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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/5/25 has been entered.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 5/10/23, and 7/31/24 was/were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “groupings” of claims 1-10 and 13.
Appropriate correction is required.
Drawings
The drawings were received on 5/10/23. These drawings are objected to.
The drawings are objected to because Figures 1-8 are titled improperly because the view numbers must be larger than the numbers used for reference characters (see 37 CFR 1.84(u)).
Figure 1 is objected to under 37 CFR 1.84 (m) because the figures contain shading, which fails to aid in understanding the invention and/or reduces legibility. Shading may be used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object; flat parts may also be lightly shaded, but such shading is preferred in the case of parts shown in perspective, not for cross sections. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
Figures 4A-4C are objected to for containing extraneous matter in the form of the words “FRONT”, “END”, “REAR”, “Top”, “AXIS”, “Bottom”, etc.
Figures 4A-4C are objected to for failing to comply with 37 C.F.R. 1.84(p)(5), which requires reference characters not mentioned in the description not appear in the drawings and reference characters mentioned in the description must appear in the drawings. In this case, reference characters “426” and “446” appear in the specification and not in the figures.
Figures 5D-5E and 6C-D is/are objected to under 37 C.F.R. 1.84(b)(1) because photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. In the instant case, the subject matter can be illustrated with black and white line drawings and a black and white photograph or photocopy is not the only practicable medium for illustrating the claimed invention; additionally, the photographs provided are not of sufficient quality to allow all details in the photographs to be reproducible in the printed patent. Therefore, the black and white photographs must be replaced with black and white line drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 is/are objected to because of the following informalities:
Claim 6: line 2, replace “lash extension” with ---lash extensions---.
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.
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.
Claim(s) 1-10, 13, 16-19 is/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 1: recites “a first plurality of lash extensions designed for a first arrangement…each of the first plurality of lash extensions comprising:…a first plurality of groupings of artificial hairs, each of the first plurality of groupings…a respective lash extension of the first plurality”. At the outset, the language “groupings” does not appear in applicant’s disclosure making it impossible to determine what this language should mean; additionally, the different language requiring “a first plurality of lash extensions”, “a first arrangement”, “a respective lash extension”, “a first plurality of groupings of artificial hairs”, these would all appear to be the same thing and not different things. A lash extension by definition is an arrangement of a grouping of hairs, so using three different terms to refer to the same thing makes the metes and bounds of the claim unclear. It is unclear if applicant is attempting to claim a false eyelash with the term “a first plurality of lash extensions” or if applicant is attempting to claim multiple false eyelashes with this language. For examination purposes, the claim will be treated as claiming a false eyelash because a false eyelash is a plurality of lash extensions typically joined to a base of some sort. It is also unclear if the claimed “groupings” form the arrangement or is “the arrangement” something else? The language “each of the first plurality of groupings” is also unclear because is this trying to recite “each grouping” or that there are multiple first pluralities of groupings? The language “each of the first plurality of groupings disposed adjacent to another grouping of the first plurality of groupings” also does not make sense because how can each of the groupings be adjacent to themselves and what is the “another grouping” if it is not one of the “plurality” already recited? The language “the first side of the first base” and “the third side of the second base” without antecedent basis. Furthermore, the language “lengths of the first plurality of groupings taper”; however the language “lengths taper” does not make sense because the length of something is a measurement and measurements do not taper. The definition of taper is to reduce in thickness or a gradual narrowing, but the length does not gradually narrow because it is a measurement and not a thickness. This makes it unclear what exactly applicant is trying to claim. This same error appears in the last clause with “lengths of the second plurality of groupings taper”. Additionally, the last line of the clause of this claim recites “wherein in the second arrangement artificial hairs of the second plurality of lash extensions”, but is this referring back to the “groupings of artificial hairs” or some other “artificial hairs”? The claims are replete with indefinite issues like those outlined above, making it impossible to determine the metes and bounds of the claim. Clarification or correction is requested.
Claim 3: recites “a first layout” and “a second layout”; however, claim 1 recites “a first arrangement” and “a second arrangement” so are these the same as the claimed “layouts” or different? It is unclear how the lashes form a first arrangement and a different first layout making the metes and bounds of the claims unclear. Clarification or correction is requested.
Claim 5: recites “at least one of the first side or the second side of the first base”; however, while claim 1 sets forth a first side and a second side of each of the plurality of lash extensions, it does not set forth sides of the first base. There is no antecedent basis for “the first side of the first base” or “the second side of the first base”. Clarification or correction is requested.
