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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Information Disclosure Statement
The information disclosure statement filed 03/26/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claim 1 is objected to because of the following informalities:
In lines 8-9, “to bond the layers together bonds together the layers of said liner” should be amended as follows “to bond the first and second layers together ”.
In lines 10-12, “in which said front portion has a first radius of curvature and said rear portion has a second radius of curvature that is not the same as said first radius of curvature” should be amended as “in which said .
Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-2, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Constantin et al. (WO2014/013150) in view of GFH (DE20016993U1) and Romm (US2015/0230532).
Regarding claims 1 and 14, Constantin discloses a comfort (“comfort accessory”, refer to Page 3, Paragraph 5) liner (2, Figures 1-5) dimensioned to fit on just a crown portion of a user's head (“possible to cover only…the parietal portion of the skull”, refer to Page 5, last paragraph) under a wig (“configured to be arranged under said wig”, thereby lining the wig, refer to the Abstract) and having a generally domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1), wherein said liner comprises:
(a) a first layer (21, Figure 4) and a second layer (22, Figure 4), each layer comprising a moisture-absorbent fabric (“the inner 21 and outer 22 faces of the cap 2 may be made be made of an absorbent material”, refer to Page 5, Paragraph 3) or a silk that has been stretched into said domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1), each layer, having a perimeter (“periphery having a shape adapted to the shape of the skull of the wearer”, refer to the last paragraph of Page 3; additionally refer to Figure 4 which shows both layers extending to the periphery) with a front portion (portion oriented toward a front of a user’s head during use) having a first radius of curvature (“circular in shape”, refer to Page 5, last paragraph) and a rear portion (portion oriented toward a rear of a user’s head during use) having a second radius of curvature (“circular in shape”, refer to Page 5, last paragraph).
The claimed phrase “stretched” is being treated as a product by process limitation; that is the comfort liner has a domed shape that was formed by a method involving stretching the liner over a head form, as detailed in the specification of the instant invention at paragraph [0032]. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
Constantin does not disclose:
(b) flexible, cured, silicone elastomer disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the first and second layers together wherein said silicone elastomer reinforces said perimeter and helps to retain the domed shape of said liner.
Constantin also does not disclose wherein said liner has a compound shape in which said second radius of curvature is not the same as said first radius of curvature,
wherein said first radius of curvature is within a range from 5-13 cm or 8-12 cm, wherein said second radius of curvature is within a range from 14-21 cm or 16-21 cm. Rather, Constantin discloses that the shape of the liner is “circular” (see Page 5, last paragraph); however, Constantin discloses different embodiments of the liner, having different shapes (see Figures 3 and 5), with different radii of curvature (see Figure 5 wherein side 20D is depicted as having a higher radius of curvature than side 20C) thereby demonstrating that modifying the shape of the liner, including the curvatures thereof, is within the scope of the invention.
GFH discloses a similar device (1, Figures 1-4) worn on a user’s scalp in conjunction with a wig (“a mount for a hair replacement part, in particular a wig”, refer to Page 1), the device comprising a first layer (2, Figure 3) and a second layer (9, Figure 3), wherein a flexible (“silicone rubber”, refer to Page 3, Paragraph 3; where silicone rubber is a flexible material), cured, silicone elastomer (“silicone rubber”, refer to Page 3, Paragraph 3) is applied to both the first and second layer (see Figure 3, wherein coating 6 is on both sides and in-between the first and second layer) and disposed along substantially the entire perimeter (6 + 7 + 8 defines the coating/silicone elastomer which extends along substantially the entire perimeter, as best shown in Figure 1, and is shown to be on both sides/inside and outside of the liner as best shown in Figures 2-4; additionally, refer to Page 2, last paragraph which states “A mounting can also have two or more coated partial surfaces, the first partial surface being arranged in the front area and the second partial surface in the rear area of the mounting”) of said liner on an inner side (best shown in Figures 3 and 4 wherein the inner/bottom side is depicted as having the coating thereon) and an outer side (referring to Figure 3, the outer/top side is depicted as having the coating thereon) of said liner and penetrates into said first layer (see Figure 3) and said second layer (see Figure 3) to bond the first and second layers together (“The fabric 9 is connected in one piece to the net-like carrier 2 via the coating 6”, refer to Page 4, 7th paragraph) wherein said silicone elastomer reinforces said perimeter (since the coating slightly increases a thickness of the liner it helps to reinforce the liner at the perimeter) and helps to retain the domed shape of said liner (“The coated partial area 6, which has been impregnated with a silicone material, can be stretched like a rubber and then elastically returns to its original state”, refer to Page 4, i.e. since the silicone permits stretching, then elastically returning, it serves in helping to retain its original shape, that original shape being a dome). GFH provides the silicone rubber perimeter in order to reduce the chance of “accidental loosening or slipping” (refer to Page 3, Paragraph 1) and “ensure a good fit and a firm seat” (refer to Page 4). Further, GFH provides the coating through both layers to simplify the application of the coating (“the carrier is coated on both sides. This not only provides better mechanical strength, but also makes it particularly easy to apply…by soaking both sides”, refer to Page 2, Paragraph 4). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Constantin’s liner such that a flexible, silicone elastomer is disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the first and second layers together wherein said silicone elastomer reinforces said perimeter and helps to retain the domed shape of said liner, as taught by GFH, since such a modification provides the advantage of reducing the likelihood of slipping of the liner and of ensuring a good fit and a firm seat.
