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 .
Priority
Acknowledgement is made of applicant’s claim for priority under 35 U.S.C. 119 (e) with reference to Provisional Application Number: 63/459581 filed on 4/14/23.
Specification
It is noted that applicant filed approximately 105 pages and a series of text files labeled “Appendix to Specification”; however, this is improper. The only appendices allowed in a patent application specification are computer program listings, sequence listings, and tables.
Further, if applicant desires to have this information incorporated into the disclosure, an incorporation by reference statement is required and currently not present. See, e.g., 37 CFR 1.77(b)(5). Any other material applicant desires to be part of the original disclosure must be amended as part of the specification and/or drawings and comply with all relevant rules, e.g., 37 CFR 1.52, 1.74, and 1.84.
Applicant is reminded of the proper Content of Specification
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
Information Disclosure Statement
Applicant is also respectfully reminded of their duty to disclose all relevant prior filed patent applications and any patent references cited therein in a proper Information Disclosure Statement. See 35 U.S.C. 102(b) and 37 CFR 1.77.
Drawings
Figures 1-4 is/are objected to under 37 CFR 1.84 (m) because the figures contain shading, which fails to aid in understanding the invention and/or reduces legibility. Shading may be used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object; flat parts may also be lightly shaded, but such shading is preferred in the case of parts shown in perspective, not for cross sections. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
The drawings are objected to because Figures 1-4 are titled improperly because the titles of each figure must be larger than the numbers used for reference characters (see 37 CFR 1.84(u)).
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 § 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.
Claim(s) 1-13 is/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 pre-AIA the applicant regards as the invention.
Claim 1: the preamble of this claim recites “An integrated hair and scalp protective hair extension clip”; however, the language “An integrated hair and scalp protective hair extension” is confusing and unclear because it is unclear if applicant is actually claiming a hair extension or some kind of scalp or artificial scalp integrated into the clip. Based on a review of applicant’s disclosure, applicant means to claim only a hair clip. For examination purposes, the claim will be treated as reciting “A hair clip”. Line 5 then recites “a plurality of holes positionable on about a perimeter”; however, the language “positionable” is unclear because is applicant trying to claim the holes are positioned on the perimeter or that they “could be”? Also, the language “on about” is further unclear because it does not make sense. For examination purposes, the claim will be treated as reciting “a plurality of holes positioned about a perimeter”. Line 6-7 also recite “and wherein the holes are positionable about a centered area of a width of the u-shaped base member”, but this language is unclear. What does “positionable” mean and what is “a centered area of a width”? For examination purposes, the claim will be treated as omitting this language. Line 8-9 recite “the locking bar includes a plurality of holes positionable about corners of the locking bar”; this language is unclear because if the locking bar has holes, how are they “positionable” about itself? This language does not make sense. As best understood applicant is trying to claim that the locking bar has holes that align with the holes of the clip body. For examination purposes, the claim will be treated as reciting “the locking bar includes a plurality of holes aligned with the plurality of holes of the U-shaped base member”. Line 16-17 recites “the strands of hair are positioned perpendicular to the plurality of legs”; however, applicant does not claim any hair making this language unclear and confusing. The last lines of this claim create additional clarity issues for reciting “wherein the clip body is affixed to another device, fabric, hair, and/or styling device”; however, the terms “another device, fabric, hair, and/or styling device” are unclear and confusing. Is applicant attempting to claim whatever device the clip is affixed to and if so, allegedly based on the claim this could be any generic device in existence? This makes the metes and bounds of the claims indefinite and impossible to determine. Based on a review of the disclosure, it appears applicant is attempting to claim the clip can be attached to a person’s hair. For examination purposes, the claim will be treated as reciting “wherein the clip body is capable of being affixed to a user’s hair”. Clarification or correction is requested.
Claim 3: recites “outer legs” without clearly referring back to the plurality of legs already recited, making the language unclear. For examination purposes, the claim will be treated as reciting “outer legs of the plurality of legs”. Clarification or correction is requested.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fastening devices” in claims 1-5 and 7-13 and “clip interface” of claims 7-11.