Claim 6: this claim in the third clause recites “align the length of the second base” and it is unclear what this means. For examination purposes, the claim will be treated as reciting “along the length of the second base”. Clarification or correction is requested.
Claim 10: this claim recites “in a first specified order” and “in a second specified order”, but the claims are drawn to a device and not a method making this language unclear. Additionally, the language “in a first specified order of the first arrangement the artificial hairs of the first plurality of groupings of each adjacent one of the first plurality of lash extensions is longer than the artificial hairs of the first plurality of groupings of a preceding one of the first plurality of lash extensions” is confusing and does not make sense. At the outset, as discussed above, the claims are drawn to a device and not a method, so there can be no “specified order” nor any “steps” for applying claimed. Additionally, the language “each adjacent one of the first plurality of lash extensions” is confusing and unclear as is the language “preceding”. As best understood, this claim appears to be attempting to claim that for each artificial eyelash (eyelash extension), the lengths of the artificial hairs are shorter at one end and gradually increase towards the opposite end; however, then that makes it unclear what the “lengths of the plurality of groupings taper in a first direction” as required by claim 1 is supposed to mean if not also this. The metes and bounds of the claim are unclear, applicant is reminded to use a single term throughout the claims to refer to a single feature. Clarification or correction is requested.
Claim 13: this claim recites “of any other one” in the last line. The claims are replete with this type of “another” “one other” “any other”, etc. These terms are improper and add to the clarity issues in the claims because it is impossible to determine how many lash extensions or artificial lashes or groupings or hairs are being claimed.
Claims 16-17: these claims repeat the errors encountered with claim 1 outlined above with respect to antecedent basis issues with “the first side of the first base” and “the third side of the second base”; as well as “each of the first plurality of clusters disposed adjacent to another cluster of the plurality of clusters”. Clarification or correction is requested.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 9 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9: this claim recites essentially method steps rather than any additional structure. Instead of adding structural limitations to the claims, this claim appears to incorporate already recited intended use limitations requiring “lash extensions is configured for arrangement…at the underside of the first upper natural lashes”, but this is not further limiting because it already amended into claim 1 and because any artificial eyelash can be glued to an upper or a lower side of a person’s lashes. Applicant can amend the claims to require some additional structure like an adhesive to overcome this issue.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4, 6-10, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Byrne (US 20070272264).
Claims 1 and 4: Byrne discloses a lash extension kit/system comprising: a first plurality of lash extensions (2) designed for a first arrangement (see Fig 1) to create the appearance of eyeliner at a first eye of a user [0010], each of the first plurality of lash extensions comprising: a first lateral end (see annotations) opposite a second lateral end; a first front side opposite a rear second side; a first base disposed between the first lateral end and the second lateral end, the first base can attach to an underside or an upper side of a first natural eyelash [0070] and a first plurality of groupings of artificial hairs [0073] (see annotations) attached to the first base, each of the groupings is disposed adjacent to another grouping along a length of the first base (see Fig 1 & annotations) and extending from a front first side of the base; the lengths of the artificial hairs in the first plurality of groupings decrease when moving in a first direction from the first lateral end to the second lateral end (see annotations) of the extension, which as best understood is what is meant by “lengths…taper” and in the arrangement, the first plurality of lash extensions taper because all of the individual lashes are tapered [0090]. The first eye can include more than one of the first plurality of lash extensions (2 & 3 & 4) and the length of the artificial lash hairs along each of the first plurality also decrease to create a fuller look [0090]. The kit [0011] can include at least two sets of lashes [0011] with one for each eye [0058] so the first plurality of lash extensions would be duplicated in a mirror image to be affixed to the second eye so that the person’s face is symmetric as is known in the art (see Fig 37 & annotations). The second plurality of lash extensions (see annotations) form a second arrangement that is a mirror image of the first arrangement [0058] (see Fig 37 & annotations) for application to a second eye (see Fig 37) [0058] each of the second plurality of lash extensions comprises a third lateral end (see annotations) opposite a fourth lateral end (see annotations); a third side opposite a fourth side; a second base disposed between the third lateral end and the fourth lateral end, the second base can be attached to an underside of a second natural eyelash [0061 & 0058] in the second arrangement (see annotations); and a second plurality of groupings of artificial hairs [0073] attached to the second base, each of the second plurality of groupings disposed adjacent to another grouping of the second plurality of groupings along a length of the second base (see annotations) and lengths of the second plurality of groupings decrease in a second direction from the fourth lateral end to the third lateral end with this direction being opposite the first direction (see annotations). As best understood, this is what is meant with the language that the artificial hairs of the second plurality of lash extensions in the arrangement taper and that the lengths of the second plurality of groupings taper.
