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 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 8-16 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 8 requires an artificial color of the nail; however, it is unclear how such an artificial color is provided. The claim appears to be missing a required step of attaching an artificial color layer to a natural nail, where the artificial color layer is configured to change color when exposed to a color-changing stimulus and then the applying step should require applying the color changing stimulus to the artificial color layer to change the color.
Claim 10 requires the nail have a microchip, where it is unclear how a microchip is integrated or otherwise provided on a nail of a user. There appears to be a step missing in the method to account for how the nail comprises a microchip, as nails do not naturally comprise a microchip. Based on the disclosure, it is believed the claim requires amendments to require an artificial nail comprising a microchip be attached to a user’s natural nail where the microchip receives the voltage corresponding to the selected color to change the artificial color of the nail.
Claim 15 requires the nail comprise a color-changing material where it is unclear if this material is the same or different from the artificial color recited in claim 8. The claims appear to be missing a required step of attaching an artificial color layer (whether it be in the form of a polish, gel, or artificial nail) to a natural nail, where the color changing stimulus is applied to the artificial color layer.
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 8-12 and 15-16 as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Farber et al. (WO 2011126575A2) and Lee (WO 2020209585).
Regarding claim 8, the term “nail” in the claim is interpreted to include artificial nails and natural or artificial nails with coatings (e.g. nail polish, UV gel coatings, etc.) applied thereto, where the artificial nails and/or coatings applied to the natural or artificial nail change color. Farber et al. disclose a method for changing nail color, comprising:
selecting, via a software application on a computing device (26, or smartphone, pda, portable computer, etc.), a color from a color palette comprising a plurality of color options (Refer to paragraphs 0026 and 0030);
transmitting from the computing device an electronic signal to an electronic device (16), wherein the electronic signal identifies the selected color (Refer to paragraphs 0026 and 0030);
applying a color-changing stimulus to a nail of a user via the electronic device to change an artificial color of the nail to the selected color, wherein the nail is inserted into a housing of the electronic device configured to surround the nail and applying the color-changing stimulus to the nail of the user via the electronic device (Refer to Figure 6, paragraphs 0021-0022, 0027, and 0030).
However, Farber et al. do not disclose the housing of the electronic device being configured to completely surround the nail and all sides of a part of the finger inserted into the housing such that the electronic device is exclusively supported by the finger of the user. Although, the housing of Faber et al. only engages and surrounds a portion of the nail, it is well known and conventional for such housings to have various forms/configurations which include configurations which surround and enclose the nail and all sides of a portion of the finger so as to be supported by the finger, as demonstrated by Lee. The electronic device of Lee provides a housing into which a user’s nail and portion of the finger are inserted during use to subject the nail to a stimulus, where the housing is designed to completely surround the nail and all sides of the part of the finger that is inserted into the housing such that the electronic device is exclusively supported by the finger (Refer to Figures 1-10). 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 housing of the electronic device of Farber et al. such that the housing be configured to completely surround the inserted part of the finger and the nail such that the device is exclusively supported by the finger (worn on the finger) as taught by Lee in order to provide additional support of the device during use which also improves comfort to the user.
Regarding claim 9, the combination of Farber et al. and Lee disclose the method of claim 8 above, wherein Faber et al. further disclose the functional stimulus comprises a voltage corresponding to the selected color (Refer to paragraphs 0008, 0021 and claim 2).
Regarding claim 10, the combination of Farber et al. and Lee disclose the method of claim 9 above, wherein Faber et al. further disclose the nail comprises a microchip to receive the voltage (Refer to paragraph 0022 which list various materials provided on the nail which require a microchip such as a nanochromic display, e.g. printed electronic display on flexible substrate materials and an interferometic modulator).
Regarding claim 11, the combination of Farber et al. and Lee disclose the method of claim 8 above, wherein Faber et al. further disclose the functional stimulus comprises application of heat at a temperature corresponding to the selected color (Refer to paragraph 0022 section e, which discloses use of photochromic materials which change state/color in response to heat or light, meaning the stimulus required is heat or light).