“Fastening devices” should be interpreted to include “eyelets, reinforced eyelets, reinforced grommets, rivets” [0043-0044] and any equivalents known in the art. “Clip interface” should be interpreted to include “magnets, adhesive, fabric, tape, or hook and loop fasteners” [0045] and any equivalents known in the art.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claims 12-13: each recites “metals, ceramics, composite materials and/or wood”; however, the language “composite materials” in combination with the language “and/or” creates ambiguity and confusing because “composite” by definition means made of multiple parts or elements. So what is “metals and composite materials” supposed to mean, for example? The grouping is confusing and the metes and bounds of the claims are unclear. For examination purposes, the claim will be treated as reciting “metals, ceramics, composite materials, or wood”. Clarification or correction is requested.
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 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.
Claim(s) 1-3, 5-8, and 10-13, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umezu (US 8631804).
Claims 1 and 6: Umezu discloses a hair clip (see Fig 17) comprising: a clip body including a U-shaped base member (11) carrying a plurality of legs (20) attached to a bottom of the U-shaped base member (see Fig 17), a plurality of holes (13) are positioned about a perimeter of the U-shaped base member (Col 5, 40-55). A locking bar (12) including a plurality of holes (14) positioned at corners or ends of the locking bar (Col 5, 40-55). The locking bar is connected to the clip body by aligning the plurality of holes of the locking bar with the plurality of holes of the U-shaped base member (Col 5, 40-55) and placing a plurality of fastening devices in the form of metal eyelets or rivets (Col 5, 50-60) in the holes to secure the locking bar to the clip body. A sleeve (16) is placed on the locking bar (see Fig 17) and the hair clip allows hair strands to be positioned in the clip when in an open position and secured to hair in a closed position via spring action of the legs because this is how these clips are known to work.
Claim 2: the plurality of legs include at least four legs that are bendable since everything is with enough force and the legs include a spring action because that is how these clips are designed.
Claim 3: the plurality of legs include two center legs that are longer in length than outer legs of the plurality of legs (see Fig 17).
Claim 5: the sleeve can be rubber (Col 5, 60-Col 6, 5) a known elastomer.
Claims 7-8: the clip can also include a clip interface in the form of adhesive (Col 11, 5-20).
Claim 10: the clip interface can also include a sheet (35; Col 10, 63-Col 11, 10) made of the same material as a wig base (Col 11, 5-15) and the wig base can be a net (Col 6, 25-40). So the clip interface can be a net, which constitutes “a fabric”.
Claim 11: the clip interface can be a sheet (35) that is removable from the clip (see Fig 19).
Claims 12-13: the plurality of holes are described as being metal eyelets (Col 5, 50-60) with rivets, which the office interprets as the clip body and locking bar including metals.
Claim(s) 1-2, 4-7, and 9-11, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR20110089647).
Claims 1 and 6: Lee discloses a hair clip (50, see Figs 3-4) comprising: a clip body including a u-shaped base member (54a), a plurality of legs (52) attached to a bottom of the U-shaped base member, a plurality of holes (56 & h) positioned about a perimeter of the U-shaped base member (see Fig 4); a locking bar (54b) including a plurality of holes (56 & h) positioned near corners of the locking bar (see Fig 4). The locking bar is connected to the clip body with a plurality of fastening devices in the form of reinforced eyelets (P, Fig 4) affixed through the plurality of holes on the U-shaped base member and locking bar. A sleeve (74) is placed on the locking bar and the clip can be opened to accept hair or closed to secure to the hair because that is how these clips work.
Claim 2: the plurality of legs include at least four legs that are “spring action” because that is how these clips are known to work.
Claim 4: the plurality of legs include bent regions (see Fig 4).
Claim 5: the sleeve is rubber [0057] a known elastomer.
Claims 7 and 9-11: the clip includes a clip interface (72+90, see Figs 1-4) including adhesive (72) [0058] and fabric lace (90) [0046] and is removable from the clip because anything is removable with enough force.
Claim Rejections - 35 USC § 103
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 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 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 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR20110089647) in view of Staky (US 20210112900).
Claim 8: Lee discloses the invention essentially as claimed except for the interface including a magnet instead of adhesive.
Staky, however, teaches a hair clip (108) that includes a clip interface (102 & 104) including magnets (102) and a fabric strip (108) secured to the magnets in order to allow a user to swap out the attachments (110) on the hair clip easily and conveniently. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the hair clip of Lee to include magnets for securing to the fabric portion of the clip interface in view of Staky for the common sense reason that this would allow a user to remove the artificial hairpieces attached to the clip more easily thereby making changing their hairstyle faster and more convenient.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772