, the arc-shaped base is configured to be glued to the user’s eyelid (see Figures 5-7).
Regarding claim 45, the unitary casted body is from at least from plastic (paragraphs 45-46).
Regarding claim 46, the unitary casted body is from at least from rubber (paragraphs 45-46).
Regarding claim 45, the unitary casted body is from at least from silicone (paragraphs 45-46).
Regarding claim 47, the unitary casted body is from at least from silicone (paragraphs 45-46).
Response to Arguments
Applicant’s arguments filed 12/16/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s arguments that Kim does not disclose elongate members have dissimilar shapes Kim Figure 7 shows different embodiments with dissimilar shapes.
In response to applicant’s argument that Kim does not disclose “the unitary casted body is formed at least in part from metal” that that the post-process after injection molding the device of Kim is subject to metal. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this instance case the end result of Kim having glitter meets the claim limitation “formed at least in part of metal”.
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.
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
1/26/2026