Claim 2: Byrne discloses for each of the first plurality of lash extensions, the first plurality of groupings slants, or curves, in the second direction (see annotations) and for each of the second plurality of lash extensions, the second plurality of groupings slants, or curves, in the first direction (see annotations).
Claim 3: Byrne discloses the first arrangement, or layout, of the first plurality of groupings being asymmetric about a first center axis bisecting the first base because the first groupings have lengths that decrease in the first direction so they are asymmetric at least in length about the center axis and the same is true of the second arrangement, or layout, of the second plurality of groupings because it is a mirror image of the first arrangement.
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Claim 6: Byrne discloses each of the first plurality of lash extensions comprising a third plurality of groupings (13) of artificial hairs [0073] attached to the first base and disposed adjacent to other groupings of the third plurality of groupings along the length of the first base and the third plurality of groupings can be arranged so as to cross the first plurality of groupings because the groupings can be arranged in V shape (see Figs 5 & 6) between ends of the hairs of the first and third groupings (see Figs 5 & 6). Each of the second plurality of lash extensions comprises a fourth plurality of groupings (13) of artificial hairs [0073] attached to the second base along the length of the second base (see Fig 1 & annotations). The fourth plurality of groupings can cross the second plurality of groupings because the groupings can be arranged in V shape (see Figs 5 & 6) between ends of the hairs of the second and fourth groupings (see Figs 5-6).
Claim 7: Byrne discloses the artificial hairs of the first plurality of groupings (11) have a longer length than the artificial hairs of the third plurality of groupings (13) and the artificial hairs of the second plurality of groupings are longer than the artificial hairs of the fourth plurality of groupings (see annotations).
Claim 8: Byrne discloses the artificial hairs illustrated in Figure 2 have a fine mean filament thickness [0118] and this is how the artificial hairs of the third plurality of groupings are illustrated (see Figs 1-2) so the artificial hairs of the third plurality of groupings are interpreted to have a fine mean filament thickness while the artificial hairs of the first plurality of groupings are illustrated the same as the artificial hairs (57) in Figure 5 which are described as being relatively thick [0228], which the office interprets as the artificial hairs of the first plurality of groupings having a diameter that is greater than the diameter of the artificial hairs of the third plurality of groupings.
Claim 9: the lashes are able to be arranged adjacent to each other (see annotations) [0060] to from the first and second arrangements (see annotations) and the lashes can be stacked [0061] and attached to the natural lash line [0058], which the office interprets as the first and second plurality of lash extensions are able to attached at an underside of the natural lashes if so desired. Regarding the claimed invention being “configured for arrangement to another…at the underside of the…eyelashes” as recited in claim 9, the applicant is advised that a recitation of the intended use of an 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. In this case, the patented structure of Byrne was considered capable of performing the cited intended use.
Claim 10: Byrne discloses the first arrangement including adjacent first lash extensions of the first plurality of lash extensions having artificial hairs of the first plurality of groupings progressively increasing in the first direction (see annotations) and the second arrangement is a mirror image of the first arrangement so it also has this feature (see annotations).
Claim 13: Byrne discloses the artificial hairs of the first plurality of groupings of one of the first plurality of lash extensions being shorter than the artificial hairs of a second one of the first plurality of lash extensions (see annotations) [0090].
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.
Claim(s) 5 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 20070272264) in view of Chipman (US 20220338585).
Claim 5: Byrne discloses stacking the eyelashes [0061] to create a fuller look and discloses the invention essentially as claimed except for the first base being substantially flat. Chipman, however, teaches an artificial eyelash extension system (see Fig 31A) including a plurality of first eyelash extensions (102 & 104) for attachment to a first natural eyelash (12, Fig 31A) of a user’s first eye including attachment to an underside and a topside of the person’s natural eyelash (see Fig 31A) and wherein each first eyelash extension of the plurality of first eyelash extensions includes a flat base (16, see Figs 30 & 31A) in order to make stacking them easier (see Fig 31A). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the eyelash system of Byrne by providing the first base and the second base as flat in view of Chipman in order to simplify stacking the lashes during application as taught by Chipman.
