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 .
Drawings
The drawings are objected to because in Figure 4 the lead line for 412 points to a part of the lower base member, but 412 is for the arm portions of the upper base member.
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 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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stedman US 2,283,703.
Regarding Claim 1, Stedman teaches a masking apparatus (cap 10) for shielding a finger of a user when a product is being applied to a fingernail on the finger of the user (Figure 1) , the masking apparatus comprising:
a base (the portion of cap 10 that is on the side of the finger opposite the nail is the base) that includes a finger rest (the interior side of the portion of cap 10 opposite the nail, where the finger engages with the base), the finger rest being formed to support the finger of the user (Figure 1 shows that the base and the finger rest are formed to shape around and thus support the finger of the user) ; and
a cover member (the portion of cap 10 that is on the side of the finger with the nail) that is connected to the base (cross section in Figure 4 shows the base and cover are connected), wherein the cover member has a through-aperture (opening 12) that is formed therein (Figure 3), and is made from an elastic material so as to be elastically stretchable from an un-extended position (Figure 3 with no finger inserted) to an extended position (Figure 2 with a finger inserted; col 2 lines 17-54) so as to position the through-aperture at least partially over the fingernail (Figure 2), when the finger of the user is placed on the base (Figure 1);
wherein the cover member includes an engagement portion that has an underside that is positioned to engage a proximal portion of the finger of the user that is proximal relative to the fingernail when the cover member is in the extended position (the part of the cap that surrounds the opening 12 is the engagement portion and it engages the finger around the nail); and
wherein the underside has a selected coefficient of friction with human skin so as to retain the cover member in the extended position by friction during engagement of the underside with the proximal portion of the finger of the user (the material is described as being rubber or a rubberized extensible fabric, which would have a coefficient of friction with human skin that would retain the cap in place, which is also seen in Figure 1 and 2 where the cap is retained on the finger).
Regarding Claim 14, Stedman teaches a method of using a masking apparatus to shield a finger of a user when applying a product to a fingernail on the finger of the user (Figure 1), the method comprising:
resting the finger of the user on a base (portion of cap 10 that is below the finger) of the masking apparatus (Figure 1 shows the finger of the user in cap 10; the portion of cap 10 below the finger is the base of the masking apparatus, where the masking apparatus is cap 10; in order to put the cap on the finger, the finger rests on the base and is inserted into the cap 10);
stretching an elastic cover member of the masking apparatus from an un-extended position to an extended position such that a through-aperture formed in the elastic cover member is at least partially positioned over the fingernail on the finger of the user (Figures 1 and 2; portion of cap 10 that is above the finger on the side where the finger nail is located is the cover member; col 2 lines 17-31 describe at least the cover being made of an elastic material that has an un-extended position where the cover and the opening 12 in the cover are slightly smaller than the finger but that is stretched to fit the finger and nail due to the elasticity of the material), the elastic cover member being connected to the base of the masking apparatus (the cover is the portion of cap 10 that is on the side of the finger where the nail is and the base is the portion of cap 10 that is on the other side of the finger) for stretching between the un-extended and extended positions (portion of cap 10 that is above the finger on the side where the finger nail is located); and
manipulating the elastic cover member of the masking apparatus such that an underside of the elastic cover member is brought into contact with a proximal portion of the finger of the user that is proximal to the fingernail on the finger of the user (col 2 lines 32-44), the underside of the elastic cover member having a selected coefficient of friction with human skin so as to retain the elastic cover member in the extended position by friction during contact of the underside of the elastic cover member with the proximal portion of the finger of the user (the material is described as being rubber or a rubberized extensible fabric, which would have a coefficient of friction with human skin that would retain the cap in place, which is also seen in Figure 1 and 2 where the cap is retained on the finger).
Regarding Claim 14, Stedman teaches the method of claim 14 (as presented above), further comprising: applying the product to the fingernail on the finger of the user via the through-aperture of the elastic cover member (col 3 lines 3-9).
Regarding Claim 16, Stedman teaches the method of claim 14 (as presented above), wherein the through-aperture (opening 12) is shaped such that when the elastic cover member is stretched from the un-extended position to the extended position and the through-aperture is at least partially positioned over the fingernail on the finger of the user, a first portion of the fingernail on the finger is at least partially received within the through-aperture on the cover member (Figure 2 shows the opening 12 in an extended position when worn on the finger with the finger nail extending through the opening and extending at least the portion of the opening at the tip of the finger; Figure 3 shows an un-extended position of opening 12 when not worn).