The claimed phrase “cured” is being treated as a product by process limitation; that is the silicone elastomer is prepared via a curing process. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps, i.e. a finally formed silicone elastomer affixed to the periphery of the liner. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
The combination of Constantin and GFH does not disclose wherein said liner has a compound shape in which said second radius of curvature is not the same as said first radius of curvature, or wherein said first radius of curvature is within a range from 5-13 cm or 8-12 cm, wherein said second radius of curvature is within a range from 14-21 cm or 16-21 cm. Rather, the combination discloses that the liner is substantially circular (see Constantin Page 5, last paragraph); however, the combination does disclose different shaped liners (see Constantin Figures 3-4), thereby demonstrating that modifying the shape of the liner is within the scope of the invention.
Romm discloses a device worn about a user’s scalp (Figures 1A-12) comprising a liner (802) wherein the device may have different shapes (refer to Figures 3 and 10) in order to accommodate wigs having different shaped/hairstyles (refer to Paragraphs [0056-0077] which describes each of the different shapes) including a shape where the front portion (top half of “rounded hexagon” shape, refer to Figure 3 OR top curvature of Figure 10) has a first radius of curvature (see the “rounded hexagon” shape in Figure 3 OR the top curvature of Figure 10) and the rear portion (bottom half of “rounded hexagon” shape, refer to Figure 3 OR bottom half of Figure 10) has a second radius of curvature (see the “rounded hexagon” shape in Figure 3 OR bottom half of Figure 10) that is greater than said first radius of curvature (referring to the “rounded hexagon” shape of Figure 3 and the image of Figure 10, the second radius of curvature is depicted as being more flat that the first radius of curvature and is therefore greater than the first radius of curvature). Although the drawings may not be to scale, they can still be relied upon for teaching the general conditions of the claim because the overall relationship is depicted. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin and GFH, such that said liner has a second radius of curvature that is greater than the first radius of curvature, as taught by Romm, since such a modification would have involved combining prior art elements according to known methods to yield the predictable result of providing a liner that can accommodate different shaped hair pieces in order to achieve a desired styling affect.
The combination of Constantin, GFH, and Romm does not expressly disclose said first radius of curvature is within a range from 5-13 cm or 8-12 cm, or wherein said second radius of curvature is within a range from 14-21 cm or 16-21 cm. There is no evidence of record that establishes that changing the radii of curvature would result in a difference in function of the device of the combination of Constantin, GFH, and Romm. Further, a person having ordinary skill in the art, being faced with modifying the liner of the combination of Constantin, GFH, and Romm, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended given the claimed radii. Lastly, applicant has not disclosed that the claimed ranges solve any stated problem, indicating that the radii may “not necessarily” (refer to Paragraph [0030] of the instant specification) be the same and that the first radius of curvature may be smaller than the second radius of curvature (refer to Paragraph [0030]) and that the claimed ranges are “preferred” (refer to Paragraph [0034]) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, GFH, and Romm, to have the radii of curvature to be within the claimed ranges, as an obvious matter of design choice within the skill of the art.
