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 .
Claim Objections
Claims 1, 3, 10, and 26 are objected to because of the following informalities:
Claim 1: page 2, line 1 please change “a handle length” to - -the handle length- -.
Claim 3, lines 4 and 5 please change “a pinned portion and an unpinned portion” to - -the pinned portion and the unpinned portion- -.
Claim 10, line 2 please change “a curvature to match a head shape” to - -a curvature configured to match a head shape- -.
Claim 26, line 6 please change “a tape strip” to - -said tape strip- -.
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.
Claims 1-3, 5-8, 10, and 20-26 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 1 preamble states “An eyelash isolation tool…”; therefore, the claims should be drawn to the tool only. Line 13 sets for “a tape strip configured to selectively hold said handle portion to the forehead”; the tape strip does not further define the eyelash isolation tool. It appears as though applicant is setting forth a kit claim including additional items which is improper. The examiner will treat the claims as a kit.
Claims 25 and 26 state “said handle portion includes a flat, widened surface region” it is unclear from the specification and drawings what the “widened surface” is referring too. It appears the handle is a flat, narrow surface; appropriate correction is required.
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.
Claim(s) 1-3, 6-7, 10, and 20-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karafilis (US 5,957,142).
Karafilish discloses an eyelash isolation tool (Figure 4) for arranging a set of eyelashes for the installation and management of eyelash extensions; comprising: a handle portion (112) extending along a handle length and configured to rest adjacent a forehead of a user during use (Figure 7); a first spreader (114) and a second spreader (116) extending from said handle portion (112) and defining a space sized to extend around an eye of the user (see Figure 7); at least a first lash press (130) attached between said first and second spreaders (114, 116) and configured for pressing down a pinned portion of said set of eyelashes while leaving an unpinned portion of said set of eyelashes free for installation of eyelash extensions (the device is capable of being able to use with pinned and unpinned portions of eyelashes); wherein said handle portion comprises a handle length sufficient to extend above an eyebrow of the user (see Figure 7). Karafilis discloses the claimed invention except for a tape strip configured to selectively hold said handle portion to the forehead of the user during use; so that said tape strip secures said handle portion against the forehead while said lash press maintains said pinned portion of said set of eyelashes in position; and wherein said eyelash isolation tool is configured to maintain said pinned portion of said set of eyelashes without continuous manual force. Dinh teaches using strips of tape in eyelash extensions (see Figure 1; col. 7, limes 35-40). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have any of these components available at the same time, e.g. as in a “kit”, such as during eyelash extensions. In other words, the individual components of applicant’s kit are already available as prior art; merely combining the components under the rubric of a “kit” does not result in a novel invention, even taken as a whole. It is contemplated that the user or any other hair care professional can meet applicant’s claimed invention by simply purchasing the Dinh and Karafilis components and placing these components in proximity to each other, so as to fall under the rubric of a kit.
Here, the novelty of the invention must reside in its whole, i.e. the kit, being greater than the sum of its parts, since the parts or components of the invention are already known in the art. It further has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. In this instance case, the tape can be used to selectively hold said handle portion to the forehead of the user during use.
Claim 2, said one or more lash presses (130) comprise said first lash press (138) and a second lash press (152); relative to said first lash press, said second lash press is attached to a portion of said two spreaders being further from said handle portion (see Figure 4); and said first lash press and said second lash press are configured for holding longer or more lush examples of said set of eyelashes (the device is capable of holding longer or lush eyelashes). Claim 3, said eyelash isolation tool is configured to separate said set of eyelashes into a pinned portion and an unpinned portion (the device is capable of being able to use with pinned and unpinned portions of eyelashes); and wherein, with said eyelash isolation tool installed, said pinned portion are beneath said one or more lash presses, and said unpinned portion are positioned outside said one or more lash presses for application of eyelash extensions it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. Claim 6, said eyelash isolation tool is made of a material selected among metal, bamboo, and plastic (col. 2, lines 50-57). Claim 7, said first lash press is made of plastic (col. 2, lines 50-57). Claim 10, the two spreaders comprise a curvature to match head shape and arrange said eyelash isolation tool around an eye of said user (see Figure 5 and 7). Claim 20, the first spreader and said second spreader (114, 116) each include a curvature configured to conform to a head shape of the user (see Figure 5). Claim 21, the handle portion (112), said first spreader, said second spreader (114, 116), and said lash press are integrally formed and sized such that said lash press is positioned adjacent an upper eyelid of the user when said handle portion is secured by said tape strip (see Figure 4). Claim 22, said handle portion (112) comprises a flattened surface adapted for adhesion of said tape strip (see Figure 5, regarding the adapted for language it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense). Claim 23, said eyelash isolation tool is made of a material consisting of a selection among bamboo, plastic, and metal (col. 2, lines 50-57). Claim 24, further comprising said second lash press (152) spaced apart from said first lash press (138) for holding longer or more dense examples of said set of eyelashes (see Figure 4). Claim 25, said handle portion (112) and said two spreaders (114, 116) are formed as a continuous, unitary body defining an overall contour (see Figure 4); said handle portion includes a flat, widened surface region disposed along an upper side of said unitary body (portion between 117 and 112 shown in Figure 5), said surface region being dimensioned and shaped to rest flush against and be secured to a forehead of a user by said tape strip (Figure 7); and said two spreaders extend integrally from said handle portion so that said flat, widened handle surface transitions smoothly into said spreaders without joints or separations, thereby tracing the full outline of said eyelash isolation tool as a single continuous structure (see Figure 4). Claim 26, said handle portion (112) and said two spreaders (114, 116) are formed as a continuous, unitary body defining an overall contour (see Figure 4); and said handle portion includes a flat, widened surface region disposed along an upper side of said unitary body (portion between 117 and 112 shown in Figure 5), said surface region being dimensioned and shaped to rest flush against and be secured to a forehead of a user by the tape strip (Figure 7).
