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 .
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,857,021. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer
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 1-3, 6, 8, 9, 10-14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518).
Regarding claim 1, Richwine teaches a hair accessory (Figure 3, #300) comprising hair material (Figure 3, #106) comprising a hair material base (Annotated Figure 3) end and a hair material distal end (Annotated Figure 3); a magnetic material operatively installed to the hair material near the hair material base end (Figure 3, #102; Paragraphs 0017, 0019, 0020); and a coating comprising a reaction polymer (polyurethane) forming a unitary body that substantially encloses the magnetic material (Figures 1 and 3, #104; Paragraph 0014; Paragraph 0018); and embeds the hair material base end within the unitary body paragraph 18, “In other embodiments, magnet 102 can be incorporated inside a polyurethane material of inner portion 104 during manufacture. Thus, magnet 102 can be encapsulated inside the polyurethane material of inner portion.”; wherein the hair material is installable to a mounting location via compression by the magnetic material onto the mounting location (Paragraph 0013; #104 is capable of being compressed onto #110 for installation; the examiner considers this mounting location limitation to be strictly functional because of the recitation of “installable”).
Alternatively, regarding claim 1, Richwine teaches a hair accessory (Figure 3, #300) comprising hair material (Figure 3, #106) comprising a hair material base (Annotated Figure 3) end and a hair material distal end (Annotated Figure 3); a magnetic material operatively installed to the hair material near the hair material base end (Figure 3, #108; Paragraphs 0021, 0022); and a coating comprising a reaction polymer forming a unitary body that substantially encloses the magnetic material and embeds the hair material base within the unitary body (Figures 1 and 3, #110; Paragraphs 0021, 0022); wherein the hair material is installable to a mounting location via compression by the magnetic material onto the mounting location (Paragraph 0013; #110 is capable of being compressed onto #104 for installation; the examiner considers this mounting location limitation to be strictly functional because of the recitation of “installable”). Richwine discloses the claimed invention except that the base end of the hair is at least partially enclosed by the coating instead of attached as a weft to the base. Salinas shows that enclosing the base end of the hair to the coating is an equivalent structure known in the art (see Figure 2; paragraph 43). Therefore, because these methods of supplemental hair attachment were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the embedded hair into the coating for the weft attached to the outer side.
PNG
media_image1.png
376
717
media_image1.png
Greyscale
Regarding claim 2, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the magnetic material comprises: magnetic particles substantially located within the coating (Paragraph 0018).
Regarding claim 3, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the magnetic material comprises: rare-earth magnets (Paragraph 0017).
Regarding claim 8, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the magnetic material is at least partially bonded to an attachment interface (Paragraph 0014 teaches cardboard base).
Regarding claim 9, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 (see second interpretation) and further teaches an active face magnetically attractable to at least one other active face to install the hair material to the mounting location via at least compression (Figure 3, the top face of #110 is magnetically attractable to another active face, the bottom face of #104; Paragraph 0013).
Regarding claim 10, Richwine teaches all of the elements of the claimed invention as stated above for claim 9 and further teaches a neutral face positioned approximately opposite to the active face (Figure 3, bottom face of #110 is opposite magnetic top face of #110; Paragraphs 0028 and 0029 describe that #110 shields the magnetic effects of the magnetic materials, therefore making the bottom face of #110 neutral) and exhibiting minimal wandering flux (Paragraphs 0028-0029, by shielding from magnetic fields, the bottom portion of #110 would exhibit minimal wandering flux).
Regarding claims 11 and 12, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the mounting location comprises natural hair grown by a wearer or wherein the mounting location comprises a base portion installable to a wearer (As stated above, the mounting location is not a positively recited structural limitation, it is just functional. The hair extension apparatus shown in figure 3 and described in paragraph 0013 is fully capable of being installed onto any mounting location).
Regarding claims 13 and 14, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the coating comprises a reaction polymer comprising polyurethane (The applicant defines a reaction polymer as including epoxies, unsaturated polymers, phenolics, and polyurethane; Paragraph 0014); and wherein the coating substantially encloses at least part of the magnetic material at the hair material base end (Paragraph 0018).
Regarding claim 16, Richwine teaches all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the hair material comprises more than one hair strand (Figure 3, #106).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) as applied to claim 1 above, and further in view of Hunter (US 2019/0261715).
Regarding claim 4, Richwine and Salinas teaches all of the elements of the claimed invention as stated above for claim 1 but does not teach wherein the magnetic material comprises neodymium-iron-boron.
Hunter teaches a hair accessory comprising a magnetic attachment mechanism (Abstract) wherein the magnetic element is comprised of neodymium-iron-boron (Paragraph 0033). Hunter teaches that this compound is a permanent magnet (Paragraph 0033).
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the hair accessory of Richwine to include the use of magnetic neodymium-iron-boron as taught by Hunter. This would have been an obvious modification to make as neodymium-iron-boron is a permanent magnet so it would not have to be activated before using its magnetic properties.