Regarding claim 12, the combination of Farber et al. and Lee disclose the method of claim 8 above, wherein Faber et al. further disclose the functional stimulus comprises application of light at a wavelength corresponding to the selected color (Refer to paragraphs 0008 and 0022 section e and claim 9).
Regarding claims 15 and 16, the combination of Farber et al. and Lee the method of claim 8 above, wherein Faber et al. further disclose the nail comprises a color-changing material wherein the color-changing material comprises one of color-changing nanoparticles, a color-changing pigment and a color-changing dye (Refer to 0010 (color changing dyes), paragraph 0021 (“liquid crystal particles” of “nano-size”), paragraph 0022 (photochromic materials are color-changing pigments, REED requires color changing dye, electro fluidic uses colored ink which is a pigment or dye, etc.).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Farber et al. and Lee as applied to claim 8 above, and further in view of Thevenet et al. (US 20130160785).
Regarding claims 13 and 14, the combination of Farber et al. and Kergosein et al. disclose the method of claim 8 above; however, the combination does not disclose the functional stimulus comprises application of a stress at a level corresponding to the selected color where the stress comprises a pressure. Farber et al. disclose using different materials on the nail which respond to different functional stimuli, such as voltage, current, electromagnetic waves, heat and light (Refer to paragraphs 0021-0022). Thevenet et al. disclose a similar color changing method involving applying a color-changing composition to the nails, hair, skin, etc. (Refer to paragraphs 0030-0035) and exposing it to a functional stimulus to cause the color change, where the functional stimulus may be light, heat or mechanical action (Refer to paragraph 0036-0037). With regard to those compositions requiring mechanical action as the functional stimulus, Thevenet et al. provides examples such as mechanoluminescent agents which respond to mechanical stress such as compression, shear or friction (Refer to paragraph 0376-0384) and piezoelectric or tirbochromic agents (Refer to paragraphs 0369-0372). 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 method of the combination of Farber et al. and Lee such that the functional stimulus comprise application of pressure as the combination permits the use of various different functional stimuli and Thevenet et al. demonstrate pressure/stress is an art-recognized functionally equivalent functional stimulus for changing the color of a nail.
Claim 8-10, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kergosien et al. (US 20120152273) and Li et al. (US 20110139167)
Regarding claim 8, the term “nail” in the claim is interpreted to include artificial nails and natural or artificial nails with coatings (e.g. nail polish, UV gel coatings, etc.) applied thereto, where the artificial nails and/or coatings applied to the natural or artificial nail change color. Kergosien et al. disclose a method for changing nail color, comprising: selecting, via a software application on a computing device, a color from a color palette comprising a plurality of color options and transmitting from the computing device an electronic signal to an electronic device (300,415), wherein the electronic signal identifies the selected color (Refer to paragraphs 0170-0171, 0175, 0217-0220, 0248, which explain that the color-changing artificial nail receives information which programs operation, e.g. controls color-changing stimulus, where such instruction is required to be provide by software of a computing device);
applying a color-changing stimulus to a nail of a user via the electronic device to change an artificial color of the nail to the selected color, wherein the nail is inserted into a housing of the electronic device configured to surround the nail and applying the color-changing stimulus to the nail of the user via the electronic device (Refer to Figures 8-13 and paragraphs 0248-0253, 0264-0265). Kergosien et al. provide an electronic device (300, 415, Refer to Figures 8-9B and 11-12) which apply the color-changing stimulus, where these electronic devices have different configurations. Figures 8-9B provide an electronic device having a housing into which a user’s finger is inserted such that the housing partially surrounds the nail and fingertip, whereas Figures 11 and 12 provide a pen or stylus-type configuration, thereby demonstrating the exact configuration of the electronic device is not limited and may have various configuration so long as the device is able to provide the stimulus and thereby affect the color change desired. Li et al. disclose a electronic nail device (100) which is designed to deliver a stimulus to a nail. Similar to the embodiment of Figures 8-9B of Kergosien et al., the electronic device of Li et al. is designed such that a user inserts their nail and fingertip into the housing (1) of the device. However, the housing (1) of the electronic device of Li et al. completely surrounds the nail and all sides of the fingertip inserted into the housing such that the device is exclusively supported by the finger of the user (Refer to Figures 2, 4, 7, 8, 10, 12). Li et al. teach this finger-supported housing configuration is an alternative to a known configuration where the device is supported on a surface 9e.g. table or desk) and the user’s finger is inserted and supported by the device (Refer to Figure 1), which is similar to how the electronic device of Kergosien et al. is used (Refer to Figures 8-9B). 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 device of Kergosien et al. such that the housing be configured to completely surround the nail and all sides of the part of the finger that is inserted into the housing (fingertip) such that the device is exclusively supported by the finger of the user as Li et al. demonstrates this is an art-recognized equivalent variant housing configuration to that where the finger is inserted and supported by the housing.