Claims 16-18: Byrne discloses a method comprising obtaining a lash extension kit/system comprising: a first plurality of lash extensions (2) of a set of lash extensions, (see Fig 1) [0010], each of the first plurality of lash extensions comprising: a first lateral end (see annotations) opposite a second lateral end (see annotations); a first front side opposite a rear second side; a first base disposed between the first lateral end and the second lateral end, and a first plurality of clusters, or groupings, of artificial hairs [0073] (see annotations) attached to the first base, each cluster is disposed adjacent to another cluster along a length of the first base (see Fig 1 & annotations) and extending from a front first side of the base; the lengths of the artificial hairs in the first plurality of groupings decrease when moving in a first direction from the first lateral end to the second lateral end (see annotations) of the extension, which as best understood is what is meant by “lengths…taper” and in the arrangement, the first plurality of lash extensions taper because all of the individual lashes are tapered [0090]. The first eye can include more than one of the first plurality of lash extensions (2 & 3 & 4) and the length of the artificial lash hairs along the length each of the first plurality of groupings/clusters increase from an inner corner of each eye to an outer corner of each eye to create a fuller more natural look [0090]. Applying an adhesive to each of the lash extensions [0071] and attaching the lashes to a user’s natural lashes by stacking [0061]. Arranging the first plurality of lash extensions in a first arrangement (see Fig 1 & annotations) where lengths of the first plurality of clusters decrease in the first direction, which as best understood is what is meant by the “lengths taper”, toward an inner corner of the first eye (see Fig 37) [0090]. The kit [0011] can include at least two sets of lashes [0011] with one for each eye [0058] so the first plurality of lash extensions would be duplicated in a mirror image to be affixed to the second eye so that the person’s face is symmetric as is known in the art (see Fig 37 & annotations). The second plurality of lash extensions (see annotations) form a second arrangement that is a mirror image of the first arrangement [0058] (see Fig 37 & annotations) for application to a second eye (see Fig 37) [0058] each of the second plurality of lash extensions comprises a third lateral end (see annotations) opposite a fourth lateral end (see annotations); a third side opposite a fourth side; a second base disposed between the third lateral end and the fourth lateral end, the second base can be attached to an underside of a second natural eyelash [0061 & 0058] in the second arrangement (see annotations); and a second plurality of groupings of artificial hairs [0073] attached to the second base, each of the second plurality of groupings disposed adjacent to another grouping of the second plurality of groupings along a length of the second base (see annotations) and lengths of the second plurality of groupings decrease in a second direction from the fourth lateral end to the third lateral end with this direction being opposite the first direction (see annotations). As best understood, this is what is meant with the language that the artificial hairs of the second plurality of lash extensions in the arrangement taper and that the lengths of the second plurality of groupings taper. The second plurality of lashes are also applied using adhesive [0071].
Byrne discloses the artificial lashes can be attached to the natural eyelashes by stacking [0061] and discloses the method essentially as claimed except for applying the adhesive to an underside of the user’s natural eyelashes and applying at least one of the first plurality of lashes and one of the second plurality of lashes to the underside of the user’s natural eyelashes.
Chipman, however, teaches a method of applying an artificial eyelash extension system to a user’s natural eyelash (12, see Fig 31A) including providing a plurality of first eyelash extensions (102 & 104) for attachment to a first natural eyelash (12, Fig 31A) of a user’s first eye including attachment to an underside and a topside of the person’s natural eyelash (see Fig 31A) using adhesive [0012] that is applied thereto when the lashes are applied thereto (see Fig 31A). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the method of Byrne by providing the first base and the second base stacking on both a bottom and top of the natural lashes in view of Chipman in order to simplify stacking the lashes during application as taught by Chipman. The proposed modification would result in affixing the first plurality of lash extensions of the first arrangement to the underside of the first upper natural eyelashes of the first eye and affixing the second plurality of lash extensions of the second arrangement to the underside of the second upper natural eyelashes of the second eye.
Claim 19: Modified Byrne teaches the method of claim 16 and teaches arranging the first arrangement at the underside of the first upper natural eyelashes of the first eye and Byrne further discloses the first plurality of lash extensions being arranged adjacent each other from an outer corner to an inner corner of the first eye (see annotations).
Response to Arguments
Applicant’s arguments filed 2/5/25 have been considered but are moot because applicant amended the claims, which required new ground of rejection as outlined above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 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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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772