Regarding claim 2, the combination of Constantin, GFH, and Romm disclose a comfort liner according to claim 1, as applied above. The combination does not thus far disclose wherein the first layer comprises 1-100 wt% lyocell based on fabric weight. The combination does however disclose that the first layer may be “of a material based on microfibers comprising between 60% and 90% polyester and between 10% and 40% polyamide…or a material chosen from the following family: bamboo fibers, sponge, cotton” (refer to Constantin Page 3, Paragraphs 10 and 11), thereby demonstrating that the material of construction may be synthetic or natural and may be modified as a matter of design choice.
Romm discloses that the liner may be formed of a number of materials including lyocell (refer to Romm Paragraph [0039], which states that the liner may be formed of Tencel, where Tencel is a trademark for lyocell) to form a soft barrier for the user’s scalp (refer to Romm Paragraph [0039]). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the liner of the combination of Constantin, GFH, and Romm such that the first layer comprises lyocell, as taught by Romm, since such a modification would have involved combining prior art elements according to known methods to yield the predictable result of providing a comfort liner for a user’s head that provides a soft barrier.
The combination of Constantin, GFH, and Romm does not explicitly disclose that the lyocell is present in an amount of 1-100 wt% based on fabric weight, as required by the claim. There is no evidence of record that establishes that changing the weight percent of lyocell would result in a difference in function of the device of the combination of Constantin, GFH, and Romm. Further, a person of ordinary skill in the art, being faced with modifying the liner of the combination of Constantin, GFH, and Romm, would have a reasonable expectation of success in making such a modification and it appears that the liner would function as intended being given the claimed weight percentages. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the weight percentage may be in a very large/broad range of 1-100% and offers other ranges that are merely preferable (refer to Paragraph [0017] of the instant specification) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the weight percentage of the amount lyocell to be between 1-100 wt% based on fabric weight, as an obvious matter of design choice within the skill of the art.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Constantin, GFH, and Romm as applied to claim 1 above, and further in view of Nam (KR20190129392A).
Regarding claim 5, Constantin, GFH, and Romm discloses a comfort liner according to claim 1, as applied above. The combination does not disclose wherein said silicone is also disposed on said liner along a path that is offset from, and substantially parallel to, said front edge.
Nam discloses a similar liner (200a, Figure 6) having a front edge (top edge with respect to Figure 6) comprising a fabric portion (30) that has an elastomeric portion (41 + 50) disposed about a perimeter thereof (refer to Figure 6), this elastomeric portion being analogous to the silicone portion of the combination of Constantin, GFH, and Romm, and a second, duplicate elastomeric portion (40) disposed along a path (refer to Figure 6, wherein the second elastomeric portion follows a curved path along a center of the oval shape defined by 40) offset from the perimeter and substantially parallel to the front edge (refer to Figure 6, wherein the two elastomeric portions are offset and do not intersect with one another), where the additional layer of elastomer is provided in order to permit the liner to be “more firmly fixed by expanding the contact area”, (refer to Page of the translation). It would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, GFH, and Romm such that the elastomeric portion disposed about the perimeter of the liner is duplicated, as taught by Nam, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art; additionally, such a modification provide the advantage of ensuring a more firmly fixed connection between the liner and a wig by increasing the contact area therebetween. Modifying the liner of the combination of Constantin, GFH, and Romm to have a duplicate elastomeric area, as taught by Nam provides a liner having silicon also disposed on said liner along a path that is offset from, and substantially parallel to, said front edge since the elastomeric material in the liner of the combination of Constantin, GFH, and Romm is silicone.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Constantin (WO2014/013150) in view of Romm (US2015/0230532), GFH (DE20016993U1) and LeBeau (US2019/0125019).
Regarding claim 17, Constantin discloses a comfort (“comfort accessory”, refer to Page 3, Paragraph 5) liner (2, Figures 1-5) dimensioned to fit on just a crown portion (“possible to cover only…the parietal portion of the skull”, refer to Page 5, last paragraph) of a user's head under a wig (“configured to be arranged under said wig”, thereby lining the wig, refer to the Abstract) and having a generally domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1), said liner comprising:
(a) a first layer (21, Figure 4) of a continuous (the layers are formed by cutting “a piece of material”, refer to Page 5, 4th full paragraph, where a piece of material is a continuous body), integral (per Dictionary.com, integral is defined as “entire; complete; whole”, the first layer of material defines the entire, complete, whole first layer and is therefore integral) piece of a moisture-absorbent fabric (“the inner 21 and outer 22 faces of the cap 2 may be made be made of an absorbent material”, refer to Page 5, Paragraph 3) stretched into a domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1) and that exhibits a perimeter shape in which a front edge has a first radius of curvature (“circular in shape”, refer to Page 5, last paragraph) and a rear edge has a second radius of curvature (“circular in shape”, refer to Page 5, last paragraph) and (b) a second layer (22, Figure 4).