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) as applied to claim 1 above, and further in view of as evidence by E-Magnets UK.
Regarding claim 6, Richwine and Salinas teach all of the elements of the claimed invention as stated above for claim 1 and further teaches wherein the magnetic material further comprises cobalt (Paragraph 0017) but does not teach wherein the magnetic material is resistant to degradation for up to about 40 degrees Celsius.
Hunter teaches a hair accessory comprising a magnetic attachment means (Abstract) wherein the magnetic element comprises cobalt (Paragraph 0054 teaches AlNiCo which includes cobalt), and, as evidenced by E-Magnets UK, AlNiCo has a maximum operating temperature of between 450 and 525 degrees Celsius and has great stability up until those temperatures (See E-Magnets UK included on PTO 892 form).
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the hair accessory of Richwine to include AlNiCo as the magnetic material, as taught by Hunter. This would have been an obvious modification to make as AlNiCo is very temperature stable, allowing it to magnetically operate under a wide variety of conditions.
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) as applied to claim 1 above, and further in view of Francis (US 2019/0216152).
Regarding claim 7, Richwine and Salinas teach all of the elements of the claimed invention as stated above for claim 1 but does not teach wherein the magnetic material further comprises dysprosium.
Francis teaches a hair accessory comprising a magnetic attachment means (Abstract) wherein the magnetic material comprises dysprosium (Paragraph 0015). Hunter teaches that dysprosium is a ferromagnetic material that can be magnetized at any point (Paragraph 0015).
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the hair accessory of Richwine to include dysprosium as the magnetic material, as taught by Francis. This would have been an obvious modification to make as it would allow a user to activate the magnetic properties of the hair accessory only when desired, such as when the hair accessory is correctly and accurately placed.
Claim 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) as applied to claim 1 above, and further in view of Johnson (US 2019/0090567)
Regarding claims 5 and 15, Richwine and Salinas teach all of the elements of the claimed invention as stated above for claim 14, but does not teach wherein the coating comprises a score to improve friction and increase grip to the mounting location.
Johnson teaches a hair accessory comprising a magnetic attachment means (Abstract) wherein the magnetic material is covered in a coating that can comprise different textures which would be fully capable of improving friction and increasing grip (Paragraph 0045; it is known in the art that providing texture to a surface increases grip and friction). Johnson is silent to a score, but it is known in the art that a textured surface has an uneven topography. Merriam-Webster defines a score as “a line (such as a scratch or incision) made with or as if with a sharp instrument,” and any textured surface would have lines made as if with a sharp instrument.
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the coating of the hair accessory of Richwine and Salinas to include the textured surface of Johnson, and further to have this textured surface comprise a score. This would have been an obvious modification to make as it would provide a surface higher in friction so that the magnets would not slip off each other. Providing the textured surface with a score would further would provide an easier fabrication process as additional materials would not need to be used to provide texture, but instead, simple cutting could be used.
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) and Hunter (US 2019/0261715).
Regarding claim 17, Richwine teaches a hair accessory (Abstract; Figure 3, #300) comprising hair material comprising a base end (Figure 3, #106); a magnetic material operatively installed to the hair material (Figure 3, #108; Paragraphs 0021, 0022); a coating comprising a reaction polymer that is thermosetting forming a unitary body that substantially encloses the magnetic material and embeds the base end of the hair material within the unitary body (paragraph 18, “In other embodiments, magnet 102 can be incorporated inside a polyurethane material of inner portion 104 during manufacture. Thus, magnet 102 can be encapsulated inside the polyurethane material of inner portion.”) (The applicant defines a reaction polymer as including epoxies, unsaturated polymers, phenolics, and polyurethane; Paragraphs 0021-0022); an active face (Figure 3, the top face of #110; Paragraph 0013); and a neutral face positioned approximately opposite to the active face (Figure 3, bottom face of #110 is opposite magnetic top face of #110; Paragraphs 0028 and 0029 describe that #110 shields the magnetic effects of the magnetic materials, therefore making the bottom face of #110 neutral); wherein the active face magnetically attracts at least one other active face to install the hair material to a mounting location via at least compression (Figure 3, the top face of #110 is magnetically attractable to another active face, the bottom face of #104; Paragraph 0013); wherein the neutral face exhibits minimal wandering flux (Paragraphs 0028-0029, by shielding from magnetic fields, the bottom portion of #110 would exhibit minimal wandering flux).
Richwine discloses the claimed invention except that the base end of the hair is at least partially enclosed by the coating instead of attached as a weft to the base. Salinas shows that enclosing the base end of the hair to the coating is an equivalent structure known in the art (see Figure 2; paragraph 43). Therefore, because these methods of supplemental hair attachment were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the embedded hair into the coating for the weft attached to the outer side.
Richwine does not teach that the magnetic material comprises neodymium-iron-boron.
Hunter teaches a hair accessory comprising a magnetic attachment mechanism (Abstract) wherein the magnetic element is comprised of neodymium-iron-boron (Paragraph 0033). Hunter teaches that this compound is a permanent magnet (Paragraph 0033).
