DETAILED ACTION
Priority
This application repeats subject matter disclosed in prior application no 16504180, filed 7/5/2019, because this application names the inventor or at least one joint inventor named in the prior application, it properly constitutes a continuation of the prior application. Applicant’s claim to the benefit of the filing date of the prior application under 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. is acknowledged.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1-20 is/are rejected on the ground of non-statutory double patenting as being unpatentable over claim(s) 1-17 of U.S. Patent No. 11602207.
Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are more specific than the current pending claims, meaning the issued claims anticipate the pending claims. The patented claims require a cylindrical hair styling device comprising: upper and lower gripping portions hinged together with each gripping portion including a clamping portion and each clamping having a heated twisted plate and a heat insulation layer with the plates having a particular angle of twist (see claim 1) and the pending claims are broader than this so they are anticipated by applicant’s already patented claims.
Claim(s) 1-20 is/are rejected on the ground of non-statutory double patenting as being unpatentable over claim(s) 1-17 of U.S. Patent No. 12396538.
Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are more specific than the current pending claims, meaning the issued claims anticipate the pending claims. Patented claim 6 requires the heat insulation layer required by the pending claims of the instant application and patented claim 1 requires an upper arm hinged to a lower arm with each arm having a twisted hair contact surface and the twisted hair contact surface forming a portion of the clamp head portion of the respective arm with the specific 60-120o angle of twist for the hair contact surfaces, which is more specific than the pending claims.
Drawings
The replacement drawings were received on 2/17/26. These drawings are accepted and overcome the prior objections.
Claim Objections
Claim(s) 14 is/are objected to because of the following informalities:
Claim 14: line 2, delete “hair”.
Appropriate correction is required.
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.
Claim(s) 3 and 10-20 is/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 pre-AIA the applicant regards as the invention.
Claim 3: this claim recites “”wherein the upper clamping surface has a first angle at a first distance from the upper gripping portion and the upper gripping portion has a second angle at a second distance from the upper gripping portion”; however claim 3 depends from claim 1 and claim 1 already innately requires a first twist angle of the upper clamping surface and a second twist angle of the lower clamping surface, but no relationship is set forth between these new angles and the angles required by claim 1. It would appear these are the same angles or are related angles; applicant is respectfully reminded that the same term must be used consistently throughout the claims to refer to a single feature. Furthermore, this does not indicate what the angle is measured relative to, making it further unclear. Clarification or correction is requested.
Claim 14: this claim depends from claim 11, which innately already requires a twist angle for the lower clamp plate and a twist angle for the upper clamp plate; however, claim 14 then goes on to recite “the upper clamp plate has a first twist angle and the lower clamp plate has a second twist angle”; are these the same angles required by claim 11 or is applicant attempting to claim multiple angles of twist? Since the disclosure only provides support for a single angle of twist for each clamp plate, for examination purposes, the claim will be treated as reciting “the upper clamp plate is twisted about the longitudinal axis about a first twist angle and the lower clamp plate is twisted about the longitudinal axis about a second twist angle”. Clarification or correction is requested.
Claim Rejections - 35 USC § 102
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 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 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.
Claim(s) 1-6, 8-15, and 17-20, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deng (US 20140238432).
Claims 1-2, 5-6, 9-10, 12-14, and 19-20: Deng discloses a hair styling device (see Fig 1) defining a longitudinal axis, the device comprising: an upper gripping portion (11); a lower gripping portion (see Fig 1); a hinge (101) connecting the upper gripping portion to the lower gripping portion (see Figs 1-2); an upper clamping head (12, Fig 1) connected to the upper gripping portion (11, Fig 1) and including an upper clamping surface/plates (30) extending out of the upper clamping head toward, or along, the longitudinal axis; and a lower clamping head (12 of lower arm in Fig 1) connected to the lower gripping portion (11 of lower arm in Fig 1) and including a lower clamping surface (30 of lower arm in Fig 1) extending out of the lower clamping head toward, or along, the longitudinal axis; and the upper clamping surface and lower clamping surface are paired together when the device is closed (see Figs 5-6). The upper clamping surface has an upper twisted, or tilted, deflection angle with respect to the longitudinal axis and the upper gripping portion (11) and the lower clamping surface has a lower twisted/tilted deflection angle with respect to the longitudinal axis and the lower gripping portion equal and opposite to the angle of the upper portion (see Figs 1 & 5). The upper clamping surface has an upper twisted deflection angle that twists, or curves, at a first curvature or a first deflection angle about the longitudinal axis along an entire length of the upper clamping surface and the lower clamping surface has a lower twisted deflection angle that twists, or curves, at a second curvature or a second deflection angle about the longitudinal axis along an entire length of the lower clamping surface (see Fig 5). Deng states that the arms (10) are made of plastic [0050], which constitutes an upper heat insulation layer between the upper claiming surface and a top of the upper clamping head, as well as a lower heat insulation layer between the lower clamping surface and a bottom of the lower clamping head. The plastic portion, or insulation layers, are disposed radially outside the heated clamping plates of the clamp arms (see Figs 1-5) and also form the interior of the upper clamp head and the lower clamp head. So the insulation layers are also disposed radially inside, by forming an inner surface of, the clamping heads they respectively help to form. Furthermore, Deng illustrates the clamping surfaces not to extend to a tip end of each arm (see annotations). In other words, the tip end of each arm is illustrated to be made of additional housing material, which according to Deng is an insulating plastic [0050]. So Deng also discloses the tip ends of each arm to constitute an ”auxiliary gripping portion” since these ends are made of plastic and would be grip-able like the rest of the plastic housing is disclosed to be.