Constantin does not disclose that the perimeter shape is a compound shape, wherein the second radius of curvature is greater than the first radius of curvature. Rather, Constantin discloses that the shape of the liner is “circular” (see Page 5, last paragraph); however, Constantin discloses different embodiments of the liner, having different shapes (see Figures 3 and 5), with different radii of curvature (see Figure 5 wherein side 20D is depicted as having a higher radius of curvature than side 20C) thereby demonstrating that modifying the shape of the liner, including the curvatures thereof is within the scope of the invention.
Constantin also does not disclose that the second layer comprises silk, or that a medical grade, flexible, silicone elastomer is disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the layers together and reinforce said perimeter and help to retain the domed shape of said liner. Constantin does however disclose that the first layer may be “of a material based on microfibers comprising between 60% and 90% polyester and between 10% and 40% polyamide…or a material chosen from the following family: bamboo fibers, sponge, cotton” (refer to Constantin Page 3, tenth and eleventh paragraphs), thereby demonstrating that the material of construction may be synthetic or natural and may be modified as a matter of design choice.
Romm discloses a similar device worn about a user’s scalp (Figures 1A-12) comprising a liner (802) wherein the device may have different shapes (refer to Figures 3 and 10) in order to accommodate wigs having different shapes/hairstyles (refer to Paragraphs [0056-0077] which describes each of the different shapes) including a shape where the front portion (top half of “rounded hexagon” shape, refer to Figure 3 OR top curvature of Figure 10) has a first radius of curvature (see the “rounded hexagon” shape in Figure 3 OR the top curvature of Figure 10) and the rear portion (bottom half of “rounded hexagon” shape, refer to Figure 3 OR bottom half of Figure 10) has a second radius of curvature (see the “rounded hexagon” shape in Figure 3 OR bottom half of Figure 10) that is greater than said first radius of curvature (referring to the “rounded hexagon” shape of Figure 3 and the image of Figure 10, the second radius of curvature is depicted as being more flat that the first radius of curvature and is therefore greater than the first radius of curvature). Romm also discloses the use of silk (refer to Paragraph [0006]), as a known material for use in head coverings that is natural and hypoallergenic, thereby reducing the risk of irritating the user’s scalp or growing mold. Although the drawings may not be to scale, they can still be relied upon for teaching the general conditions of the claim because the overall relationship is depicted. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Constantin’s liner such that the perimeter is a compound shape having a second radius of curvature greater than the first radius of curvature, as taught by Romm, since such a modification would have involved combining prior art elements according to known methods to yield the predictable result of providing a liner that can accommodate different shaped hair pieces in order to achieve a desired styling affect.
It would have additionally been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Constantin’s liner such that the second layer comprises silk, since Romm teaches that silk is a known material for use in liners, and 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 design choice, in this instance, the silk material is a natural and hypoallergenic material that can be used without concern of irritating a user’s scalp or of growing mold.
The combination of Constantin, and Romm does not disclose that a medical grade, flexible, silicone elastomer is disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the layers together and reinforce said perimeter and help to retain the domed shape of said liner.
