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
Original claims 18-20 were drawn to a utility nail tip. In the Non-Final Office action mailed on 5/28/2025, claims 18-20 were rejected under 35 USC 112(b) for attempting to embrace more than one statutory category by purporting to be both a product and a process. The Office action explained that the issue may be corrected by amending the method steps to be intended use and/or functional limitations while reciting additional structural features/elements. It was also clearly explained that if claims 18-20 would have originally recited a method, a restriction requirement would have been issued and if such an amendment were made, the claims would be subject to election by original presentation and withdrawn.
Applicant traversed the election by original presentation of product claims 1-17 and withdrawal of amended claims 18-20 in the reply filed on 5/5/2026 is acknowledged. The traversal is on the ground(s) that this is no search burden because the method claims do not recite the various exemplary methods cited (e.g. attachment to a glove, a robotic arm, or use of different attachment mechanism; instead, the method recites adhering the nail tip to the top surface of a natural nail with a beach of bonding agent which is described in claim 1 (product claim). This is not found persuasive because intended use in a product claim does not hold the same weight as method steps in a method claim. In a product claim, a recitation of the intended use (“for attaching on a natural nail”) of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim, whereas, method claims require search and application of prior art that provides for or renders obvious the specific actions being performed. The searches have overlap but prior art in different fields of search can be applied to the product which would not apply to the method. Similarly, the method involves use of different search queries and techniques than the product (e.g. NPL search of blogs, videos, tutorials, etc., different text queries within patent publication searches). A particular prior art reference may be applicable to the product and not applicable to the method (e.g. teaches away from steps outlined in method, is for a different purpose but capable of being used as claimed and provides the same structure). Conversely, the focus of the method claims are the steps, not the structure. Therefore, the strategy when apply prior art is different and may require different grounds of rejection for each invention (product and method).
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 16 and 17 are objected to for depending from cancelled claims. The claims will be interpreted as depending from claim 1. In claim 4, the word surface has a space between the “f” and the “a” which requires deletion. Appropriate correction is required.
Claim 13 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 12. Claims 16 and 17 are objected to under 37 CFR 1.75 as being a substantial duplicate of claim 14. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-17 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 1 requires the utility portion have a shape different than a natural nail tip to perform a specific function as a tool, where it is unclear what structure is intended by this language. Natural nails can be cut and/or filed into various shapes and many shapes can provide a specific tool function; for example, scratching skin or a lottery ticket, piercing a foil seal or other material, lifting tabs on cans, etc.
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 1, 6, 8, 12-14, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Straza (US 20200249756).
Regarding claim 1, Straza discloses a utility nail tip (Refer to Figures 1-34) for attaching on a natural nail of a user by a bonding agent, comprising: a nail portion (artificial nail portion 14), having an underside contact surface configured to fit size, shape and curvature of a top surface of the natural nail of the user and being made of a first material (conventional artificial nail materials, non-conductive) adapted for attaching on the top surface of the natural nail; and a utility portion (10A-10X), integrally extended from the nail portion and supported by the nail portion, which is made of a second material (conductive material) and configured having a shape different than a natural nail tip to perform a specific function as a tool, the second material different from the first material (second material is conductive and first material is not conductive, hence why utility portion is provided to permit operation of touch screen devices), the nail portion and the utility portion form a monolithic structure made by molding or adhered to form a unitary structure (utility portion is adhered to the nail portion 14, Refer to paragraphs 0036, 0074, 0078, 0080, 0083) .
Regarding claim 6, Straza discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claim 8, Straza discloses a thickness of the utility portion is thicker than a thickness of nail portion (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claims 12 and 13, Straza discloses a thickness of a base part of the utility portion is thicker than a distal edge of the nail portion inwardly to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claims 14, 16 and 17, Straza discloses the nail portion is an artificial nail tip (14) having an outer attaching surface (upper surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (outer surface of 10A-10X) which has an inner attaching surface sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 1-34, an exterior surface of the utility portion is capable of being adhered to a top/outer surface of an artificial nail).
