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 .
Election/Restrictions
Applicant's election with traverse of Invention I drawn to claims 1-15 in the reply filed on December 10, 2025, is acknowledged. The traversal is on the ground that while it is true that those with very long hair have occasionally used a clothes iron to straighten their hair, the opposite, that a device for straightening hair can be used to iron clothing, is not necessarily so. This is not found persuasive because the product as claimed can be used in a materially different process of using that product. For example, the product as claimed can be used to press clothes or neckties and nothing can prevent the hair straightening with heated surfaces from pressing clothes or neckties, see such an example of using a hair straightening to press clothes “Amanda’s Home Hacks Video, https://www.youtube.com/watch?v=5RDCLr3XqTc&t=116s.”.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 10, 2025.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of co-pending Application No. 18/597,789. Although the claims at issue are not identical, they are not patentably distinct from each other because: the claims of the application 18/597,789 "anticipate" the claims of the instant application. Claim 1 of the instant application is anticipated by claim 1 of Application No. 18/597,789. Accordingly, the instant application claims are not patentably distinct from the application 18/597,789 claims. Here, the more specific application 18/597,789 claims encompass the broader co-pending instant application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 1 line 1 should read “A hair device, the device comprising:”. Correction is required to overcome this issue.
Claim 11 should read “further comprising a first, a second, and a third programmable temperature, wherein the first temperature is [[the]] a highest temperature and the third temperature is [[the]] a lowest temperature.”. Correction is required to overcome this issue.
Claim 15 should read “The device of claim [[1]] 2, wherein the second [[series of features covers less length than the first [[series of features.”. Correction is required to overcome this issue.
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.
Claims 1-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Story (US 20130263881 A1, hereinafter “Story”).
Regarding claim 1. Story discloses a hair device (abstract and “Embodiment shown in Fig 1-4 and Fig 11-12, hereinafter “Embodiment A”, device 2) comprising: a first arm (Fig 1, arm 4) extending along a first longitudinal axis with a proximal end (Fig 1, end 8) and a distal end (Fig 1, end 14), the first arm further comprising a flat styling surface (Fig 4 and ¶0044, flat surface 26) opposite an outside surface on the distal end of the first arm (Fig 1); a second arm (Fig 1, arm 6) extending along a second longitudinal axis with a proximal end (Fig 1, end 10) and a distal end (Fig 1, end 16), the proximal end of the second arm pivotally coupled to the proximal end of the first arm (Fig 1, end 8 is pivotally connected to end 10 via connection 12), the second arm (6) further comprising a concave styling surface (Fig 4, concave surface 28) opposite an outside surface on the distal end of the second arm (Fig 1 and ¶0044); and: a) a first series of features (features 30) on the flat styling surface of the first arm (Fig 1 and ¶0044), the features positioned in a direction transverse to the first longitudinal axis (Fig 1, Fig 3 and ¶0040).
Story is silent in “Embodiment A” to the first arm further comprising a convex styling surface.
Story further teaches in an alternative Embodiment shown in Fig 5 A, the first arm comprising a convex styling surface (Fig 5A and ¶0045 , convex surface 26) so that both surface 26 of heating member 54 and blades 30 have an arc or convex shape. The opposing concave and convex shaped surfaces and/or blades allow the device 2 to have a nesting configuration in the closed position (¶0045).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the flat styling surface of the first arm of “Embodiment A” of Story’s hair device to have a convex shape, as taught by the alternative Embodiment shown in Fig 5A of Story’s hair device. Such modification of the opposing concave and convex shaped surfaces and/or blades allow the device 2 to have a nesting configuration in the closed position.
Regarding claim 2. Story teaches the invention of claim 1. Story further teaches a second series of features (features 48) on the outside surface of the first arm (Fig 1), wherein the second series of features are larger compared to the first series of features (annotated Fig 1, second features 48 “A” is larger than first series of features 30 “B”).
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Regarding claim 3. Story teaches the invention of claim 2. Story further teaches the first series of features and the second series of features are comprised of ridges (Fig 1 and ¶0039 and ¶0048), wherein a middle portion of each ridge is greater in height than a side portion of each ridge (¶0044 for middle portion of each ridge is greater in height than a side portion of each ridge of first series features 30). Story is silent to a middle portion of each ridge is greater in height than a side portion of each ridge of second series of features.
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify middle portion of each ridge such that it’s greater in height than a side portion of each ridge of the second series of features of story’s hair device. Such modification would enhance volume of users’ hair, provide properly shaped curls forming defined arches to meet users’ needs and preferences.
In addition, the instant disclosure describes the selection of the middle portion of each ridge being greater in height than a side portion of each ridge as merely preferable [¶0064] and does not describe it as contributing any unexpected result to the hair device. As such, the selection of the middle portion of each ridge being greater in height than a side portion of each ridge is deemed matters of design choice (lacking in any criticality), well within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results.
Regarding claim 4. Story teaches the invention of claim 2. Story further teaches the first series of features and the second series of features have rounded tops (¶0047, for rounded first series of features 30; Fig 1 and Fig 12 show rounded second series of features 48 in rounded top shape around the perimeter of first arm 4).