Regarding Claim 17, Stedman teaches the method of claim 16 (as presented above), further comprising: manipulating the elastic cover member of the masking apparatus such that a portion of the finger of the user (Figure 2 shows that the tip of the finger under the nail abuts the edge of opening 12 there, which retains the elastic cover in an extended position) and/or a portion of the fingernail on the finger (the fingernail abuts edge-elements 14 in order to give the polish a crisp edge and the edge elements are positioned by stretching the opening to situation them as desired, col 2 lines 45-54) abuts an edge of the through-aperture for further retaining the elastic cover member in the extended position (Figure 2 and col 2 lines 45-54).
Regarding Claim 18, Stedman teaches the method of claim 16 (as presented above),
manipulating the elastic cover member of the masking apparatus such that a portion of the fingernail on the finger of the user extends through the through-aperture in the cover member and rests upon a top face of the cover member for further retaining the elastic cover member in the extended position (Figure 2).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, and 5-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Valerien (DE 29912724 U1) in view of Frank (US 2,654,375).
Regarding Claim 1, Valerien discloses a masking apparatus for shielding a finger of a user when a product is being applied to a fingernail on the finger of the user (Figures 1-3), the masking apparatus comprising (template 10 connected to base plate 34):
a base (base plate 34) that includes a finger rest (the top surface of base plate 34 on which the fingers rest in Figure 2), the finger rest being formed to support the finger of the user (Figure 2); and
a cover member (template 10) that is connected to the base (Figure 2 shows cross section where template 10 is connected to base plate 34 via hinge 32), wherein the cover member has a through-aperture (openings 12, 14, 16, 18) that is formed therein, so as to position the through-aperture at least partially over the fingernail, when the finger of the user is placed on the base (Figure 1).
Valerien teaches each template being custom and does not explicitly teach the cover being made of an elastic material.
However, Frank, in the same field of endeavor of masking apparatus for nail polish (1st paragraph), teaches a cover member (template 4) with a through-aperture (central opening 5) that is made from an elastic material (col 2 lines 13-16; template is rubber or neoprene and described as stretchable in all directions) so as to be elastically stretchable from an un-extended position to an extended position (Figure 1 shows the template 4 in an extended position over a nail and Figure 3 shows template 4 in an un-extended position when not in use; Figure 5 also shows the template 4 stretched but without the finger so the form it takes when applied to the finger can be seen) so as to position the through-aperture at least partially over the fingernail (Figure 1);
wherein the cover member includes an engagement portion that has an underside that is positioned to engage a proximal portion of the finger of the user that is proximal relative to the fingernail when the cover member is in the extended position (the engagement portion is the underside of the template 4 surrounding the central opening 5 which lays on the finger surrounding the nail when the template is applied to the finger); and
wherein the underside has a selected coefficient of friction with human skin so as to retain the cover member in the extended position by friction during engagement of the underside with the proximal portion of the finger of the user (the template is described as being made of rubber or neoprene (col 2 lines 13-17), both of which have high coefficients of friction that would retain the template in the desired location on the finger surrounding the nail).
Frank teaches the template being of an elastic material so it will conform to the outline and curvature of the finger nail (Claim 1).
Therefore 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 masking apparatus at taught by Valerien to have the cover be made from an elastic material as taught by Frank. One would be motivated to make this modification so the cover or template will conform to the outline of the fingernail (Frank Claim 1) without having to be individually manufactured for each user’s nail shapes, thus allowing the apparatus to manufactured in bulk. Additionally, as Valerien teaches the apparatus can be for multiple fingers (Figure 1) or one finger (Figure 3), making the template elastic would enable a single apparatus with a single aperture to be used for all fingers.
Regarding Claim 2, Valerien and Frank teach the masking apparatus of claim 1 (as presented above). The combination of the elastic template of Frank into the masking apparatus of Valerien would have the cover of Valerien (template 10) replaced with that of Frank.
Frank further teaches wherein the cover member (template 4) has a partially rectangular form (Figure 3) that includes a first end and a pair of lateral sides (a rectangle has 2 ends and 2 lateral sides). The rectangular template of Frank is connected on the sides to the base in order to maintain the rectangular shape.
Valerien teaches the first end of the cover (template 10) being connected to the base near the hinge (Figure 2).
Regarding Claim 5, Valerien and Frank teach the masking apparatus of claim 1 (as presented above). The combination of Valerien and Frank teach wherein the base is a multi-part base, because the elastic material of Frank is supported on the sides, so those supports are part of the base rather than the elastic cover.