Claims 1, 6, 14, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mullin (US 6631723).
Regarding claim 1, Mullin discloses a utility nail tip (Refer to Figures 15C, 21A-21B and 22A-22B) for attaching on a natural nail of a user by a bonding agent, comprising: a nail portion (56, 130,140), having an underside contact surface (lower surface nail portion which is adhered to the natural nail during use) configured to fit size, shape and curvature of a top surface of the natural nail of the user and being made of a first material adapted; and a utility portion (132,142, 58 alone or 58 and the portion of 56 it is embedded in/attached to), which is made of a second material and having a shape different than a natural nail tip to perform a specific function as a tool, the second material different from the first material (58 is a quill which is a different material from an artificial nail, 132 is a whistle and Figure 21B shows they are different materials, 142 is a maraca, rattle or similar device having pieces of metal, plastic or other substances which are different than the material of an artificial nail) , the nail portion and the utility portion form a monolithic structure or a unitary structure (58 and 56 form a unitary structure, as do 130,132 and 140,142 Refer to Figures 15C, 21A-21B and 22A-22B and col. 10 lines 7-55).
The claimed phrase “monolithic structure made by molding or adhered to form a unitary structure” is being treated as a product by process limitation; that is a molding process is used to form a monolithic structure or an adhesive bonding process is used to form a unitary structure. 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. The embodiments referenced in the rejection above wither provide a unitary or monolithic structure. The quill of Figure 15C is integrated with the nail, the whistle of Figures 21A and 21B is molded with/onto the nail to form a monolithic structure and the maraca/rattle/noise-maker of Figures 22A and 22B is also unitary with the nail.
Regarding claim 6, Mullin discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figure 15C).
Regarding claims 14, 16 and 17, Mullin discloses the nail portion is an artificial nail tip having an outer attaching surface (upper or upper/distal surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (portions of 58, 132, 142 contacting the outer attaching surface) which has an inner attaching surface (proximal surface of 58, lower surfaces of 132,142) sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 15C and 21A-22B).
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 2-4, 7, 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Straza and Lee (US 20190374003).
Regarding claims 2-4, Straza discloses the utility nail tip of claim 1; however, Straza does not disclose a rough affixing surface is provided on at least a portion of the underside contact surface of the nail portion of the utility nail tip and configured for increasing a contacting surface area of the rough affixing surface to pick up the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, while reducing a thickness of the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, wherein the rough affixing surface is a coarse surface formed by a plurality of indented grooves. Lee discloses an artificial nail where the underside of the artificial nail is provided with a plurality of grooves (Refer to Figures 1B-4) forming a course surface for affixing the nail to the user’s natural nail with adhesive (Refer to paragraphs 0004, 0014) which improves adhesion of the nail to the natural nail and results in a look that is more natural and similar to a human nail (Refer to paragraph 0003). Since the adhesive occupies the grooves, a strong bond is formed between the artificial nail and the natural nail without the need for a thick adhesive layer, which results in a more natural (thinner) look. 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 utility nail tip of Straza to provide a rough affixing surface on at least a portion of the underside contact surface, where the rough affixing surface is a course surface formed by a plurality of indented grooves, as claimed, since Lee demonstrates providing this structure improves adhesion of the artificial nail to the natural nail and results in a more natural look.
Regarding claim 7, the combination of Straza and Lee disclose the utility nail tip of claim 2 above, Straza further discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claim 9, the combination of Straza and Lee disclose the utility nail tip of claim 7 above, Straza further discloses a thickness of the utility portion is thicker than a thickness of nail portion (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claim 15, the combination of Straza and Lee disclose the utility nail tip of claim 2 above, Straza further discloses the nail portion is an artificial nail tip (14) having an outer attaching surface (upper surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (outer surface of 10A-10X) which has an inner attaching surface sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 1-34, an exterior surface of the utility portion is capable of being adhered to a top/outer surface of an artificial nail).
Claims 2, 3, 5, 7, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Straza and Huynh (US 20110132386).