Claim(s) 1, 3, 5-8, 21, 23, 25, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seidler (US 3,516,423) in view of Dinh (US 9,486,025).
Seidler discloses an eyelash isolation tool (Figure 1) for arranging a set of eyelashes for the installation and management of eyelash extensions; comprising: a handle portion (14) extending along a handle length and configured to rest adjacent a forehead of a user during use (i.e. capable of being inverted against the user’s forehead); a first spreader (15) and a second spreader (15) extending from said handle portion (14) and defining a space sized to extend around an eye of the user (see Figure 1); at least a first lash press (16) attached between said first and second spreaders (15) and configured for pressing down a pinned portion of said set of eyelashes while leaving an unpinned portion of said set of eyelashes free for installation of eyelash extensions (the device is capable of being able to use with pinned and unpinned portions of eyelashes); wherein said handle portion comprises a handle length sufficient to extend above an eyebrow of the user (see Figure 1). Seidler discloses the claimed invention except for a tape strip configured to selectively hold said handle portion to the forehead of the user during use; so that said tape strip secures said handle portion against the forehead while said lash press maintains said pinned portion of said set of eyelashes in position; and wherein said eyelash isolation tool is configured to maintain said pinned portion of said set of eyelashes without continuous manual force. Dinh teaches using strips of tape in eyelash extensions (see Figure 1; col. 7, limes 35-40). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have any of these components available at the same time, e.g. as in a “kit”, such as during eyelash extensions. In other words, the individual components of applicant’s kit are already available as prior art; merely combining the components under the rubric of a “kit” does not result in a novel invention, even taken as a whole. It is contemplated that the user or any other hair care professional can meet applicant’s claimed invention by simply purchasing the Dinh and Seidler components and placing these components in proximity to each other, so as to fall under the rubric of a kit.
Here, the novelty of the invention must reside in its whole, i.e. the kit, being greater than the sum of its parts, since the parts or components of the invention are already known in the art. It further has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. In this instance case, the tape can be used to selectively hold said handle portion to the forehead of the user during use.
Claim 3, said eyelash isolation tool is configured to separate said set of eyelashes into a pinned portion and an unpinned portion (the device is capable of being able to use with pinned and unpinned portions of eyelashes); and wherein, with said eyelash isolation tool installed, said pinned portion are beneath said one or more lash presses, and said unpinned portion are positioned outside said one or more lash presses for application of eyelash extensions it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. Claim 5, the combination of Seidler and Dihn disclose the claimed invention except for the tool being made from bamboo. It would have been obvious to one having ordinary skill in the art before the effective filing date to having the eyelash tool be made from bamboo, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Claim 6, said eyelash isolation tool is made of a material selected among metal, bamboo, and plastic (col. 2, lines 45-50). Claim 7, said first lash press is made of plastic (col. 2, lines 45-50). Claim 8, said first lash press is made of metal wire (col. 3, lines 30-35). Claim 21, the handle portion (14), said first spreader, said second spreader (15), and said lash press are integrally formed and sized such that said lash press is positioned adjacent an upper eyelid of the user when said handle portion is secured by said tape strip (see Figure 1). Claim 23, said eyelash isolation tool is made of a material consisting of a selection among bamboo, plastic, and metal (col. 2, lines 45-50). Claim 25, said handle portion (14) and said two spreaders (15) are formed as a continuous, unitary body defining an overall contour (see Figure 1); said handle portion includes a flat, widened surface region disposed along an upper side of said unitary body (see Figure 1) said surface region being dimensioned and shaped to rest flush against and be secured to a forehead of a user by said tape strip (i.e. the device is capable of resting against a user’s face by inverting the tool); and said two spreaders extend integrally from said handle portion so that said flat, widened handle surface transitions smoothly into said spreaders without joints or separations, thereby tracing the full outline of said eyelash isolation tool as a single continuous structure (see Figure 1). Claim 26, said handle portion (14) and said two spreaders (15) are formed as a continuous, unitary body defining an overall contour (see Figure 4); and said handle portion includes a flat, widened surface region disposed along an upper side of said unitary body (14; Figure 1), said surface region being dimensioned and shaped to rest flush against and be secured to a forehead of a user by the tape strip.
Response to Arguments
Applicant’s arguments filed 10/27/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
12/1/2025