Valerien further teaches wherein the multi-part base includes
a lower base member (base plate 34), the lower base member including the finger rest (side of base plate 34 that faces template 10), and the finger rest defining a support surface of the lower base member for supporting the finger of the user (Figure 2); and
an upper base member (the supports holding the elastic template taught by Frank) that is movably mounted to the lower base member (via hinge 32; see Figure 2) for moving thereabout between a loading position and a use position (indicated by double sided arrow in Figure 2; bottom of translation page 3) where the upper base member is supported atop the lower base member (supported via the hinge at the end of the upward projecting arm of the base plate 34).
Regarding Claim 6, Valerien and Frank teach the masking apparatus of claim 5 (as presented above). Valerien further teaches wherein the cover member is connected to only the upper base member of the multi-part base (it is on the top portion above hinge 32), and wherein the upper base member is movably connected to the lower base member for movement directly away from the lower base member so as to inhibit disturbance of any nail polish on the fingernail (indicated by double sided arrow in Figure 2; bottom of translation page 3).
Regarding Claim 7, Valerien and Frank teach the masking apparatus of claim 5 (as presented above). Valerien further teaches wherein the upper base member is hingedly mounted (hinge 32) to the lower base member.
Claims 8-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Valerien (DE 29912724 U1) and Frank (US 2,654,375) as applied to claim 5, and in further view of Stanczak (US 4,966,174).
Regarding Claim 8, Valerien and Frank teach the masking apparatus of claim 5 (as presented above). They do not teach a connector element to secure the upper and lower base members.
However, Stanczak, in the same field of endeavor of device to apply to a fingertip (abstract, Figure 1), teaches wherein at least one of the upper base member (upper shell 11) and lower base member (lower shell 12) include a connector element (latch rod 17 with spherical end 18 which connects to latch plates 22 on the opposing shell; Figure 4) that is structured for releasably securing the upper base member to the lower base member when the upper base member is in the use position on the lower base member (Figure 3 is use/closed position; Figure 4 is open position; col 4 lines 15-27).
Therefore 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 masking apparatus as taught by Valerien and Frank to include the upper and lower base members having connector elements as taught by Stanczak. All the claimed elements were known in the prior art at the time of filing and one of ordinary skill in the art could add the connector elements of Stanczak to the masking apparatus taught by Valerien and Frank by known methods without change to their respective functions with the predictable result that the upper and lower base members of the combination of Valerien and Frank would be held in a closed position by the connector elements of Stanczak.
Regarding Claim 9, Valerien, Frank, and Stanczak teach the masking apparatus of claim 8 (as presented above). Stanczak further teaches wherein the multi-part base further includes at least one biasing element that is connected between the lower base member and the upper base member for biasing the upper base member towards the loading position (col 4 lines 3-8; diagonal lines shown in Figure 1 labeled with 13 and extending from the hinge).
Regarding Claim 10, Valerien, Frank, and Stanczak teach the masking apparatus of claim 9 (as presented above). Stanczak further teaches wherein the multi-part base further includes an actuator button (latch plate release button 19) that is operably connected to the connector element and that is actuatable by the user for actuating the connector element such that the upper base member moves from the use position towards the loading position and separates from the lower base member (Figures 4 and 4a; col 4 lines 15-27).
Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Valerien (DE 29912724 U1) and Frank (US 2,654,375) as applied to claims 1 and 2, and in further view of Kim (KR 101330081).
Regarding Claim 3, Valerien and Frank teach the masking apparatus of claim 2 (as presented above). They do not explicitly teach the finger rest having a top surface that is angled.
However, Kim, in the related field of endeavor of devices for nail decoration with a cover and a base (abstract; Figures 3a-b), teaches an apparatus (folder type UV curing machine for nails) wherein the first end of the cover member is mounted to a first end of the base (see Figure 4 where upper member 130 is mounted on lower member 110 at hinge 120), wherein the base (lower member 110) includes a finger rest (recesses 150) that is shaped for supporting the finger of the user (Figure 4), and wherein the finger rest includes a top surface that is angled towards the first end of the base for supporting the finger of the user at an angle relative to a bottom surface of the base (Figure 4 shows recess 150 inclined at an angles alpha and beta; last paragraph on translation page 3). Kim teaches the finger rests being angled relative to the base to make placing the finger on the base feel more comfortable (last paragraph on translation page 3).
Therefore 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 masking apparatus as taught by Valerien and Frank to include the finger rest being angled towards the base as taught by Kim in order to increase how comfortable it is to place the finger in the apparatus compared to a flat finger rest (Kim last paragraph on translation page 3).
Regarding Claim 4, Valerien and Frank teach the masking apparatus of claim 1 (as presented above). They do not explicitly teach the finger rest having a top surface that is angled.