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Claim 3: The upper clamping surface is twisted/tilted relative to the top of the upper clamping head at different angles on each side of a vertical axis with these angles different from each other (see annotations).
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Claims 4 and 15: the clamping surfaces, both upper and lower, each includes a twisted/curved extension (32) that forms a deflection angle of at least about 90 o (see Fig 5) which falls in the claimed range of 60-120o.
Claim 8: the clamping surfaces are formed by upper and lower heated plates (30) attached to the upper and lower clamping heads, respectively [0046] (see Figs 1-5). So the upper clamp surface forms an outer layer for the upper heated plate and the lower clamp surface forms an outer layer of the lower heated plate (see Figs 1-5 & annotations).
Claim 11: a top of the upper clamping head and a bottom of the lower clamping head collectively define the outer surface of the device which is substantially cylindrical (see Fig 5); note applicant has no support for this language and instead illustrates an elongated rounded cross-section or cylindrical cross-section. This is a similar shape as illustrated by Deng and so it is interpreted to be a cylinder in as much as applicant discloses one.
Claim 17: Deng discloses a heating system [0046] to deliver heat to the plates and the hair [0046].
Claim 18: the plates are free of teeth (see Figs 1-5).
Claim(s) 1-3, 10, 13-14, and 17-18, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (US 20160213116).
Claim 1: Williams discloses a hair styling device (see Fig 1) defining a longitudinal axis, the device comprising an upper gripping portion (see annotations); a lower gripping portion (see annotations) hinged to the upper gripping portion (see Figs 1-2). An upper clamping head (see annotations) is connected to the upper grip portion and includes an upper clamping surface (see annotations) and a top. The upper clamping surface extends outward from the upper clamping head along the longitudinal axis; a lower clamping head is connected to the lower gripping portion (see annotations) and includes a lower clamping surface (see annotations) and a bottom. The lower clamping surface extends outward from the lower clamping head along the longitudinal axis (see Figs 1-6). The lower clamping surface and the upper clamping surface pair or mate together when the device is closed (see Figs 1 & 6). The upper clamping surface has an upper twisted deflection angle with respect to the upper gripping portion (see annotations) and the longitudinal axis that is equal toa lower twisted deflection angle of the lower clamping surface with respect to the lower gripping portion (see annotations) and the longitudinal axis.
Claim 2: Williams illustrates the upper clamping surface and the lower clamping surface to be made of the same material as the handle that is gripped (see Fig 6) because the hatching for these portion is identical to the handle which must be insulated to be able to be held during use. So Williams discloses an upper heat insulation layer between the upper clamping surface and the top of the upper clamping head (see annotations) and a lower heat insulation layer between the lower clamping surface and the bottom of the lower clamping head because the upper clamping head and lower clamping head portions attached to the handle are insulated base on the hatching in Figure 6.
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Claim 3: the upper clamping surface has a first angle at a first distance from the upper gripping portion (see annotations) and the upper clamping surface has a second angle at a second distance from the upper gripping portion with these angles being different (see annotations).