Regarding claims 2, 3 and 5, Straza discloses the utility nail tip of claim 1; however, Straza does not disclose a rough affixing surface is provided on at least a portion of the underside contact surface of the nail portion of the utility nail tip and configured for increasing a contacting surface area of the rough affixing surface to pick up the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, while reducing a thickness of the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, wherein the rough affixing surface is a coarse surface.
Huynh discloses an artificial nail having a nail portion with an underside contact surface (surface shown in Figure 5) configure to be bonded to a natural nail (Refer to Abstract). Huynh teaches at least a portion of the underside defines a rough affixing surface (115) which is a course surface which facilitates secure adhesion of the artificial nail to the natural nail (Refer to paragraphs 0015, 0017, 0018, 0034 and 0037). 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 utility nail tip of Straza to provide a rough affixing surface on at least a portion of the underside contact surface, where the rough affixing surface is a course surface as taught by Huynh to ensure and facilitate secure adhesion of the artificial nail to the natural nail.
The claimed phrase “the rough affixed surface is filed to form the coarse surface” is being treated as a product by process limitation; that is the coarse surface/rough affixing surface is formed via a filing (grinding/abrading) 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. 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. Although Huynh teaches the coarse surface is formed via a molding process, the same or similar structure is obtained as the rough surface provides raised areas and recessed which provide a roughened or coarse side.
Regarding claim 7, the combination of Straza and Huynh disclose the utility nail tip of claim 2 above, Straza further discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claim 9, the combination of Straza and Huynh disclose the utility nail tip of claim 7 above, Straza further discloses a thickness of the utility portion is thicker than a thickness of nail portion (Refer to Figures 1, 7, 11, 21-24, 28, 30-34).
Regarding claim 15, the combination of Straza and Huynh disclose the utility nail tip of claim 2 above, Straza further discloses the nail portion is an artificial nail tip (14) having an outer attaching surface (upper surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (outer surface of 10A-10X) which has an inner attaching surface sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 1-34, an exterior surface of the utility portion is capable of being adhered to a top/outer surface of an artificial nail).
Claims 2-4, 7, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mullin and Lee (US 20190374003).
Regarding claims 2-4, Mullin discloses the utility nail tip of claim 1; however, Mullin does not disclose a rough affixing surface is provided on at least a portion of the underside contact surface of the nail portion of the utility nail tip and configured for increasing a contacting surface area of the rough affixing surface to pick up the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, while reducing a thickness of the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, wherein the rough affixing surface is a coarse surface formed by a plurality of indented grooves. Lee discloses an artificial nail where the underside of the artificial nail is provided with a plurality of grooves (Refer to Figures 1B-4) forming a course surface for affixing the nail to the user’s natural nail with adhesive (Refer to paragraphs 0004, 0014) which improves adhesion of the nail to the natural nail and results in a look that is more natural and similar to a human nail (Refer to paragraph 0003). Since the adhesive occupies the grooves, a strong bond is formed between the artificial nail and the natural nail without the need for a thick adhesive layer, which results in a more natural (thinner) look. 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 utility nail tip of Mullin to provide a rough affixing surface on at least a portion of the underside contact surface, where the rough affixing surface is a course surface formed by a plurality of indented grooves, as claimed, since Lee demonstrates providing this structure improves adhesion of the artificial nail to the natural nail and results in a more natural look.
Regarding claim 7, the combination of Mullin and Lee disclose the utility nail tip of claim 2 above, Mullin further discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figure 15C).
Regarding claim 15, the combination of Mullin and Lee disclose the utility nail tip of claim 2 above, Mullin further discloses the nail portion is an artificial nail tip having an outer attaching surface (upper or upper/distal surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (portions of 58, 132, 142 contacting the outer attaching surface) which has an inner attaching surface (proximal surface of 58, lower surfaces of 132,142) sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 15C and 21A-22B).
Claim 8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Mullin and Hokawa (US 4554935).
