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 .
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 each of the plurality of knotless lash extensions, wherein the adhesive layers of the plurality of knotless lash extensions are configured to attach at least the bases of the plurality of knotless lash extensions to the user’s eyelid (see Figure 37). Byrne does not disclose the lash extensions to natural lashes at an underside.
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 Pays et al. 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 crisscross 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 a knotless lash extension of the plurality of knotless lash extensions (paragraph 71). Byrne does not disclose wherein the adhesive layers of the plurality of knotless lash extensions are configured to attach at least the bases of the plurality of lash extensions attach to natural lashes at an underside thereof.
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 Pays et al. 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 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 Pays et al. 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 9/19/2025, with respect to 112(b) have been fully considered and are persuasive.
Applicant's arguments filed 9/19/2025, regarding 35 U.S.C. § 103(a) Claims 1–3, 5–9, 15–22, 25–26, 28, and 30 have been fully considered but are not persuasive. The rejection under 35 U.S.C. § 103(a) is therefore maintained for the following reasons.
In response to applicant’s argument that the combination of Byrne and Cardellino do not teach or suggests the claimed features. Applicant argues that the combination of Byrne and Cardellino fails to teach or suggest (1) “a plurality of knotless lash extensions” and (2) “an adhesive layer pre-applied at manufacture to at least a top surface of each of the plurality of knotless lash extensions… configured to attach… to natural lashes at an underside thereof.” Applicant’s position is not persuasive.
Byrne explicitly teaches an eyelash adornment apparatus comprising a plurality of lash subassemblies, each including a base portion that can be fitted to the eyelid and which may include an adhesive strip pre-fitted during manufacture (Byrne ¶[0071]). The lash subassemblies are described as being formed without requiring knots in certain embodiments (Byrne ¶[0072]) — stating “a number of known techniques. In some such processes, the lash filaments are molded into plastic or elastomeric strips, which then serve as the mounting portion during use…other manufacturing processes make use of microbonding. It is even possible to co-mold the filaments and mounting portion in order to form an integral lash subassembly”, thereby encompassing both knotted and knotless configurations. The claim term “knotless” is therefore met by Byrne’s disclosure of embodiments where filaments are joined at the base without knots or by adhesive or fusing methods.
In response to applicant’s argument that Byrne does not disclose an adhesive layer pre-applied at manufacture, Byrne’s teaching that “an adhesive strip can be pre-fitted to the base portion… during manufacture” directly corresponds to the claimed adhesive layer pre-applied at manufacture. The distinction Applicant attempts to draw between “a base portion” and “a top surface of the base portion” is not persuasive, as Byrne’s adhesive strip necessarily covers at least one surface of the base that is intended to make adhesive contact with another surface (eyelid or lash). The claim does not exclude this configuration, since the claim language states “to at least a top surface of each of the plurality of knotless lash extensions” and the knotless lash extensions comprises “a base; a plurality of clusters of artificial hairs”.
In response to applicant’s argument that that Byrne and Cardellino teach away from one another. This argument is not persuasive. Byrne describes difficulties associated with applying multiple small individual lashes and acknowledges the limitations of traditional lash application techniques. Cardellino provides a known alternative method, applying clusters under the lash line, that addresses precisely these issues. A person of ordinary skill in the art would have been motivated to combine Byrne’s pre-manufactured, adhesive-equipped lash subassemblies with Cardellino’s under-lash application technique to achieve a more user-friendly and stable lash application system. Such a combination represents a predictable use of known techniques to improve prior art devices, consistent with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The fact that Byrne notes challenges with individual lashes does not constitute a “teaching away.” Byrne does not discourage combining its lash subassemblies with improved placement or attachment methods. Rather, Byrne identifies problems that would motivate a skilled artisan to seek improvements,such as those taught by Cardellino.
In response to applicant argument that Cardellino’s lashes are designed for application above the lash line and therefore cannot reasonably be interpreted as “configured to attach… to natural lashes at an underside thereof.” This is incorrect. Cardellino explicitly discloses attaching clusters beneath the natural lash line using adhesive applied to the top of the artificial lash clusters. (Cardellino, page 2: “…applied regular Ardell Duo glue on the top of the false lashes, and then used tweezers to carefully place the lash cluster underneath her natural lashes…”). This directly corresponds to the claimed configuration in which “an adhesive layer [on the top surface of the lash extension] attaches the base to the underside of the natural lashes.” Thus, Cardellino teaches the precise geometric and functional configuration recited in claim 1.
Applicant asserts that Cardellino’s “cluster” of lashes is not equivalent to “a plurality of clusters of artificial hairs joined at the base.” This interpretation is overly narrow and inconsistent with the ordinary meaning of the claim. Byrne’s lash subassemblies inherently include multiple clusters or groups of lash filaments joined at a base, while Cardellino’s cluster application method confirms that such grouped lashes are conventionally understood and used as clusters. A skilled artisan would recognize that combining Byrne’s manufacturing techniques (pre-applied adhesive and subassembly construction) with Cardellino’s underside placement would yield the claimed kit.
In response to applicant’s argument that the rejection is based on impermissible hindsight is unpersuasive. The rationale to combine Byrne and Cardellino arises naturally from the references themselves: Byrne identifies the difficulty and limitations in traditional lash application and Cardellino teaches a simple, improved method of applying lashes under the lash line using adhesive applied to the lash base’s upper surface. The combination would have predictably yielded a pre-manufactured, adhesive-backed lash kit configured for under-lash attachment, as claimed. No element of the claimed invention is beyond the capabilities or teachings of the combined references.
Applicant’s arguments regarding dependent claims (10–12, 23, and 27) rely solely on the alleged deficiencies of the base claims. As discussed above, the base claims are unpatentable over the cited combination. Giuliano further teaches relevant enhancements to lash materials and configurations, rendering the dependent claims obvious for the reasons already stated in the Office Action.
For the reasons discussed above, Applicant’s arguments have been fully considered but are not persuasive. Byrne and Cardellino, in combination, teach or suggest all limitations of independent claims 1, 16, and 25, and it would have been obvious to one of ordinary skill in the art to combine the teachings to achieve the claimed invention. Accordingly, the rejections of claims 1–3, 5–9, 15–22, 25–26, 28, and 30 under 35 U.S.C. § 103(a) over Byrne and Cardellino, and claims 10–12, 23, and 27 over Byrne, Cardellino, and Giuliano, are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
10/14/2025