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 without traverse of claims 1-15 in the reply filed on 09/04/2025 is acknowledged. Examiner notes that claims 14-15 are misidentified as withdrawn in the amendment filed 09/04/25. This typographical error should be corrected in reply to this action.
Claims 16-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/04/2025.
Claim Objections
The following claims are objected to because of these informalities:
In claim 1, lines 2-3 "the naked eyelash extension system comprises eyelash filaments" should read “the one or more naked eyelash extension systems comprises eyelash filaments” for clarity and consistency.
In claim 4, lines 1-2 and claim 7, line 4 “the naked eyelash extension system” should read “the one or more naked eyelash extension systems” for clarity and consistency.
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.
Claims 6 and 15 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 6, line 1 recites "an adhesive element". It is unclear whether this element is the same or different than the one recited in the parent claim. For the purpose of examination, claim 6 reads on "the adhesive element".
Claim 15, line 2 recites "the other lateral edge". This term does not have antecedent basis in this claim or the parent claims. For the purpose of examination, claim 15 reads on "another lateral edge".
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.
Claims 1, 4, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hochi (US PG Pub 2012/0180804).
Regarding claim 1, Hochi teaches a method of manufacturing an eyelash extension system (abstract, Fig. 6, and sections cited below) comprising:
providing one or more naked eyelash extension systems (hair segment unit 3A of para. 0073 and Fig. 6C) onto a stage (para. 0073 and as shown in Fig. 6D), wherein the one or more naked eyelash extension systems comprises eyelash filaments (hair segments 3 in Fig. 6C) extending from a first surface of an eyelash support strip (horizontal strip to left of label 3b in Fig. 6C; see also strip 31 in Fig. 2F), and wherein the stage comprises a plurality of retaining members (pair of robot shafts 15 in Fig. 6C and para. 0071); and
attaching an adhesive element (base 1M in Fig. 6A and labeled as base 1 in Figs. 6B, 6D having bonding layer 4 per paras. 0068-0069) from a tape assembly (reel 13) to a second surface of the eyelash support strip (as shown in Figs. 6A, 6B, and 6D; see also paras. 0066-0067, 0068-0069, and 0072-0073), wherein the eyelash support strip is held in place by the retaining members during the attaching step (as shown in Fig. 6D).
Regarding claim 4, Hochi teaches the attaching step comprises pushing the one or more naked eyelash extension systems onto the adhesive element using the plurality of retaining members (as shown in Fig. 6D and per para. 0073).
Regarding claim 8, Hochi teaches the adhesive element is an elongated substrate having a first and a second surface (as shown in Fig. 6A with top and bottom surfaces), and wherein an adhesive is disposed on each of the first (bonding agent of para. 0069 on top surface) and second surface (adhesive layer 7 on bottom surface of base 1 per para. 0054 and as shown in Fig. 1C).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hochi, as applied to claim 1 above, in view of Lee (US PG Pub 2016/0324241A2).
Regarding claim 2, Hochi does not teach this feature.
However, Lee teaches a method of manufacturing an eyelash extension system (abstract, para. 0120) wherein the step of attaching an adhesive element to a surface of the eyelash support strip comprises pushing the adhesive element onto the surface using a pushing plate (as shown for plate 110 in Figs. 8-11 and paras. 0121 and 0122) whereby the pushing plate aids in attachment and positioning of the adhesive element 20 to the narrow support strip (per paras. 0121-0122 and as shown in Figs. 11).
In view of Lee’s teachings, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Hochi’s method with Lee’s pushing plate and pushing step to predictably and more reliably ensure attachment and positioning of the adhesive element to the support strip.
Regarding claim 7, Lee teaches the pushing plate comprises a plate having a proximal end that approximates a curvature of the eyelash support strip (as shown in Fig. 11), and wherein the pushing step comprises pushing the adhesive element through the tape assembly and onto the second surface of the eyelash support strip of the one or more naked eyelash extension systems with the proximal end of the pushing plate (as shown in Fig. 11 of Lee and wherein the pushing of the adhesive element through the tape assembly with the end of the pushing plate met by the combination of Hochi and Lee’s teachings).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hochi, as applied to claim 1 above, in view of Tanaka (CA 1328813C).
Regarding claim 3, Hochi does not teach this feature.
However, Tanaka teaches that an adhesive element for an eyelash extension system (abstract) may advantageously have a thickness of 0.5 mm (lines 25-30), thus falling within the claimed range, and rendering it obvious as a workable adhesive element thickness in Hochi’s method.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hochi, as applied to claim 1 above, in view of Wilkinson (US PG Pub 2013/0042884).
Regarding claim 5, Hochi does not teach this feature.
However, Wilkinson teaches a method of manufacturing an eyelash extension system (abstract) using a plurality of retaining members on a stage (pins 109 on stage 106 in Fig. 1A-2) and arranged in a curved line to approximate a curvature of the eyelash support strip (as showin in Figs. 1A-2 and 1B-2).
In view of Wilkinson’s teachings, it would have been obvious to one of ordinary skill to modify Hochi’s method to utilize Wilkinson’s retaining members arranged in a curved line to predictably obtain means to ensure that the eyelash filaments remain even spaced apart throughout the manufacturing process.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hochi, as applied to claim 1 above, in view of Orlandini (US Patent 4,957,234).
Regarding claim 6, Hochi does not explicitly teach this feature.
However, Orlandini teaches an adhesive element application method and apparatus (abstract) wherein the tape assembly comprises the adhesive element held between two horizontally extending rails (as shown for the unlabeled pairs of rails in region 4a in Figs. 6a and shown with the adhesive tape 2 in between them in Fig. 2) wherein the rails ensure that the tape reel and tape are kept in place during tape application (as shown in Fig. 2).
In view of Orlandini’s teachings, it would have been obvious to one of ordinary skill to modify Hochi’s method to utilize Orlandini’s horizontally extending rails in Hochi’s tape assembly to predictably ensure that the tape reel and tape are kept in place during tape application (as shown in Fig. 2).
Allowable Subject Matter
Claims 9-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and all intervening claims along with correction for the objection to claim 1.
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, and rewritten in independent form to include all of the limitations of the base claim and all intervening claims along with correction for the objection to claim 1.
Regarding claim 9, the prior art of record does not teach, suggest, or render obvious a method of manufacturing an eyelash extension system comprising:
attaching an adhesive element which is an elongated substrate from a tape assembly to a second surface of an eyelash support strip comprising eyelash filaments extending from a first surface of the eyelash support strip,
wherein the adhesive element has one or more apertures along a length of the elongated substrate,
in combination with the other features in the claim.
Hochi and Lee (cited above) are the closest prior art of record and do not singly or in combination teach or suggest the combination of features listed above for claim 9.
Conclusion
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/JIMMY R SMITH JR./Examiner, Art Unit 1745
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