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Claims 10 and 13-14: Williams discloses a hair styling device (see Fig 1) defining a longitudinal axis, the device comprising: an upper gripping portion (see annotations); a lower gripping portion (see annotations) hinged to the upper gripping portion (see Figs 1-2). An upper clamping head (see annotations) is connected to the upper grip portion and includes, or is coupled to, an upper clamping surface (see annotations) formed by a spiralized upper plate (see annotations) twisted about the longitudinal axis along the upper clamp plate and a top; a lower clamping head is connected to the lower gripping portion (see annotations) and includes a lower clamping surface (see annotations) formed by a spiralized lower plate twisted about the longitudinal axis along the lower clamp plate and a bottom. The lower clamping surface and the upper clamping surface pair or mate together when the device is closed (see Figs 1 & 6) and have a same angle of twist. The upper clamping surface has an upper twisted deflection angle with respect to the longitudinal axis and the upper gripping portion (see annotations) that is equal to a lower twisted deflection angle of the lower clamping surface with respect to the longitudinal axis and the lower gripping portion (see annotations). Williams illustrates the upper clamping surface and the lower clamping surface to be made of the same material as the handle that is gripped (see Fig 6) because the hatching for these portion is identical to the handle which must be insulated to be able to be held during use. So Williams discloses an upper heat insulation layer between the upper clamping surface and the top of the upper clamping head (see annotations) and a lower heat insulation layer between the lower clamping surface and the bottom of the lower clamping head because the upper clamping head and lower clamping head portions attached to the handle are insulated base on the hatching in Figure 6. This also means the upper heat insulation layer and the lower heat insulation layer are disposed “radially outside” the heated plates relative to the longitudinal axis and that the interior of the insulating plastic housing is disposed radially inside the clamp heads relative to the longitudinal axis such that the plastic insulation layer is disposed between a top of the clamp head to which it forms and the heated plate of that clamp head (see Figs 1 & 6 & annotations).
Claim 17: the upper clamping surface is formed by a heat conductive spiralized plate carrying a heating element (46) and the lower clamping surface is formed by a heat conductive spiralized plate carrying a heating element (22) [0014-0015].
Claim 18: the spiralized plates are illustrated smooth and free of teeth (see Figs 1-6).
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 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.
Claim(s) 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng (US 20140238432) in view of Winston (US 2528291).
Claims 7 and 16: Deng discloses the invention essentially as claimed except for first teeth along an edge of the upper hair contact surface and second teeth along an edge of the lower hair contact surface.
Winston, however, teaches a heated hair straightener (see Fig 1) including two hinged arms each arm carrying a heated clamping member (30 & 28) and a comb extending from an edge of the upper hair contact surface (23) that mates with a comb extending from a lower edge of the lower hair contact surface (22) with both combs extending from the edges of the heated surfaces for better tensioning the hair during use, thereby setting the style better. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the device of Deng to include comb teeth at a periphery of the heated plate in view of Winston in order to help tension the hair across the heated surfaces during use, thereby detangling and styling at one time reducing the time needed to style one’s hair.
Response to Arguments
Applicant's arguments filed 2/17/26 have been fully considered but they are not persuasive.
Applicant’s arguments are all drawn to the newly amended limitations presented with the amendment filed 2/17/26; these amendments have been addressed with modified rejections where necessary rendering these arguments moot.
Applicant argues there is no analysis comparing the claim limitations to the patented claims and pending claims; this is incorrect and the explanation is repeated below for convenience: Claim(s) 1-20 is/are rejected on the ground of non-statutory double patenting as being unpatentable over claim(s) 1-17 of U.S. Patent No. 11602207.
Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are more specific than the current pending claims, meaning the issued claims anticipate the pending claims. The patented claims require a cylindrical hair styling device comprising: upper and lower gripping portions hinged together with each gripping portion including a clamping portion and each clamping having a heated twisted plate and a heat insulation layer with the plates having a particular angle of twist (see claim 1) and the pending claims are broader than this so they are anticipated by applicant’s already patented claims.
Claim(s) 1-20 is/are rejected on the ground of non-statutory double patenting as being unpatentable over claim(s) 1-17 of U.S. Patent No. 12396538.
Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are more specific than the current pending claims, meaning the issued claims anticipate the pending claims. Patented claim 6 requires the heat insulation layer required by the pending claims of the instant application and patented claim 1 requires an upper arm hinged to a lower arm with each arm having a twisted hair contact surface and the twisted hair contact surface forming a portion of the clamp head portion of the respective arm with the specific 60-120o angle of twist for the hair contact surfaces, which is more specific than the pending claims.
As outlined above, applicant’s pending claims are broader than the already patented claims because the pending claims do not require a particular angle of twist, just twisting. The pending claims require two gipping portions hinged together with the upper clamping surface being twisted about the longitudinal axis and the lower clamping surfacing being twisted about the longitudinal axis and this is broader than what applicant has already received a patent on (as outlined above) so the patented claims anticipate the pending claims making the rejection proper.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Thursday 9:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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