However, Kim, in the related field of endeavor of devices for nail decoration with a cover and a base (abstract; Figures 3a-b), teaches an apparatus (folder type UV curing machine for nails) wherein the finger rest (recess 150) is oriented for supporting the finger of the user at a non-zero angle relative to the cover member (Figure 4 shows recess 150 inclined at an angles alpha and beta; last paragraph on translation page 3). Kim teaches the finger rests being angled relative to the base to make placing the finger on the base feel more comfortable (last paragraph on translation page 3).
Therefore 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 masking apparatus as taught by Valerien and Frank to include the finger rest being angled towards the base as taught by Kim in order to increase how comfortable it is to place the finger in the apparatus compared to a flat finger rest (Kim last paragraph on translation page 3). This modification to have the finger rest at an angle while still having the cover member engage with the finger and the cover member being arranged approximately parallel with the base when in the engaged/use position would result in driving the proximal portion of the finger of the user into engagement with the engagement portion of the cover member.
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Valerien (DE 29912724 U1) and Frank (US 2,654,375) as applied to claim 1, and in further view of Meinschewnk (US 2001/0037814).
Regarding Claim 11, Valerien and Frank teach the masking apparatus of claim 1 (as presented above). They do not explicitly teach the cover member including a pull tab.
However, Meinschewnk, in the same field of endeavor of elastic materials to apply to finger tips (abstract, Figure 9) teaches wherein the elastic member (nail jacket 10) includes a pull tab (handle means 30) extending from an end of the member (Figures 9 and 10 show handle means 30 opposite closed end 18 of nail jacket 10), and wherein the pull tab is shaped to be grasped by the user for stretching the masking portion of the member from the un-extended position towards the extended position (Figures 9 and 10; ¶ 53). Meinschewnk teaches the addition of a pull tab to an elastic member to go on over a fingertip to aid in pull it onto the finger and removing it (¶ 53).
Therefore 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 masking apparatus taught by Valerien and Frank to further include the pull tab taught by Meinschewnk in order to aid in putting the cover member in the correct location and removing it (Meinschewnk ¶ 53).
Claims 12 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Valerien (DE 29912724 U1) and Frank (US 2,654,375) as applied to claim 1, and in further view of Matalon (WO 2016026500).
Regarding Claim 12, Valerien and Frank teach the masking apparatus of claim 1 (as presented above). Frank appears to further teach wherein the through-aperture of the cover member is sized to be smaller than the fingernail on the finger of the user such that when the cover member is stretched to the extended position and the through-aperture is positioned over the fingernail, the through-aperture is stretched around the fingernail and the cover member applies an inward elastic force on the fingernail for retaining the fingernail within the through-aperture (Figure 3 (the un-extended state) shows opening 5 as smaller than in Figure 5 (the extended state absent the finger), as evidenced by the overall length of template 4 being longer in the middle in Figure 5 when compared to the sides where it is attached).
Alternatively, if Frank is not considered to teach the through aperture being smaller than the finger nail, then Matalon, in the same field of endeavor of masking device for fingers (abstract, Figure 1), teaches a masking apparatus (masking cover 100) wherein the through-aperture (opening 24) of the cover member is sized to be smaller than the fingernail on the finger of the user such that when the cover member is stretched to the extended position and the through-aperture is positioned over the fingernail, the through-aperture is stretched around the fingernail and the cover member applies an inward elastic force on the fingernail for retaining the fingernail within the through-aperture (page 5 line 26 to page 6 line 5; page 9 lines 20-23). Matalon teaches the through-aperture being slightly smaller than the fingernail so that it can sit snugly around the nail once stretched (page 9 lines 20-23).
Therefore 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 masking apparatus as taught by Valerien and Frank to have the through-aperture of the cover member be slightly smaller than the finger nail as taught by Matalon, so that when the elastic and stretchable cover member is installed on the finger and fingernail the through-aperture sits snuggly around the finger nail (Matalon page 9 lines 20-23).
Regarding Claim 13, Valerien, Frank, and Matalon teach the masking apparatus of claim 12 (as presented above). Valerien, Frank, and Matalon do not teach specific dimensions for the through-aperture. However, it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). See MPEP 2144.01(IV)(A). In the instant case, the through-aperture of the cover member would not operate differently with the claimed maximum diameter being less than 9.0 mm. Further, it appears that applicant places no criticality on the range claimed, indicating the through-aperture could have a diameter up to 15.7 mm (instant application specification ¶ 50).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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/JENNIFER P CONNELL/Examiner, Art Unit 3772
/THOMAS C BARRETT/SPE, Art Unit 3799