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 .
Election/Restrictions
Applicant's election with traverse of Invention II, claims 8-16 in the reply filed on 11/18/2025 is acknowledged. The traversal is on the ground(s) that the inventions are believed to be searchable in the same or similar classifications. This is not found persuasive because the inventions require different fields of search (e.g. searching different classifications, employing different strategies or search queries, etc.) and prior art applicable to the device may not be applicable to the method and vice versa. The device claims require searching in classifications which disclose devices which provide a stimulus (heat, light, voltage, pressure, etc.) generating means where the device can be used on a fingertip/nail and this concept is covered in many different search areas; for example, heated gloves (A41D 19/01535) could be applied as prior art to claims 21 and 24 and a nail light therapy device (A61N 2005/0643) could be applied as prior art to claims 21 and 25. There is a serious search and examination burden.
Claims 21-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: functional stimulus in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The disclosure indicates the functional stimulus may be heat, voltage, light and/or stress/pressure.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8-16 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 8-16 require using a software application on a computing device to select a color from a plurality of color options, transmitting an electronic signal from the computing device to an electronic device where the signal identifies the selected color, the electronic device generating a functional stimulus to change the color of a nail to the selected color where the nail is inserted in a housing of the electronic device and applying the functional stimulus to the nail. However, the disclosure fails to provide sufficient explanation regarding the color-changing material, the specific controls of the various functional stimuli and how this generates the specific color change of the nail to the selected color. Additionally, the disclosure fails to provide sufficient detail related to the how the functional stimulus is provided and applied (e.g. device configuration).
The specification fails to teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. For example, in the instance where the function stimulus is a voltage, the specification fails to explain: i) how the electronic device is configured to deliver a controlled voltage to the nail (e.g. How is the voltage adjusted based on the selected color? How is the device configured to deliver the voltage?), ii) how the microchip receives the voltage (What structure is used to interface with the nail, e.g. electrodes, electrical contacts, wires, etc.? How is the microchip exposed on the nail and integrated therewith?), and iii) how the color of the nail is changed as a result of the microchip receiving the voltage (Is the nail covered with a specific coating that responds to the functional stimulus? How does the microchip interact with the coating?). There is no explanation as to how the nail will change to a particular selected color as a result of the application of a specific voltage thereto; for example, if the user selects a glittery gold color, how is the nail color changed to glittery gold by subjecting it to a voltage? Applicant fails to provide any direction or guidance in achieving one color or another with any one of the various stimuli. There are no specific working examples disclosed; for example, the disclosure does not explain how the electronic device is configured to provide a specific heat setting (no mechanism disclosed for controlling heat output), what type of coating is applied to the nail such that the nail will change color when subjected to heat (e.g. specific thermochromic coating composition), the temperatures and durations required to change the color to the selected color (e.g. exposure for 1 min at a temperature of X will turn the coating blue, while a exposure for 1 min at a temperature of Y °F will turn the coating red, etc.). The quantity of experimentation needed to make or use the invention based on the content of the disclosure is unreasonable and goes well beyond routine. Such a person is tasked with i) creating a coating/polish or artificial nail which changes color when exposed to various stimuli, or otherwise causing a color change of a natural human nail when exposed to various stimuli, ii) creating a device which receives a selected color and generates a specific stimulus mode which will result in the coating or artificial or natural nail changing color in response to exposure to the stimuli, whereby the person must figure out how to design the device to expose the nail to the stimulus. A person of ordinary skill in the art is tasked with undue experimentation in making and using the claimed invention.
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 recites changing the color of a nail of a user to a selected color where it is unclear how this is achieved. A natural nail will not change color when exposed to any and all functional stimuli. For example, subjecting a natural nail to safe temperatures or stress/pressure does not change the color of the nail. Furthermore, if unsafe temperatures or pressures are used, a color change may occur (e.g. nail could turn purple or reddish-pink) but it is unclear how this color change would be controlled to achieve a selected color (e.g. lime green or neon orange). Claims 9 and 11-14 further outline specific functional stimuli (voltage, heat, light, stress/pressure), where it is unclear how these stimuli result in changing the color of a nail to a selected color. It is noted that claim 8 does not require the nail have a color-changing composition/coating/film or color-changing artificial nail applied thereto and that this coating or artificial nail is the structure that changes 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8 and 12, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walia (US 20170215550).
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. Walia et al. disclose a method for changing nail color (Refer to Figures 1A-18C), comprising: selecting, via a software application on a computing device (113,1507,1501, 1502, 1503 or computing device portion of the system 100, 1000), a color from a color palette comprising a plurality of color options (Refer to paragraphs 0052, 0073, 0084 and 0090); transmitting from the computing device an electronic signal to an electronic device (100,1000 which includes an applicator, applicator control mechanism, uv light, etc.), wherein the electronic signal identifies the selected color (Refer to paragraphs 0042, 0052 and Figures 2 and 16); generating, by the electronic device, a functional stimulus (application of coating Refer to paragraph 0040 and application of UV light Refer to paragraph 0048) to change a color of a nail of a user to the selected color, wherein the nail and at least part of a finger of the user upon which the nail resides are inserted into a housing of the electronic device configured to surround the nail and at least the part of the finger of the user; applying the functional stimulus to the nail of the user via the electronic device (Refer to Figures 1A-2, 10A-10C, 16 and 17A and paragraphs 0042 and 0048).
Regarding claim 12, Walia et al. disclose the functional stimulus comprises application of light at a wavelength corresponding to the selected color. As explained above, the functional stimulus of Walia et al. includes application of a coating and curing of the coating with UV light which results in changing the color of the nail to the desired color, where application of UV light is application of light at a wavelength corresponding to the selected color.
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).
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); generating, by the electronic device, a functional stimulus to change a color of a nail of a user to the selected color, wherein the nail is inserted into a housing of the electronic device configured to surround the nail and applying the functional 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 at least a part of a finger of the user upon which the nail resides is also inserted into the housing of the electronic device configured to surround the nail and at least the part of the finger. The housing of the electronic device of Fabre et al. supports and surrounds the nail but lacks a portion that is configured to surround at least the part of the finger of the user on which the nail resides. It is well-known and conventional for such housings to have various configurations including a portion which surrounds a fingertip portion as demonstrated by Kergosein et al. (Refer to Figures 8-9B). The electronic device of Kergosein et al. changes the color of a nail by delivering a functional stimulus to the nail (Refer to page 42 lines 20-36, page 43 lines 1-20), where the electronic device has a portion that engages the tip of the nail to deliver the stimulus, similar to Farber et al. but the housing includes lateral walls which surround and support the fingertip. 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 surround the part of the finer upon which the nail resides and this part of the finger be inserted in the housing as taught by Kergosein et al. in order to provide additional support to the finger during use.
Regarding claim 9, the combination of Farber et al. and Kergosein et al. 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 Kergosein et al. 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 Kergosein et al. 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 Kergosein et al. 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 Kergosein et al. disclose 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 Kergosein et al. 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 Kergosein et al. 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.
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.
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).
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