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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/21/2026 has been entered.
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 1-3, 5-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 19/029,564 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of recite the mutual properties except for the applicator.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-3, 5-9, 15-22, 25-26, 28 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US Pub # 2007/0272264) in view of NPL You’ve Been Applying False Eyelashes Wrong Your Whole Life; by: Carly Cardellino (referred to herein as Cardellino)
In regards to claim 1, Byrne teaches a kit comprising
a plurality of knotless lash extensions (referred to as subassemblies 2, 3, 4, 5, etc.), each comprising:
a base (5); a plurality of clusters of artificial hairs (7) joined at the base (Figures 1-36); and
an adhesive (paragraph 71) layer pre-applied at manufacture on at least a top surface of the base of each of the plurality of knotless lash extensions, wherein the bases of the plurality of knotless lash extensions are configured to attach to the user’s eyelid (see Figure 37). Byrne does not disclose the lash extensions configured to attached to natural lashes at an underside.
Cardellino teaches attached clusters of artificial knotless lash extension each comprising a base configured to attach to a user’s natural lashes at an underside thereof as shown in Figures to allow for “a seamless application that barely feels like it there” (see Article). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial lash extensions of Byrne be attached to the user’s natural lashes at an underside as taught by Cardellino to produce a seamless blend creating a more cohesive and authentic look.
Regarding claim 2, Byrne teaches the plurality of artificial hairs are comprised by a plurality of clusters of two or more artificial hairs of the plurality of artificial hairs (Figure 1 where any combination of plurality of hairs 13 form a cluster).
Regarding claim 3, Byrne teaches the base is a knotless base (paragraph 72).
Regarding claim 5, Byrne teaches at least some of the plurality of artificial hairs protrude from the base in different directions (see Figures 1-36).
Regarding claims 6-7, Byrne teaches the plurality of artificial hairs protrude from the base in a uniform pattern along the base (see Figure 3 at uniform spacing).
Regarding claim 8-9, Byrne teaches a length of the base of each of the plurality of knotless lash extensions in in a range between 4 mm and 8 mm (claim 8) and between 5 mm and 6 mm (claim 9) (see paragraph 12).
In regards to claim 15, Byrne teaches providing clusters of artificial lashes, where artificial hairs crisscrosses at least another of the artificial hairs (see e.g., at Figure 28).
In regards to claim 16, Byrne teaches a method of manufacturing a plurality of knotless lash extensions, the method comprising, for each of the plurality of knotless lash extensions forming an arrangement (paragraph 72) of a plurality of artificial hairs; joining the plurality of artificial hairs to a base (5); and disposing an adhesive layer at manufacture on at least a top surface of the base of a knotless lash extension of the plurality of knotless lash extensions wherein the bases of the plurality of knotless lash extensions are configured to attach to the user’s eyelid (paragraph 71). Byrne does not disclose wherein the adhesive layers of the plurality of knotless lash extensions are configured to attach to natural lashes at an underside thereof.
Cardellino teaches attached clusters of artificial knotless lash extension each comprising a base configured to attach to a user’s natural lashes at an underside thereof as shown in Figures to allow for “a seamless application that barely feels like it there” (see Article). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial lash extensions of Byrne be attached to the user’s natural lashes at an underside as taught by Cardellino to produce a seamless blend creating a more cohesive and authentic look.
Regarding claims 17 and 19, Byrne teaches the plurality of artificial hairs are comprised by a plurality of clusters of two or more artificial hairs of the plurality of artificial hairs (Figure 1 where any combination of plurality of hairs form a cluster) formed in a single step.
Regarding claim 18, Byrne teaches the base is a knotless base (paragraph 72).
Regarding claims 20-21, Byrne teaches at least some of the plurality of artificial hairs protrude from the base in different directions (see Figures 1-36).
In regards to claims 25-26 and 30, Byrne teaches a method comprising obtaining a plurality of knotless lash extensions (2, 3, 4, 5), each knotless lash extension of the plurality of knotless lash extensions comprising:
a base (5), a plurality of artificial hairs joined at the base, and
an adhesive layer applied on at least a top surface of the base of each of the plurality of knotless lash extensions (paragraph 71). Byrne does not disclose
affixing the plurality of knotless lash extensions to natural lashes along an underside of upper lashes thereof using the adhesive layer.
Cardellino teaches attached clusters of artificial knotless lash extension each comprising a base to a user’s natural lashes at an underside thereof as shown in Figures to allow for “a seamless application that barely feels like it there” (see Article). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial lash extensions of Byrne be attached to the user’s natural lashes at an underside as taught by Cardellino to produce a seamless blend creating a more cohesive and authentic look.
In regards to claims 22 and 28, Byrne teaches providing artificial lash arrays with a length in a range between about 5 millimeters and about 6 millimeters. (Page 4, Lines 8-9 which includes measurements that satisfy the claimed range).
Claims 10-12, 23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Byrne in view of Cardellino, as applied to claims 1, 16 and 26 above, in further view of Giuliano (US Pat # 2,812,768).
In regards to claim 12, Byrne teaches providing artificial lash hairs that extend from a knotless base that attaches to lashes of a user; but does not teach the clusters are joined at the base by heating. However, Giuliano teaches providing an artificial lash array structure is formed with a base including a filament (6) knotlessly connected to artificial lashes (8) with heating (Col 2, Lines 15-25). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the base of Byrne to be formed of the heated fiber/polymer strand, as taught by Giuliano, in order to provide longer arrays of artificial lashes.
In regards to claims 10-11, 23 and 27, Byrne provides a knotless base; but does not teach a thickness is 0.15mm. However, Applicant is noted that Applicant discloses that such dimension is critical in so far as it is only possible in knotless systems (see Paragraph 0043 of the Specification as originally filed). That is, as the prior art demonstrates a knotless base, the dimensions of such base lack criticality. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the base of Jones to be less than or equal to 0.15mm, as a matter of user preference for providing desired coverage.
Response to Arguments
Applicant's arguments filed 4/21/2026 have been fully considered but they are not persuasive.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Applicant’s argument states the amendments are not disclosed in the prior art; however, the claim amendment states “an adhesive layer pre-applied at manufacture to at least a top surface of the base” is disclosed in Byrne paragraph 71, “an adhesive strip can also be use, which can be pre-fitted to the base portion 5 during the manufacturing process”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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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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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
6/16/2026
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