GFH discloses a similar device (1, Figures 1-4) worn on a user’s scalp in conjunction with a wig (“a mount for a hair replacement part, in particular a wig”, refer to Page 1, first full sentence), the device comprising a first layer (2, Figure 3) and a second layer (9, Figure 3), wherein a flexible (“silicone rubber”, refer to Page 3, Paragraph 3; where silicone rubber is a flexible material), cured, silicone elastomer (“silicone rubber”, refer to Page 3, Paragraph 3) is applied to both the first and second layer (see Figure 3, wherein coating 6 is on both sides and in-between the first and second layer) and disposed along substantially the entire perimeter (6 + 7 + 8 defines the coating/silicone elastomer which extends along substantially the entire perimeter, as best shown in Figure 1, where portions 6 and 7 are shown to be on both sides/inside and outside of the liner as best shown in Figures 2-4) of said liner on an inner side (refer to Figure 3 wherein the inner/bottom side is depicted as having the coating thereon) and an outer side (referring to Figure 3, the outer/top side is depicted as having the coating thereon) of said liner and penetrates into said first layer (see Figure 3) and said second layer (see Figure 3) to bond the first and second layers together (“The fabric 9 is connected in one piece to the net-like carrier 2 via the coating 6”, refer to Page 4, 7th paragraph) wherein said silicone elastomer reinforces said perimeter (since the coating slightly increases a thickness of the liner it helps to reinforce the liner at the perimeter) and helps to retain the domed shape of said liner (“The coated partial area 6, which has been impregnated with a silicone material, can be stretched like a rubber and then elastically returns to its original state”, refer to Page 4, i.e. since the silicone permits stretching, then elastically returning, it serves to retain its original shape, that original shape being a dome). GFH provides the silicone rubber perimeter in order to reduce the chance of “accidental loosening or slipping” (refer to Page 3, Paragraph 1) and “ensure a good fit and a firm seat” (refer to Page 4, Paragraph 5). Further, GFH provides the coating through both layers to simplify the application of the coating (“the carrier is coated on both sides. This not only provides better mechanical strength, but also makes it particularly easy to apply…by soaking both sides”, refer to Page 2, Paragraph 4). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin and Romm such that a flexible, silicone elastomer is disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the first and second layers together wherein said silicone elastomer reinforces said perimeter and helps to retain the domed shape of said liner, as taught by GFH, since such a modification provides the advantage of ensuring a good fit and a firm seat.
The combination of Constantin, Romm, and GFH does not disclose that the silicone is medical grade.
LeBeau discloses a device to be worn about a user’s head (100, Figures 1-45) for supporting false hairs/wig, the device comprises an elastomer that contacts the user’s scalp, wherein that elastomer is medical grade silicone (refer to Paragraph [0079]) and that an entire periphery of the device may be formed of polyurethane or of the same medical-grade silicone (refer to Paragraphs [0086-0087]), wherein silicone is a flexible material that does not irritate the user’s scalp (refer to Paragraph [0079]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, Romm, and GFH such that elastomer is medical-grade silicone that is flexible, as taught by LeBeau, since such a modification would have involved combining prior art elements according to known methods to achieve the predictable result of a wig liner that is sufficiently retained on a user’s head without irritating the user’s scalp.
Regarding claims 18-19, the combination of Constantin, Romm, GFH, and LeBeau discloses a comfort liner according to claim 17 wherein said first radius of curvature is within a range from about 5-13 cm and said second radius of curvature is within a range from about 14-21 cm.
The combination of Constantin, GFH, Romm, and LeBeau does not expressly disclose said first radius of curvature is within a range from 5-13 cm or 8-12 cm, wherein said second radius of curvature is within a range from 14-21 cm or 16-21 cm. There is no evidence of record that establishes that changing the radii of curvature would result in a difference in function of the device of the combination of Constantin, Romm, GFH, and LeBeau. Further, a person having ordinary skill in the art, being faced with modifying said liner, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended given the claimed radii. Lastly, applicant has not disclosed that claimed ranges solves any stated problem, indicating that the radii may “not necessarily” (refer to Paragraph [0030] of the instant specification) be the same and that the first radius of curvature may be smaller than the second radius of curvature (refer to Paragraph [0030]) and that the claimed ranges are “preferred” (refer to Paragraph [0034]) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, Romm, GFH, and LeBeau, to have the radii of curvature to be within the claimed ranges, as an obvious matter of design choice within the skill of the art.