Regarding claims 8 and 12-13, Mullin discloses the utility nail tip of claims 6 and 1 above; however, Mullin does not disclose a thickness of the utility portion/base part of the utility portion is thicker than a thickness of the nail portion/distal edge of the nail portion, to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user. Hokama discloses an artificial nail having a nail portion with an underside (12) which is intended to be adhered to the natural nail and a tip portion (portion extending distally from 25,26) where the base part of the tip (at/adjacent 25) is thicker than the distal edge of the nail portion as well as other portions of the nail portion and forms a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user, as best shown in Figures 1 and 2. Hokama explains that the curved step edge (25) conforms to the forward/distal edge (19) of the natural nail (17) and positions that edge, where this configuration reinforces the bond between the natural nail and artificial nail and reduces separation of the free edge of the natural nail from the artificial nail. 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 utility nail tip of Mullin such that the thickness of the utility portion, particularly a base part thereof, be thicker than the nail portion, particularly a distal edge thereof, to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user as taught by Hokama in order to reinforce the bond between the artificial nail and natural nail and prevent separation thereof near the distal edge of the natural nail.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Mullin and Lee as applied to claim 7 above, and further in view of Hokama (US 4554935).
Regarding claim 9, the combination of Mullin and Lee disclose the utility nail tip of claim 7 above; however, the combination does not disclose a thickness of the utility portion/base part of the utility portion is thicker than a thickness of the nail portion. Hokama discloses an artificial nail having a nail portion with an underside (12) which is intended to be adhered to the natural nail and a tip portion (portion extending distally from 25,26) where the base part of the tip (at/adjacent 25) is thicker than the distal edge of the nail portion as well as other portions of the nail portion and forms a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user, as best shown in Figures 1 and 2. Hokama explains that the curved step edge (25) conforms to the forward/distal edge (19) of the natural nail (17) and positions that edge, where this configuration reinforces the bond between the natural nail and artificial nail and reduces separation of the free edge of the natural nail from the artificial nail. 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 utility nail tip of the combination of Mullin and Lee such that the thickness of the utility portion, particularly a base part thereof, be thicker than the nail portion, particularly a distal edge thereof, to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user as taught by Hokama in order to reinforce the bond between the artificial nail and natural nail and prevent separation thereof near the distal edge of the natural nail.
Claims 2, 3, 5, 7, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mullin and Huynh (US 20110132386).
Regarding claims 2, 3 and 5, Mullin discloses the utility nail tip of claim 1; however, Mullin does not disclose a rough affixing surface is provided on at least a portion of the underside contact surface of the nail portion of the utility nail tip and configured for increasing a contacting surface area of the rough affixing surface to pick up the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, while reducing a thickness of the bonding agent applied between the underside contact surface of the nail portion of the utility nail tip and the top surface of the natural nail of the user, wherein the rough affixing surface is a coarse surface.
Huynh discloses an artificial nail having a nail portion with an underside contact surface (surface shown in Figure 5) configure to be bonded to a natural nail (Refer to Abstract). Huynh teaches at least a portion of the underside defines a rough affixing surface (115) which is a course surface which facilitates secure adhesion of the artificial nail to the natural nail (Refer to paragraphs 0015, 0017, 0018, 0034 and 0037). 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 utility nail tip of Mullin to provide a rough affixing surface on at least a portion of the underside contact surface, where the rough affixing surface is a course surface as taught by Huynh to ensure and facilitate secure adhesion of the artificial nail to the natural nail.
The claimed phrase “the rough affixed surface is filed to form the coarse surface” is being treated as a product by process limitation; that is the coarse surface/rough affixing surface is formed via a filing (grinding/abrading) 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. 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. Although Huynh teaches the coarse surface is formed via a molding process, the same or similar structure is obtained as the rough surface provides raised areas and recessed which provide a roughened or coarse side.
Regarding claim 7, the combination of Mullin and Huynh disclose the utility nail tip of claim 2 above, Mullin further discloses the utility portion has a predetermined shape and size extended from a distal edge of the nail portion to form a utility tool having a specific function after the nail portion is securely attached to the natural nail of the user (Refer to Figure 15C).
