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
This application is claiming the benefit of prior-filed application No. 16837996 under 35 U.S.C. 120, 121, 365(c), or 386(c). Co-pendency between the current application and the prior application is required. Since the applications are not co-pending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish co-pendency between the applications.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application(s), Application No. 16837996, 63027006, 63035282, 63044788, each fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. None of the prior filed applications meet the timing requirement (the provisional applications were all filed in 2020, four years before the current application, so no provisional priority can be granted). The non-provisional application is not co-pending and so does not receive that priority date and none of the priority applications cited provide support for a curler as now being claimed.
This application and all of the pending claims have an effective filing date of 5/30/24.
Election/Restrictions
Applicant’s election without traverse of Species XXXI, directed to Figures 111-117 in the reply filed on 12/12/25 is acknowledged.
While applicant asserts that all the claims read on the elected species, the office respectfully disagrees.
Claims 2-3, 6-7, 9, and 12-17 each of claims 2 and 6 requires a “land portion”; however, while this is present in the embodiment of Figures 104-110, this feature is not presented in the elected species. Claim 10 requires “a passage interior” which is not described in relation to the embodiment of Figures 111-117. Claims 12-14 require “the first plurality of curler outlet directs air along an outlet vector whose only longitudinal component is directed away from the inlet end” and this is not present in the elected embodiment, nor the “bell shape” required by claim 14, this is only described in connection with the non-elected embodiment of Figs 104-110. Claims 18-20 each of these claims requires a “venturi”; however, the definition of a “venturi” is that it adjusts the fluid flow by compressing the fluid in a closed volume of a pipe/tube constriction. In the instant case, the elected embodiment has an hourglass shaped region (280) covered in holes meaning that this region would not compress the fluid because the fluid would simply escape through the holes. So the elected species does not include a venturi. If applicant intended to claim the hourglass shape, applicant can add additional claims specifying an hourglass shaped region with holes, not a venturi.
Claim(s) 2-3, 6-7, 9-10, 12-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/25.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 1, 4-5, 8 is/are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 18374177 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because providing an “air flow expansion zone” is the only difference between the claims and the existence of the atmosphere being where the device vents to constitutes “an expansion zone” so the claims are not identical but they are not patentably distinct.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 4-5, 8, and 11 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: this claim recites “a curler outlet shaped to direct air flow along an outlet vector that includes a tangential component”; however, this language is indefinite because no air source or fan is required by the claims. This limitation is indefinite because it is not supported by a recitation in the claim of sufficient structure to accomplish the claimed function. This claim also recites “an outlet duct extending from the air flow passage to an exterior”; however, no body of a curler is set forth in the claim so an exterior of what? This language is confusing and indefinite.
Claim 4: recites “an outlet end expansion zone”, but this language is already set forth in claim 1, so are these the same or different? This claim also recites “each outlet duct…terminating at an outlet port”; however, based on a review of applicant’s disclosure the “curler outlet” is this “outlet port” and they are not different structures or openings as applicant appears to attempt to claim. Applicant must use one term consistently throughout the claims to avoid indefinite issues. Furthermore, the language “wherein the curler outlet comprises a set of the outlet ducts” is indefinite because an outlet is an opening. The outlet duct is not part of the opening, rather the opening forms an end of the duct. The language is unclear structurally confusing. For examination purposes, the claim will be treated as reciting “wherein the hair curler includes a plurality of the outlet ducts and a plurality of the outlet end expansion zones terminating in a plurality of the curler outlets; the plurality of the curler outlets being positioned around the longitudinal axis”. Clarification or correction is requested.
Claim 5: recites “wherein the outlet end expansion zone is formed between a radially inner wall and a radially outer wall”; however, what is a “radially outer wall” or a “radially inner wall” supposed to mean? No body of the curler is set forth in the preceding claims making this language confusing and no relationship is set forth between the “exterior” and these inner and outer walls, but it would seem some structural relationship must exist between these elements. The metes and bounds of the claims are unclear. For examination purposes, the claim will be treated as reciting “wherein the curler has a body and the body of the curler includes an inner wall and an outer wall and the outlet end expansion zone is formed between the inner wall and the outer wall”. Clarification or correction is requested.