Regarding claim 20, Constantin discloses a comfort (“comfort accessory”, refer to Page 3, Paragraph 5) liner (2, Figures 1-5) dimensioned to fit on just a crown portion of a user's head (“possible to cover only…the parietal portion of the skull”, refer to Page 5, last paragraph) under a wig (“configured to be arranged under said wig”, thereby lining the wig, refer to the Abstract) and having a generally domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1, where a human scalp is substantially dome shaped), said liner comprising:
(a) a first layer (21, Figure 4) of a continuous (the layers are formed by cutting “a piece of material”, refer to Page 5, 4th full paragraph, where a piece of material is a continuous body; additionally refer to Figures 3-5), integral (per Dictionary.com, integral is defined as “entire; complete; whole”, the first layer of material defines the entire, complete, whole first layer and is therefore integral) piece of a moisture-absorbent fabric (“the inner 21 and outer 22 faces of the cap 2 may be made be made of an absorbent material”, refer to Page 5, Paragraph 3) and a second layer (22, Figure 4) stretched into a domed shape (“cap delimited to by a periphery having a shape adapted to the shape of the skull of the wearer”, refer to Page 3, Paragraph 1; additionally refer to Figure 1), wherein said liner exhibits a perimeter shape in which a front edge (portion oriented toward a front of a user’s head during use) has a first radius of curvature (“circular in shape”, refer to Page 5, last paragraph) and a rear edge (portion oriented toward a rear of a user’s head during use) has a second radius of curvature (“circular in shape”, refer to Page 5, last paragraph).
The claimed phrase “stretched” is being treated as a product by process limitation; that is the comfort liner has a domed shape that was formed by a method involving stretching the liner over a head form, as detailed in the specification of the instant invention at paragraph [0032]. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.
Constantin does not disclose wherein the second layer comprises silk. Constantin does however disclose that the first layer may be “of a material based on microfibers comprising between 60% and 90% polyester and between 10% and 40% polyamide…or a material chosen from the following family: bamboo fibers, sponge, cotton” (refer to Constantin Page 3, tenth and eleventh paragraphs), thereby demonstrating that the material of construction may be synthetic or natural and may be modified as a matter of design choice.
Constantin also does not disclose wherein said liner exhibits a compound perimeter shape with the first radius of curvature in a range of 6-9cm and the second radius of curvature in a range of 14-17cm. Rather, Constantin discloses that the shape of the liner is “circular” (see last paragraph of Page 5); however, Constantin discloses different embodiments of the liner, having different shapes (see Figures 3 and 5), with different radii of curvature (see Figure 5 wherein side 20D is depicted as having a higher radius of curvature than side 20C) thereby demonstrating that modifying the shape of the liner is within the scope of the invention.
Finally, Constantin does not disclose a medical grade, hypoallergenic, flexible, silicone elastomer along substantially the entire perimeter of said liner, wherein said elastomer reinforces said perimeter and bonds together the fabric and silk layers to retain the domed shape of said liner.
Romm discloses a similar device worn about a user’s scalp (Figures 1A-12) comprising a liner (802) wherein the device may have different shapes (refer to Figures 3 and 10) in order to accommodate wigs having different shapes/hairstyles (refer to Paragraphs [0056-0077] which describes each of the different shapes) including a shape where the front portion (top half of “rounded hexagon” shape, refer to Figure 3 OR top curvature of Figure 10) has a first radius of curvature (see the “rounded hexagon” shape in Figure 3 OR the top curvature of Figure 10) and the rear portion (bottom half of “rounded hexagon” shape, refer to Figure 3 OR bottom half of Figure 10) has a second radius of curvature (see the “rounded hexagon” shape in Figure 3 OR bottom half of Figure 10) that is greater than said first radius of curvature (referring to the “rounded hexagon” shape of Figure 3 and the image of Figure 10, the second radius of curvature is depicted as being more flat that the first radius of curvature and is therefore greater than the first radius of curvature). Romm also discloses the use of silk (refer to Paragraph [0006]), as a known material for use in head coverings that is natural and hypoallergenic, thereby reducing the risk of irritating the user’s scalp or growing mold. Although the drawings may not be to scale, they can still be relied upon for teaching the general conditions of the claim because the overall relationship is depicted. It would have additionally been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Constantin’s liner such that the second layer comprises silk, since Romm teaches that silk is a known material for use in liners, and since it has been held that 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 design choice, in this instance, the silk material is a natural and hypoallergenic material that can be used without concern of irritating a user’s scalp or of growing mold.
It would have additionally been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Constantin’s liner such that the perimeter is a compound shape having a second radius of curvature greater than the first radius of curvature, as taught by Romm, since such a modification would have involved combining prior art elements according to known methods to yield the predictable result of providing a liner that can accommodate different shaped hair pieces in order to achieve a desired styling affect.