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the hair accessory of Richwine to include the use of magnetic neodymium-iron-boron as taught by Hunter. This would have been an obvious modification to make as neodymium-iron-boron is a permanent magnet so it would not have to be activated before using its magnetic properties.
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richwine (US 2019/0373973) in view of Salinas (US 2005/0252518) and Hunter (US 2019/0261715) as applied to claim 17 above, and further in view of Gao et al. (US 2019/0068008).
Regarding claims 18, Richwine, Salinas, and Hunter teach a hair accessory (Abstract; Figure 3, #300) comprising hair material (Figure 3, #106); a magnetic material operatively installed to the hair material (Figure 3, #108; Paragraphs 0021, 0022); a coating comprising a reaction polymer to at substantially enclose the magnetic material (The applicant defines a reaction polymer as including epoxies, unsaturated polymers, phenolics, and polyurethane; Paragraphs 0021-0022), wherein the reaction polymer comprises polyurethane (Paragraphs 0021-0022); an active face (Figure 3, the top face of #110; Paragraph 0013); and a neutral face positioned approximately opposite to the active face (Figure 3, bottom face of #110 is opposite magnetic top face of #110; Paragraphs 0028 and 0029 describe that #110 shields the magnetic effects of the magnetic materials, therefore making the bottom face of #110 neutral); wherein the active face magnetically attracts at least one other active face to install the hair material to a mounting location via at least compression (Figure 3, the top face of #110 is magnetically attractable to another active face, the bottom face of #104; Paragraph 0013); wherein the neutral face exhibits minimal wandering flux (Paragraphs 0028-0029, by shielding from magnetic fields, the bottom portion of #110 would exhibit minimal wandering flux).
Richwine does not teach that the magnetic material comprises neodymium-iron-boron, and wherein the magnetic material further comprises cobalt and dysprosium.
Gao et al. teaches a permanent magnet in the analogous art of magnets (Abstract), wherein the permanent magnet can comprise neodymium-iron-boron, cobalt and dysprosium (Paragraph 0026). Gao et al. teaches that using a magnet that combines all of these elements allows for an optimized magnet that has a high coefficient of temperature (CT) of magnetization or CT of coercivity (Paragraph 0026).
It would have been obvious to one of ordinary skill at the time of filing of the invention to modify the hair accessory of Richwine to include the combination neodymium-iron-boron, cobalt, dysprosium magnet of Gao et al. This would have been an obvious modification to make as it would allow for a high CT of coercivity, so that the magnet could withstand higher temperatures without degrading.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that Richwine does not teach or suggest a manufacturing process or structure where a single coating matrix acts as the primary chassis to simultaneously encapsulate a magnet and embed individual hair strands. The structure of Richwine remains a mechanical assembly of distinct parts-a magnet, a backing, and a weft-rather than the molded, unitary body defined in the Applicant's amended Claim 1. This argument is not persuasive. Richwine teaches in paragraph 15 hair accessory pieces, “For example, a user may only want a small hair extension. Thus, a small dot-like shape may be best.” Paragraph 18 teaches the encapsulated magnet and hair strand as argued, “In other embodiments, magnet 102 can be incorporated inside a polyurethane material of inner portion 104 during manufacture. Thus, magnet 102 can be encapsulated inside the polyurethane material of inner portion.” Applicant appears to only address one embodiment of Richwine for the manufacture process which is not persuasive.
In response to applicant’s argument that Salinas does not disclose magnetic applicant’s and therefore does not teach embedding magnetic material inside; Richwine teaches a coating that encloses the magnetic material (paragraphs 18 and 22). Salinas was used as a teaching to embed the hair material into the base, since Richwine states “Hair weft can be mechanically coupled to outer surface 110 by, for example, weaving, heat and bond, or adhesive”. One having ordinary skill in the art would recognize that embedding the hair as an equivalent mechanical attachment similar to heat and bond and would only require routine skill and no inventive effort.
In response applicant’s argument that claims 13 and 17 recite a reaction polymer that is thermosetting; Richwine teaches polyurethane that encapsulates the magnets see paragraphs 21 and 22 “The magnetic material 108 can be encapsulated inside the polyurethane material”. Polyurethane is a reaction polymer that is thermosetting meeting the claim requirements of claims 13 and 17.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Richwine teaches creating a hair accessory wherein the hair accessory can be attached to the inner surface 104 by heat and bond (paragraph 20) Richwine further teaches the outer portion can be made of a polymer such as polyurethane the make a magnetic material 108 be encapsulated inside the polyurethane material, Salinas teaches coating hair strands with a polymer to encapsulate them and prevent unraveling. One having ordinary skill in the art would recognize that embedding/encapsulating the hair as an equivalent mechanical attachment similar to heat and bond and would only require routine skill and no inventive effort.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RACHEL R STEITZ/Primary Examiner, Art Unit 3772