Claim 8: this claim recites “wherein the curler outlet directs air generally angularly along an outer surface of the hair curler whereby air which exits the curler outlet travels generally angularly along the outer surface”; however, this language is indefinite because no air source or fan is required by the claims. This limitation is indefinite because it is not supported by a recitation in the claim of sufficient structure to accomplish the claimed function. Additionally, the language “an outer surface of the hair curler” is indefinite because no structural relationship is set forth between this “outer surface” and the “exterior” required by preceding claim 1, yet it would seem they are the same. Clarification or correction is requested.
Claim 11: recites “the duct” and “the outlet end” without antecedent basis. Additionally, as discussed above, this appears to be the “curler outlet” and not some other outlet. One term must be used consistently to refer to a single feature. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 8, and 11, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vicory (US 5626156).
Claims 1 and 4: Vicory discloses a hair curler (see annotations) having an inlet end forming an air inlet (see annotations), a longitudinally spaced apart opposite second end, a longitudinal axis and a plurality of curler outlets (see annotations) that direct airflow outward or “tangential” and an airflow passage (interior) from the air inlet to the plurality of curler outlets (see annotations), the curler outlets are formed by a plurality of outlet ducts that extend from the air flow passage and form an exterior of the hair curler, the outlet ducts each including an outlet end expansion zone (see annotations). The plurality of expansion zones terminate or form a part of the plurality of curler outlets (see annotations).
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Claim 5: the plurality of expansion zones are formed between an inner and an outer wall of the curler and a spacing between these walls increases along the expansion zone (see annotations).
Claim 8: the plurality of curler outlets direct air angularly along an outer surface of the curler and along the curler outer surface (see Fig 18).
Claim 11: the expansion zones form a maximum transverse air flow area of the ducts (see annotations).
Claim(s) 1, 4-5, and 8, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chan (US 5287635).
Claims 1 and 4: Chan discloses a hair curler/diffuser (diffusers are for making/maintaining curls when drying hair) having an air inlet at one end, a longitudinally spaced apart second end (end of 2 connected to 1), a longitudinal axis and a plurality of curler outlets shaped to direct air flow along a direction with a tangential component relative to the air inlet and an air flow passage (interior) from the air inlet to the curler outlets and the curler outlets are formed by a series of outlet ducts (see annotations) extending from the air flow passage to an exterior of the curler and the duct includes a series of expansion zones that terminate in the curler outlets (see annotations). The curler outlets and the various components are all positioned around the longitudinal axis.
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Claim 5: the expansion zones are formed between an inner wall and an outer wall of the curler (see annotations) with a spacing between the walls increasing along the expansion zones (see annotations).
Claim 8: the curler outlet directs air along an outer surface of the device (see annotations).
Claim(s) 1, 4-5, 8, and 11, as best understood, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Marciniak (US 20240389729).
Claim 1: Marciniak discloses a hair curler (see Fig 20B) having an air inlet at the bottom end, a longitudinally spaced apart second top end, a longitudinal axis and a series of curler outlets (208, 305) shaped to direct air flow along at least a partially tangential component (see Fig 20B) and an airflow passage (interior) from the air inlet to the plurality of curler outlets (see Fig 20B) with each curler outlet formed by an outlet duct (201, 301) extending from the air flow passage to an exterior of the curler and the outlet ducts each include an outlet end expansion zone (see Fig 20B).
Claim 4: the curler comprises a plurality of the outlet ducts (see Fig 20B) and a plurality of the expansion zones terminating in the plurality of curler outlets (see Fig 20B) and the plurality of curler outlets are positioned around the longitudinal axis (see Fig 20B).
Claim 5: the plurality of expansion zones are formed between an inner wall and an outer wall of the curler (see Fig 20B) and a spacing between the inner and outer wall is illustrated to increase along the outlet expansion zone (see Fig 20B).
Claim 8: the curler outlet directs air generally angularly around and along the exterior of the curler (see Fig 20B).
Claim 11: the air flow area of the duct is illustrated at a maximum at the expansion zone (see Fig 20B).
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.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772