Regarding claim 9, the combination of Kergosien et al. and Li et al. disclose the method of claim 8 above, Kergosien et al. further disclose the color-changing stimulus comprises a voltage corresponding to the selected color (Refer to paragraph 0252, 0266, 0160).
Regarding claim 10, the combination of Kergosien et al. and Li et al. disclose the method of claim 8 above, Kergosien et al. further disclose the nail comprises a microchip to receive the voltage (Refer to paragraphs 0161 and 0171).
Regarding claim 15, the combination of Kergosien et al. and Li et al. disclose the method of claim 8 above, Kergosien et al. further disclose the nail comprises a color-changing material (electrochromic material and/or luminescent compound).
Regarding claim 16, the combination of Kergosien et al. and Li et al. disclose the method of claim 8 above, Kergosien et al. further disclose the color-changing material comprises one of color-changing nanoparticles, a color-changing pigment and a color-changing dye (Refer to paragraphs 0045-0048, 0056, 0216-0224, 0228, 0245).
Response to Arguments
Applicant’s arguments with respect to the rejection under Walia have been considered but are moot because the new ground of rejection does not rely on Walia or any matter specifically challenged in the argument.
With regard to the previous rejection under 112(a), Applicant states the one or more color-changing generation techniques of the application are known techniques. Therefore, Applicant admits these techniques are not novel and instead, are conventional and well-known. Applicant states “any known color-changing mechanism can be used with and/or within the novel housing configuration of the electronic device”. Thus, Applicant alleges the novelty of the device lies in the configuration of the housing which is configured to surround the nail and fingertip portion inserted therein and be supported exclusively by the finger (worn on the finger). However, the prior art of record demonstrates such finger-worn housing configurations are well-known and conventional.
It is noted that the response lacks arguments with respect to the previously presented 35 USC 103 rejections where Farber is the primary reference.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Koibuchi (CN 113660882A) discloses a method of changing nail color where the nail is laminated with a nail coating (3,4), a user selects a color using a smartphone and based on the selected color, a signal is transmitted to an electronic device (5) to appropriately adjust the wavelength, the electronic device is used to subject the nail to the wavelength to change the color of the nail to the selected color.
Kwon (US 20210251365) discloses a method of changing nail color where a color-changing artificial nail is attached to a user’s natural nail and an electronic device (200) is selectively engaged with the artificial nail to subject it to a stimulus, in the form of a voltage, to change the color of the artificial nail to a desired/selected color.
Okazaki et al. (JP 2021109030A) disclose a method of changing nail color where a nail part (film) is attached to a user’s natural nail and an electronic device (9) is used to impart a stimulus (voltage) to the nail part to change its color to a user selected color.
Kim et al. (KR 102505338B1) disclose a color-changing sticker which is attached to the user’s natural nail, where the sticker has an electrophoretic layer that changes color when a voltage is applied thereto, via an electronic device (1003).
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 TATIANA L NOBREGA whose telephone number is (571)270-7228. The examiner can normally be reached M-F 8am-4pm.
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
