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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/27/2023 is being considered.
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 40-58 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.
Claims 40-58 are dependent on cancelled claims. It is unclear what each claim is supposed to depend from. As such the claims are determined to be indefinite. As discussed in the interview, the dependent claims shall be as follows:
Claims 40-44, 48-52, 57 and 58 should depend from Claim 39.
Claims 45-46 should depend from claim 44
Claim 47 should depend from claim 46
Claims 53-56 should depend from claim 52.
Claim 40 recites the limitation “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.” A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 40 recites the broad recitation “at least twice”, and the claim also recites “or three times” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For Examination purposes, it will be assumed to be at least twice the diameter.
Similarly claim 41 recites “the width of the widest part of the first portion of the bristles comprising first and second portions is no more than twelve, or fifteen, times the width of the bristle in the second portion at or near its free end.” For the same reasoning to claim 40, this is determined to be indefinite. For Examination purposes, the claim will be interpreted as “the width of the widest part of the first portion of the bristles comprising first and second portions is no more than twelve
Similarly claim 42 recites “wherein the length of the bristles having first and second portions is no greater than seven, or nine, times its maximum width.” For the same reasoning to claim 40, this is determined to be indefinite. For Examination purposes, the claim will be interpreted as “wherein the length of the bristles having first and second portions is no greater than
Similarly claim 42 recites “wherein two opposed edges of the first portion taper towards each other with a minimum average angle of at least 15 or 18 degrees.” For the same reasoning to claim 40, this is determined to be indefinite. For Examination purposes, the claim will be interpreted as “wherein two opposed edges of the first portion taper towards each other with a minimum average angle of at least
Claim Rejections - 35 USC § 102
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 39, 42, 43, and 48-57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matheiz (US 2009/0083925).
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).
Regarding claim 42 Mathiez discloses 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 discloses 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 discloses 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 discloses 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 discloses 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 discloses 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 discloses 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 discloses 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 discloses the hair brush as claimed in claim 52 wherein each row of bristles is substantially straight (Figure 26b).
Regarding claim 55 Mathiez discloses the hair brush as claimed in claim 52 wherein each row of bristles is generally parallel (Figure 26b).
Regarding claim 56 Mathiez discloses 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 discloses 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).
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 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Matheiz (US 2009/0083925) in view of Sakurai (US 2009/0013488)
Regarding claim 40 Mathiez discloses 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,
Regarding claim 41 Mathiez discloses 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 twelve, or 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 twelve, or 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 Barber (US 6,179,887).
Regarding claim 44 Mathiez discloses 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 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 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 Barber discloses the hair brush as claimed in claim 46 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 Tucker (US D223880)
Regarding claim 58 Mathiez discloses 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.
Conclusion
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