The combination of Constantin and Romm does not expressly disclose that the first radius of curvature is within a range of 6-9cm and the second radius of curvature is within a range of 14-17cm. There is no evidence of record that establishes that changing the radii of curvature would result in a difference in function of the device of the combination of Constantin and Romm. Further, a person having ordinary skill in the art, being faced with modifying said liner, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended given the claimed angles. Lastly, applicant has not disclosed that the claimed ranges solve any stated problem, indicating that the radii may “not necessarily” (refer to Paragraph [0030] of the instant specification) be the same and that the first radius of curvature may be smaller than the second radius of curvature (refer to Paragraph [0030]) and that the claimed ranges are “preferred” (refer to Paragraph [0034]) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin and Romm, to have the radii of curvature to be within the claimed ranges, as an obvious matter of design choice within the skill of the art.
GFH discloses a similar device (1, Figures 1-4) worn on a user’s scalp in conjunction with a wig (“a mount for a hair replacement part, in particular a wig”, refer to Page 1, first full sentence), the device comprising a first layer (2, Figure 3) and a second layer (9, Figure 3), wherein a flexible (“silicone rubber”, refer to Page 3, Paragraph 3; where silicone rubber is a flexible material), cured, silicone elastomer (“silicone rubber”, refer to Page 3, Paragraph 3) is applied to both the first and second layer (see Figure 3, wherein coating 6 is on both sides and in-between the first and second layer) and disposed along substantially the entire perimeter (6 + 7 + 8 defines the coating/silicone elastomer which extends along substantially the entire perimeter, as best shown in Figure 1, where portions 6 and 7 are shown to be on both sides/inside and outside of the liner as best shown in Figures 2-4) of said liner on an inner side (refer to Figure 3 wherein the inner/bottom side is depicted as having the coating thereon) and an outer side (referring to Figure 3, the outer/top side is depicted as having the coating thereon) of said liner and penetrates into said first layer (see Figure 3) and said second layer (see Figure 3) to bond the first and second layers together (“The fabric 9 is connected in one piece to the net-like carrier 2 via the coating 6”, refer to Page 4, 7th paragraph) wherein said silicone elastomer reinforces said perimeter (since the coating slightly increases a thickness of the liner it helps to reinforce the liner at the perimeter) and helps to retain the domed shape of said liner (“The coated partial area 6, which has been impregnated with a silicone material, can be stretched like a rubber and then elastically returns to its original state”, refer to Page 4, i.e. since the silicone permits stretching, then elastically returning, it serves to retain its original shape, that original shape being a dome). GFH provides the silicone rubber perimeter in order to reduce the chance of “accidental loosening or slipping” (refer to Page 3, Paragraph 1) and “ensure a good fit and a firm seat” (refer to Page 4, Paragraph 5). Further, GFH provides the coating through both layers to simplify the application of the coating (“the carrier is coated on both sides. This not only provides better mechanical strength, but also makes it particularly easy to apply…by soaking both sides”, refer to Page 2, Paragraph 4). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin and Romm such that a flexible, silicone elastomer is disposed along substantially the entire perimeter of said liner on an inner side and an outer side of said liner and penetrates into said first layer and said second layer to bond the first and second layers together wherein said silicone elastomer reinforces said perimeter and helps to retain the domed shape of said liner, as taught by GFH, since such a modification provides the advantage of ensuring a good fit and a firm seat.
The combination of Constantin, Romm, and GFH does not disclose that the silicone is medical grade.
LeBeau discloses a device to be worn about a user’s head (100, Figures 1-45) for supporting false hairs/wig, the device comprises an elastomer that contacts the user’s scalp, wherein that elastomer is medical grade silicone (refer to Paragraph [0079]) and that an entire periphery of the device may be formed of polyurethane or of the same medical-grade silicone (refer to Paragraphs [0086-0087]), wherein silicone is a flexible material that does not irritate the user’s scalp (refer to Paragraph [0079]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, Romm, and GFH such that elastomer is medical-grade silicone that is flexible, as taught by LeBeau, since such a modification would have involved combining prior art elements according to known methods to achieve the predictable result of a wig liner that is sufficiently retained on a user’s head without irritating the user’s scalp.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Constantin, Romm, GFH and LeBeau as applied to claim 20 above, and further in view of Xing (JP6231181B1).
