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 .
Response to Amendment
The Examiner acknowledges the amendments. The previous art rejections are withdrawn. New rejections are set forth herein and are made final.
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.
Claim 39 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,793,298. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following correlation:
Instant Application
US 11793298
39. (New) A hair brush comprising an array of bristles, each bristle extending from a base to a free end, at least some or all of the bristles comprising a first portion, towards the base of the bristle, having a relatively large cross-sectional area and an elongate second portion, towards the free end of the bristle, having a relatively small cross- sectional area, the first portion having a non-circular cross-section at its base, which gradually transitions to a substantially circular cross-section at the point where it meets the second portion.
A device for styling hair, the device comprising:
a solid flat top surface, from which an array of bristles independently extend, each from a base to a free end;
at least some or all of the bristles comprising a first-portion which tapers from the base and a second portion which extends from the first portion to the free end, wherein the first portion is wider relative to the second portion, and has a non-circular transverse cross-section at its base which gradually transitions to a circular cross section at which it meets the second portion, the bristles being arranged in two or more spaced apart, offset, rows; further wherein at least one of:
a) in at least half of the rows, centre lines of the rows are spaced apart such that at least part of the first portion of bristles in one row extends between adjacent bristles in an adjacent row, the bristles are sized and arranged so that, in use, the second portion serves to penetrate and divide hair between the bristles and the first portion of the bristles enables tension to be applied to the hair when hair flows between the bristles; and
b) when viewed perpendicular to the rows, in at least half of the rows, the width of the first portion of the bristles in one row is, over part of their length, the same or greater than the space between adjacent bristles in an adjacent row so as to partially occlude the space between bristles in an adjacent row, the bristles are sized and arranged so that, in use, the second portion serves to penetrate and divide hair between the bristles and the first portion of the bristles enables tension to be applied to the hair when hair flows between the bristles.
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 44-47 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 44 depends from itself. This is improper. Since it is unclear which claim it is supposed to depend from the claim is determined to be indefinite. For examination purposes, the claim is presumed to depend from claim 39.
Claims 45-47 are rejected due to dependency.
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 39, 42, 43, 48-57, and 59-60 are rejected under 35 U.S.C. 103 as being unpatentable over Matheiz (US 2009/0083925) in view of Weihrauch (US 2005/0160546).
Regarding claim 39 Mathiez discloses a hair brush comprising an array of bristles (Paragraph 153; Figure 25 and 26b), each bristle extending from a base to a free end, at least some or all of the bristles comprising a first portion, towards the base of the bristle, having a relatively large cross-sectional area and an elongate second portion, towards the free end of the bristle, having a relatively small cross- sectional area, the first portion having a non-circular cross-section at its base, which gradually transitions to a substantially circular cross-section at the point where it meets the second portion (best shown in Figure 14 and 15; Paragraph 150-151).
Mathiez fails to explicitly disclose wherein the length of the second portion is no greater than twice the length of the first portion.
Weihrauch teaches a bristle wherein the length of the second portion is no greater than twice the length of the first portion (Paragraph 11). 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 bristle lengths as taught by Weihrauch. Such a modification would allow a manufacturer to design a bristle with a desired deformation behavior and bend recovery, which leads to the bristle having an efficient cleaning effect (Weihrauch Paragraph 10)
Regarding claim 42 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the length of the bristles having first and second portions is no greater than nine times its maximum width (Paragraph 146 has a l/a ratio of 5-100, where a is the diameter at the second portion , thus the wider portion would decrease this ratio).
Regarding claim 43 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the length of the bristles having first and second portions is no less than twice its maximum width (Paragraph 146 has a l/a ratio of 5-100).
Regarding claim 48 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein all opposed edges of the first portion taper towards each other with a minimum average angle of at least 5 degrees between the opposed edges over the length of the first portion (Paragraph 146).
Regarding claim 49 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the non-circular cross-section is an oval cross-section (Paragraph 147-149).
Regarding claim 50 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein edges of the first portion lying on a long axis of its oval cross-section approach each other in a curved path over the length of the first section and edges of the first portion lying on a short axis of its oval cross section approach each other in a substantially straight path over the length of the first section (Paragraph 147-149). .
Regarding claim 51 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein all opposed edges of the second portion taper towards each other with a maximum average angle of 3 degrees between the opposed edges over the length of the second portion (Paragraph 146).
Regarding claim 52 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the array of bristles is formed from two or more adjacent, spaced apart, offset, rows of bristles (Figure 26b).
Regarding claim 53 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 52 wherein over each row of the array the bristles are all of substantially the same shape (Figure 26b).
Regarding claim 54 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 52 wherein each row of bristles is substantially straight (Figure 26b).
Regarding claim 55 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 52 wherein each row of bristles is generally parallel (Figure 26b).
Regarding claim 56 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 52 wherein the rows are offset relative to each other so that the centre of each bristle in a row is substantially aligned with the midpoint between bristles in an adjacent row (Figure 38c).
Regarding claim 57 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the non-circular cross-sectional shape of each bristle with a non-circular cross-section over at least part of its height is aligned in substantially the same direction (Figure 26b).
