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 .
Election/Restrictions
Newly submitted claim 27 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 27 is drawn to a method of producing a system which would require a different search and/or consideration than the originally filed product claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 15 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims recite part of the human body in combination with the device, e.g. “the second finger being applied to the second component of the tweezer” (Note: this is only one example of where part of the human body is positively recited). It has been held that a claim directed to or including within its scope, a human being will not be considered to be patentable subject matter under 35 U.S.C. 101. The grant of limited, but exclusive property right in a human being is prohibited by the constitution. In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970). For examination purposes, all claims will be considered as if such limitations involving the combination with a human were not present.
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 and 15-19 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.
In claim 1 there is an inconsistency in the language of the claim and that of the preamble claim 1 thus making its scope unclear. Base claim 1 recites a device for connecting eyelash extensions to eyelashes” with the tweezers only functionally recited, thus indicating that the claims are directed to the subcombination, the device. However, claims 1 and 15-19 positively recites the tweezer, i.e. the first and second components, thus indicating that the claim is directed to the combination of the device and tweezer. As such it is unclear whether applicant intends the claim to be drawn to the combination or the subcombination. Applicant is hereby required to indicate which, the combination (device and tweezer) or subcombination (the device) claims 1 and 15-19 are intended to be drawn and make the language consistent with this intent. For examination purposes, these claims will be considered as drawn to the combination.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15, recites steps to push the tweezer onto the device, the claim does not set forth any additional structural elements and appears to only recite functional method steps. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 15-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Correa (US 7,108,395) in view of Isacson (US 5,573,109).
Regarding claims 1 and 20, Correa discloses system for connecting eyelash extensions to eyelashes, comprising a device for connecting eyelash extensions to eyelashes (10); and a tweezer (12) for at least gripping the eyelash extensions, comprising a first component and a second component which are joined to each other at end terminals thereof (see Figure 2), wherein the device comprises a device body (14); a light source (18) configured to emit light for hardening glue used to connect the eyelash extensions to the eyelashes; a switch (128) configured to at least turn on the light source; and a retaining portion (16) configured to detachably retain the tweezer in such a manner that the retaining portion detachably retains the first component while not retaining the second component, wherein the light source is located at a front end portion of the device body (see Figures 1-7), the switch comprises a pressure sensor, the light source is turned on when a pressure more than a threshold is applied to the pressure sensor (col. 17, lines 25-32). Correa does not disclose the switch is provided on a first side of the device body, the first side being opposed to a second side where the retaining portion is provided and the switch is at a position which is closer to the front-end portion of the device body than a center of the device body in a longitudinal direction of the device body. Isacson teaches a light source (46) having a switch (136) provided on a first side of the device body, the first side being opposed to a second side and the switch is at a position which is closer to the front-end portion of the device body than a center of the device body in a longitudinal direction of the device body (see Figure 8; col. 9, lines 1-5). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the light switch of Correa be located toward the front end of the device on a first side as taught by Isacson to allow the light be remain on when the light switch is pressed to save power consumption; having the switch towards the front of Correa allows the user to press on the switch while using the device.
Regarding claim 15, Correa as modified by Isacson disclose the first side of the device body to be configured to be pressed by a first finger of a user in order to push the first component of the tweezer with an intervention of the device body toward the second portion of the tweezer on which a second finger of the user is placed (see Figure 3 of Correa).
Regarding claim 16, Correa as modified by Isacson disclose the switch is configured to be pressed by a first finger of a user while the second component of the tweezer is kept in contact with the first component of the tweezer due to application of the first finger and a second finger of the user, the second finger being applied to the second component of the tweezer (Isacson col. 9, lines 1-5).
Regarding claim 17, Correa as modified by Isacson disclose the second component of the tweezer configured to be move towards and away from the device body in a state where the first component of the tweezer is held by the retaining portion (Correa; Figure 3).
Regarding claim 18, Correa as modified by Isacson disclose the device body comprises a holding grip (16) and a light source support (28), the retaining portion is integrated with the holding grip (hole in sleeve), the light source support is inclined relative to the holding grip so that the light source support is apart from the tweezer which is held by the retaining portion (see Figure 7; Correa).
Regarding claim 19, Correa as modified by Isacson disclose the retaining portion (16) comprises a retaining hole into which the first component of the tweezer is detachably inserted (see Figures 1-3; Correa).
Regarding claim 21, Correa as modified by Isacson disclose the second component of the tweezer is configured to move towards and away from the device body in a state where the first component of the tweezer is held by the retaining portion (see Figure 3; Correa).
Regarding claim 22, Correa as modified by Isacson disclose both of the first component and the second component of the tweezer are plate-shaped (see Figure 2; Correa).
Regarding claim 23, Correa as modified by Isacson disclose the first component of the tweezer is bended in a plane which is parallel to the main surface (tip portion) thereof so that a tip of the first component is inclined relative to a longitudinal direction of the device body in a state where the tweezer is detachably retained by the retaining portion, and the second component of the tweezer is bended in a plane which is parallel to the main surface (tip portion) thereof so that a tip of the second component is inclined relative to a longitudinal direction of the device body in a state where the tweezer is detachably retained by the retaining portion (see Figure 2; Correa).
Regarding claim 24, Correa as modified by Isacson disclose wherein the second component of the tweezer has a surface which is parallel to an operated surface of the switch in a state where the first component of the tweezer is held by the retaining portion (see Figure 2; Correa).
Regarding claim 25, Correa as modified by Isacson disclose the retaining portion (16) comprises a retaining hole into which the first component of the tweezer is detachably inserted (see Figure 3; Correa).
Regarding claim 26, Correa as modified by Isacson disclose a middle portion of the second component of the tweezer is inserted into the retaining hole, while a front portion and an end portion of the second component of the tweezer are exposed (see Figure 3; Correa).
Response to Arguments
Applicant’s arguments filed 8/8/2025 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 9/9/2025