Regarding claim 5. Story teaches the invention of claim 2. Story further teaches the second series of features (series of features 48) is positioned in the direction transverse to the first longitudinal axis or to the second longitudinal axis (Fig 1).
Regarding claim 6. Story teaches the invention of claim 1. Story further teaches the first series of features (features 30) completely spans the convex styling surface (Fig 2A and Fig 9).
Regarding claim 7. Story teaches the invention of claim 3, but silent to each ridge on the convex styling surface is about 1 mm in width, with about 1 mm between each ridge.
Story further teaches that the thickness/ width of each row of feature 30 is generally the same. However, in some embodiments, the thickness of each row of features can vary from each other (¶0043); and that the space between each row of features 30 can be of various lengths and distances (¶0043). Such width of the features and space between the features would allow a strand or strands of coarse hair to fall between the rows of blades (¶0043) and allow the hair of a user to be separated by the rows of blades for straightening by the device (¶0043).
It would have been obvious to one having ordinary skill in the art before the effective filing date to specify width of each ridge on the convex styling surface to be about 1 mm, and about 1 mm between each ridge of Story’s hair device. Such width of the ridges and space between the ridges would allow a strand or strands of coarse hair to fall between the rows of blades and allow the hair of a user to be separated by the rows of blades for straightening by the device.
Regarding claim 8. Story teaches the invention of claim 3, but silent to each ridge on the outside surface of the first arm is about 1.5 mm in width, with about 2 mm between each ridge.
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify each ridge on the outside surface of the first arm to be about 1.5 mm in width, and about 2 mm between each ridge of Story’s hair device. Such modification would facilitate or improve the passing of the hair through the device, assist in pressing or straightening the hair, and assist in curling the hair after it is passed through the heated blades (¶0043).
Regarding claim 9. Story teaches the invention of claim 1. Story further teaches the first arm (arm 4) and the second arm (arm 6) pivot between an open position and a closed position (¶0010), wherein the closed position aligns the convex styling surface of the first arm to contact the concave styling surface of the second arm (Fig 5A).
Regarding claim 10. Story teaches the invention of claim 1. Story further teaches at least one heating element (¶0037) configured to heat the convex styling surface and the concave styling surface to at least one programmed temperature (¶0037. The heating circuit and heating elements are capable to heat the convex styling surface and the concave styling surface to at least one programmed temperature).
Regarding claim 11. Story teaches the invention of claim 10. Story further teaches a first, a second, and a third programmable temperature (abstract), wherein the first temperature is the highest temperature and the third temperature is the lowest temperature (¶0013).
Regarding claim 12. Story teaches the invention of claim 10. Story further teaches a switch (¶0050, knob 22) configured to set the at least one heating element to the at least one programmed temperature (¶0050. The knob 22 is capable to set and select the at least one heating element to the at least one programmed temperature).
Regarding claim 14. Story teaches the invention of claim 1. Story further teaches the concave styling surface and the convex styling surface are ceramic (¶0039).
Regarding claim 15. Story teaches the invention of claim 1. Story further teaches the second plurality of features covers less length than the first plurality of features (annotated Fig 1, length L1 of second plurality of features 48 is less than length L2 of first plurality of features 30).
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Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Story (US 20130263881 A1, hereinafter “Story”) in view of Parris et al (US 20160309868 A1, hereinafter “Parris”).
Regarding claim 13. Story teaches the invention of claim 1, but silent to the concave styling surface and the convex styling surface are sealed from moisture.
Parris teaches hair device for treating the hair (abstract and Fig 1-9) with at least of the styling surfaces comprises a seal (14) (¶0033) so that the seal can ensure good water-resistance of the device, in particular by preventing any runoff from passing into the interior of a mobile arm of the device while it is being used (¶0008), and that the water resistance provided by the seal makes it possible to prevent any risk of short-circuit in the device, in particular when the electrical and/or electronic elements are housed in one of the arms of the device, for example a heating resistor in the case of a straightening iron (¶0011).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify one of the concave or convex styling surface of story’s hair device and incorporate a seal, as taught by Parris. Such modification would allow the seal to ensure good water-resistance of the device, in particular by preventing any runoff from passing into the interior of a mobile arm of the device while it is being used, and that the water resistance provided by the seal makes it possible to prevent any risk of short-circuit in the device, in particular when the electrical and/or electronic elements are housed in one of the arms of the device, for example a heating resistor in the case of a straightening iron.
In addition, it would have been obvious to one having ordinary skill in the art before the time the invention was made to duplicate the seal into the other concave or convex styling surfaces, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. In this instance case, one of ordinary skill in the art would recognize duplication of the seal in the other concave or convex styling surface would allow good water-resistance of the hair device and prevent any unwanted risk of short-circuit in the device.
Conclusion
Additional references were also reviewed during the examination of this application and listed for your reference in the notice of reference cited form.
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/KARIM ASQIRIBA/Examiner, Art Unit 3772