Regarding claim 15, the combination of Mullin and Huynh disclose the utility nail tip of claim 2 above, Mullin further discloses the nail portion is an artificial nail tip having an outer attaching surface (upper or upper/distal surface) opposing the underside contacting surface, and that the utility portion is an independent element having an attaching portion (portions of 58, 132, 142 contacting the outer attaching surface) which has an inner attaching surface (proximal surface of 58, lower surfaces of 132,142) sized, shaped and configured to be adhered to outer attaching surface of the nail portion to form the utility nail tip (Refer to Figures 15C and 21A-22B).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Mullin and Huynh as applied to claim 7, and further in view of Hokama (US 4554935).
Regarding claim 9, the combination of Mullin and Huynh disclose the utility nail tip of claim 7; however, the combination does not disclose a thickness of the utility portion/base part of the utility portion is thicker than a thickness of the nail portion/distal edge of the nail portion, to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user. Hokama discloses an artificial nail having a nail portion with an underside (12) which is intended to be adhered to the natural nail and a tip portion (portion extending distally from 25,26) where the base part of the tip (at/adjacent 25) is thicker than the distal edge of the nail portion as well as other portions of the nail portion and forms a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user, as best shown in Figures 1 and 2. Hokama explains that the curved step edge (25) conforms to the forward/distal edge (19) of the natural nail (17) and positions that edge, where this configuration reinforces the bond between the natural nail and artificial nail and reduces separation of the free edge of the natural nail from the artificial nail. 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 utility nail tip of the combination of Mullin and Huynh such that the thickness of the utility portion, particularly a base part thereof, be thicker than the nail portion, particularly a distal edge thereof, to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user as taught by Hokama in order to reinforce the bond between the artificial nail and natural nail and prevent separation thereof near the distal edge of the natural nail. 30
Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over by Mullin and Duong (US 20200405035).
Regarding claims 12 and 13, Mullin disclose the utility nail tip of claim 1; however, Mullin does not disclose the thickness of a base part of the utility portion is thicker than a distal edge of the nail portion inwardly to form a reinforcing step edge having a curvature and configuration adapted for resting on a free edge of the natural nail of the user. Mullin provides an embodiment where the utility portion (58 and the portion of 56 it is embedded in/attached to) extends from a distal portion of the nail portion such that when attached the utility portion would extend beyond the free end of a natural nail. Duong discloses an artificial nail tip (10) where the portion of the nail tip that contacts the user’s natural nail (portion 30) is thinner than the portion that extends beyond the free edge of the user’s natural nail so as to create a reinforcing step edge adapted to rest on a free edge of the natural nail (best shown in Figure 6 and described in paragraphs 0028-0033). This configuration enhances adhesion and prevents separation of the artificial nail by covering and bonding the free edge of the natural nail with the artificial nail, rather than having the free edge exposed. 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 nail tip of Mullin such that there be a reinforming step edge between the distal edge of the nail portion (portion intended to cover distal /free end of user’s natural nail) and the extension/utility portion (portion intended to extend beyond the free end of the user’s natural nail), whereby the extension/utility portion is thicker than the distal edge of the nail portion as taught by Duong in order to enhance adhesion and prevent separation of the artificial nail tip by covering and bonding the free edge of the natural nail with the artificial nail tip, rather than having the free edge exposed.
Response to Arguments
Applicant's arguments filed 8/26/2025 have been fully considered but they are not persuasive.
Argument: Mullen does not provide the nail portion and utility portion as a monolithic structure made by molding or adhered to form a unitary structure. Mullin discloses the utility portion being removably attached, pivotally attached, extendable, retractable.
Response: There are embodiments of Mullin that do provide pivotable, retractable, extendable, removable, etc. utility portions as indicated by Applicant. However, there are other embodiments that provide fixed utility portions, such as the embodiments of Figures 15C and 21A-22B. The rejection was modified in light of Applicant’s amendments to refer to these embodiments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Duong (US 20200405035) and Chang (US 6394100) demonstrates it is known to provide a roughed surface on a portion of an artificial nail being adhered to a natural nail, where the roughed surface can be made by grinding (filing) or molding.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 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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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
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