Regarding claim 59 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the bristles are spaced apart from one another (Mathiez Figure 26b).
Regarding claim 60 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein the length of the second portion is no greater than the length of the first portion (Weihrauch Paragraph 11).
Claims 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Matheiz (US 2009/0083925) in view of Weihrauch (US 2005/0160546) in view of Sakurai (US 2009/0013488)
Regarding claim 40 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 (as best understood) . Although the figures show a large variety in diameters from the base to the free end, Mathiez fails to explicitly disclose when viewed in the same direction, the width of the widest part of the first portion of the bristles comprising the first and second portions is at least twice, or three times, the width of the bristle in the second portion at or near to its free end.
Sakurai teaches a brush wherein the width of the widest part of the first portion of the bristles comprising the first and second portions is at least twice, the width of the bristle in the second portion at or near to its free end (Paragraph 76 discusses 40%, which means the first portion is over twice the second size). 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 diameters of the bristle such that the base was at least twice the diameter of the free end, as taught by Sakurai. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art see MPEP 2144.04). A modification to length or diameter would allow the bristle to have a different rate of flex, which is beneficial over traditional natural hairs/fibers as originally discussed in at least Paragraph 83-86 of Mathiez.
Regarding claim 41 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 (as best understood) . Although the figures show a large variety in diameters from the base to the free end, Mathiez fails to explicitly disclose when viewed in the same direction, the width of the widest part of the first portion of the bristles comprising first and second portions is no more than fifteen, times the width of the bristle in the second portion at or near its free end.
Sakura teaches a brush wherein when viewed in the same direction, the width of the widest part of the first portion of the bristles comprising first and second portions is no more than fifteen, times the width of the bristle in the second portion at or near its free end (Paragraph 76). 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 diameter of the bristle such that the ratio of the first portion diameter in comparison to the second portion diameter does not exceed 12 times. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art see MPEP 2144.04). A modification to length or diameter would allow the bristle to have a different rate of flex, which is beneficial over traditional natural hairs/fibers as originally discussed in at least Paragraph 83-86 of Mathiez.
Claims 44-47 are rejected under 35 U.S.C. 103 as being unpatentable over Matheiz (US 2009/0083925) in view of Weihrauch (US 2005/0160546) in view of Barber (US 6,179,887).
Regarding claim 44 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39 wherein opposite sides of the second portion taper towards each other with a maximum average angle of 5 degrees between opposed edges over the length of the second portion (Paragraph 146). Matheiz fails to explicitly disclose wherein two opposed edges of the first portion of those bristles having first and second portions taper towards each other with a minimum average angle of at least 10 degrees between the opposed edges over the length of the first portion.
Barber teaches a brush wherein two opposed edges of the first portion taper towards each other with a minimum average angle of at least 10 degrees (Column 11 Lines 41-43 teaches up to 25 degrees). 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 angle of the first portion to be larger than 10 degrees as taught by Barber. Such a modification is viewed as a change in size, which has been held to be of routine by one skilled in the art see MPEP 2144.04). A modification to length or diameter would allow the bristle to have a different rate of flex, which is beneficial over traditional natural hairs/fibers as originally discussed in at least Paragraph 83-86 of Mathiez.
Regarding claim 45 Mathiez in view of Weihrauch in view of Barber discloses the hair brush as claimed in claim 44 wherein two opposed edges of the first portion taper towards each other with a minimum average angle of at least 15 degrees (Barber Column 11 Lines 41-43 teaches up to 25 degrees).
Regarding claim 46 Mathiez in view of Weihrauch in view of Barber discloses the hair brush as claimed in claim 44 wherein the angle between the opposed edges of the first portion increases from the base of the bristle to the end of the first portion ( Matheiz Paragraph 41 and 150 discusses how it’s a curved profile).
Regarding claim 47 Mathiez in view of Weihrauch in view of Barber discloses the hair brush as claimed in claim 44 wherein the opposed edges of the first portion are curved portion ( Matheiz Paragraph 41 and 150 discusses how it’s a curved profile).
Claim 58 is rejected under 35 U.S.C. 103 as being unpatentable over Matheiz (US 2009/0083925) in view of Weihrauch (US 2005/0160546) in view of Tucker (US D223880)
Regarding claim 58 Mathiez in view of Weihrauch disclose the hair brush as claimed in claim 39. Matheiz fails to explicitly disclose in a single embodiment, wherein the long axis of the non- circular cross-section of each bristle is aligned with the direction of the long row of which it forms the part .
Tucker teaches a hair device wherein the long axis of the non- circular cross-section of each bristle is aligned with the direction of the long row of which it forms the part (Figure 3). 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 configuration of Mathiez bristles to be formed into a comb as taught by Tucker. Such a modification would allow the bristles to resist bending along the direction parallel to the length of the comb.
Response to Arguments
Applicant’s arguments, filed 6/5/2026, with respect to the rejection(s) of claim(s) 39 under 102-Mathiez have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 103- Mathiez in view of Weihrauch.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TOM R RODGERS whose telephone number is (313)446-4849. The examiner can normally be reached Monday thru Friday 8AM-5PM EST.
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/TOM RODGERS/ Primary Examiner, Art Unit 3723
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