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
Claims 18 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group 2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/3/2026.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/758529 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite substantially similar claim limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18/758466
18/758529 (reference application)
A nail enhancement comprising:
a conductive substrate configured for placement proximal to a nail of a wearer; and
a color-changing layer comprising a chromic material, the color-changing layer integrated with the conductive substrate;
wherein the color-changing layer changes appearance when activated.
A nail enhancement comprising:
a conductive substrate configured for placement proximal to a nail of a wearer;
a color-changing layer comprising a chromic material, the color-changing layer integrated with the conductive substrate; and
a power source in continuous direct or indirect physical contact with the color- changing layer;
wherein the color-changing layer is activated to change appearance by the power source.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 4, 8, 14 - 17 are rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022).
Regarding claim 1, Terry discloses “A nail enhancement comprising:
a conductive substrate configured for placement proximal to a nail of a wearer; ([0024] the artificial nail 211 comprises a microchip ) and
a color-changing layer comprising a chromic material, the color-changing layer integrated with the conductive substrate; ([0024] the artificial nail 211 comprises a microchip and/or color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. Alternatively, with a microchip, an electrical signal (e.g., low voltage) is transmitted from the manicure device 200 to a microchip in the nail 211 to cause a color change in the material of the nail 211. Referring to steps 3 and 4, after opening an application 300 on, for example a mobile device (e.g., mobile phone), tablet or other computing device, a user selects a color option from a color palette 400 provided by the application 300. Responsive to selection of a color from the color palette 400, the application 300, which is electronically linked to the manicure device 200 by, for example, Bluetooth, WiFi or other wireless means, sends a signal to the manicure device 200 identifying the selected color. Referring to step 5, responsive to receipt of the signal identifying the selected color, the manicure device 200 sends the requisite voltage to the microchip, or applies the requisite temperature, light and/or stress to the color-changing material in the nail 211 to result in the nail 211 changing to the selected color. The manicure device 200 includes the requisite circuitry, heat elements (e.g., coils), light elements (e.g., bulbs, LEDs, OLEDs, etc.), transducers, movable elements, etc. required to generate the requisite voltage, temperature, light and/or stress. [0025])
wherein the color-changing layer changes appearance when activated. ([0024] color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. [0025])
Terry does not use the term “a conductive substrate”.
Zhang discloses “a conductive substrate”. (Fig. 6, 500 a substrate layer 500 [0013] [0062] [0064] [0066])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate substrate by Zhang into device of Terry. The suggestion/motivation would have been to provide a transparent layer. (Zhang: [0013])
Regarding claim 3, Terry and Zhang disclose wherein the conductive substrate is a metal. (Zhang [0013] [0062] [0064] [0066])
Regarding claim 4, Terry and Zhang disclose wherein the metal is gold or silver. (Zhang [0013] [0062] [0064] [0066])
Regarding claim 8, Terry and Zhang disclose wherein the conductive substrate has a material property contributing to a structural integrity of the nail enhancement. (Zhang [0013] [0062] [0064] [0066])
Regarding claim 14, Terry and Zhang disclose further comprising an adhesive on an underside of the conductive substrate to secure the nail enhancement to the nail of the wearer. (Zhang [0013] [0062] [0064] [0066])
Regarding claim 15, Terry and Zhang disclose further comprising a micro-LED embedded into the conductive substrate. (Zhang [0013] [0062] [0064] [0066])
Regarding claim 16, Terry discloses “A nail enhancement comprising:
a conductive substrate configured for placement proximal to a nail of a wearer; ([0024] the artificial nail 211 comprises a microchip ) and
a color-changing layer comprising an electrochromic material, the color-changing layer integrated with the conductive substrate; ([0024] the artificial nail 211 comprises a microchip and/or color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. Alternatively, with a microchip, an electrical signal (e.g., low voltage) is transmitted from the manicure device 200 to a microchip in the nail 211 to cause a color change in the material of the nail 211. Referring to steps 3 and 4, after opening an application 300 on, for example a mobile device (e.g., mobile phone), tablet or other computing device, a user selects a color option from a color palette 400 provided by the application 300. Responsive to selection of a color from the color palette 400, the application 300, which is electronically linked to the manicure device 200 by, for example, Bluetooth, WiFi or other wireless means, sends a signal to the manicure device 200 identifying the selected color. Referring to step 5, responsive to receipt of the signal identifying the selected color, the manicure device 200 sends the requisite voltage to the microchip, or applies the requisite temperature, light and/or stress to the color-changing material in the nail 211 to result in the nail 211 changing to the selected color. The manicure device 200 includes the requisite circuitry, heat elements (e.g., coils), light elements (e.g., bulbs, LEDs, OLEDs, etc.), transducers, movable elements, etc. required to generate the requisite voltage, temperature, light and/or stress. [0025])