Regarding claim 21, the combination of Constantin, Romm, GFH, and LeBeau discloses a comfort liner according to claim 20, as applied above. The combination does not disclose the liner further comprising an orientation aid on a front or rear surface of said liner.
Xing discloses a similar device (2, Figure 2) to be worn about a user’s scalp for the attachment of hairs thereto, wherein the rear (bottom half, refer to Figure 2g) surface comprises a decorative element (butterfly depicted in Figure 2) fully capable of being used as an orientation aid, to increase the aesthetics of the device. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of the combination of Constantin, Romm, GFH and LeBeau to have a decorative element such as a butterfly, as taught by Xing, since such a modification provides the advantage of increasing the aesthetics of the liner. Providing a decorative element on the liner also provides an indication to the user on how the liner is oriented since the decorative element is disposed in only one location on the liner.
Response to Arguments
Claim Objections
Applicant’s amendments to the claims overcome all previous claim objections; all previous claim objections are withdrawn.
Argument #1:
The limitation “stretched” imparts a structure and cannot be treated as product by process.
Response #1:
Applicant describes stretching as a step in the manufacturing process (see Paragraph [0032] of the instant specification) as a means to impart a dome shape to the liner, i.e. the resultant structure of the stretching is a liner having a dome shape. If applicant requires some particular unique structure of the liner that is imparted by a stretching, e.g. a particular mesh size or spacing between threads of fabric, or a particular tension of the fabric, it is suggested to positively claim that particular structure. Applicant argues (see page 13 of the remarks) that stretching speaks to the tension on the material in its final shape; however, the specification never mentions tension at all, nor any particular degree of tension within the material but rather, that the material is stretched over a head form during manufacturing in order to form the dome shaped liner, i.e. the stretching is an intermediate step performed while manufacturing the finished product and it does not appear, based on the originally filed disclosure that any particular tension is imparted to the liner since tension nor any degree thereof is ever actually disclosed or discussed. Further, the instant specification recites that the base layer is formed of a material having “good…elasticity” (refer to Paragraph [0011] of the instant specification). An elastic material, when stretched under force, say while being affixed to a head form during manufacturing, will return to its original shape/unstretched state once that force is removed. Thus, it is not evident in light of the specification that any post-manufacturing tension is imparted to the liner.
Argument #2:
Obviousness does not allow hindsight reconstruction.
Response #2:
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Argument #3:
The examiner has not made an express determination regarding the skill level of a person who might be considered one having an “ordinary” level of skill (PHOSITA). An inspection of the references cited by the examiner shows that the level of ordinary skill in this art is relatively low, practical, and experienced-based rather than with formal training.
Response #3:
The level of skill in the art of wig making and accessories for wigs/liners varies widely and may include individual inventors that create custom products for their personal use, to professional hair stylists, to large companies such as Aderans Co. Ltd., to which multiple patents have been granted. Due to the consumer oriented nature of wigs and wig liners, it is expected that “relatively low” skill individuals would constitute a portion of the inventors in this field but these individuals do not solely/entirely define PHOSIT. Per applicant’s own arguments, one of ordinary skill “is not an automaton” and “will be able to fit the teachings of multiple patents together like a puzzle”. The instant claims include limitations to material and dimensional design choices that would be obvious to one of ordinary skill/creativity.
Applicant’s arguments with respect to Sutton (US2018/0064194) and Kim (US2023/0232924), on pages 7-8 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.
Argument #4:
Nam does not teach a multilayer device that has been stretched into shape nor an elastomeric material around the perimeter for bonding together the layers AND reinforcing the perimeter to retain the domed shape.
Response #4:
Nam is not being relied upon for these teachings.
Argument #5:
There would be no need to modify Romm to have a perimeter elastomer to hold layers together.
Response #5:
Romm is not being relied upon for this teaching.
Argument #6:
LeBeau does not teach a liner that is dimensioned just to fit on a user’s crown. There would be no reason to modify LeBeau to have elastomeric silicone for bonding.
Response #6:
LeBeau is not being relied upon for this teaching.
Conclusion
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/SARAH WOODHOUSE/Examiner, Art Unit 3772