wherein the color-changing layer changes appearance when activated by a change in electrical current. ([0024] the artificial nail 211 comprises a microchip and/or color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. Alternatively, with a microchip, an electrical signal (e.g., low voltage) is transmitted from the manicure device 200 to a microchip in the nail 211 to cause a color change in the material of the nail 211. Referring to steps 3 and 4, after opening an application 300 on, for example a mobile device (e.g., mobile phone), tablet or other computing device, a user selects a color option from a color palette 400 provided by the application 300. Responsive to selection of a color from the color palette 400, the application 300, which is electronically linked to the manicure device 200 by, for example, Bluetooth, WiFi or other wireless means, sends a signal to the manicure device 200 identifying the selected color. Referring to step 5, responsive to receipt of the signal identifying the selected color, the manicure device 200 sends the requisite voltage to the microchip, or applies the requisite temperature, light and/or stress to the color-changing material in the nail 211 to result in the nail 211 changing to the selected color. The manicure device 200 includes the requisite circuitry, heat elements (e.g., coils), light elements (e.g., bulbs, LEDs, OLEDs, etc.), transducers, movable elements, etc. required to generate the requisite voltage, temperature, light and/or stress. [0025])
Terry does not use the term “a conductive substrate”.
Zhang discloses “a conductive substrate”. (Fig. 6, 500 a substrate layer 500 [0013] [0062] the substrate layer 500 is adhered onto a nail and the substrate layer is made of a transparent material; [0064][0066] [0067] the substrate layer 600 is adhered to the nail,)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate substrate by Zhang into device of Terry. The suggestion/motivation would have been to provide a transparent layer. (Zhang: [0013])
Regarding claim 17, Terry discloses “A nail enhancement comprising:
a conductive substrate configured for placement proximal to a nail of a wearer; ([0024] the artificial nail 211 comprises a microchip ) and
a color-changing layer comprising a thermochromic material, the color-changing layer integrated with the conductive substrate; ([0024] the artificial nail 211 comprises a microchip and/or color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. Alternatively, with a microchip, an electrical signal (e.g., low voltage) is transmitted from the manicure device 200 to a microchip in the nail 211 to cause a color change in the material of the nail 211. Referring to steps 3 and 4, after opening an application 300 on, for example a mobile device (e.g., mobile phone), tablet or other computing device, a user selects a color option from a color palette 400 provided by the application 300. Responsive to selection of a color from the color palette 400, the application 300, which is electronically linked to the manicure device 200 by, for example, Bluetooth, WiFi or other wireless means, sends a signal to the manicure device 200 identifying the selected color. Referring to step 5, responsive to receipt of the signal identifying the selected color, the manicure device 200 sends the requisite voltage to the microchip, or applies the requisite temperature, light and/or stress to the color-changing material in the nail 211 to result in the nail 211 changing to the selected color. The manicure device 200 includes the requisite circuitry, heat elements (e.g., coils), light elements (e.g., bulbs, LEDs, OLEDs, etc.), transducers, movable elements, etc. required to generate the requisite voltage, temperature, light and/or stress. [0025])
wherein the color-changing layer changes appearance when activated by a change in temperature. ([0024] the artificial nail 211 comprises a microchip and/or color-changing nanoparticles, color-changing pigments, color-changing dyes or other color-changing material. For example, based on temperature (e.g., heat) application, light (e.g., wavelength) application and/or stress application (e.g., pressure), the artificial nail 211 changes color. Alternatively, with a microchip, an electrical signal (e.g., low voltage) is transmitted from the manicure device 200 to a microchip in the nail 211 to cause a color change in the material of the nail 211. Referring to steps 3 and 4, after opening an application 300 on, for example a mobile device (e.g., mobile phone), tablet or other computing device, a user selects a color option from a color palette 400 provided by the application 300. Responsive to selection of a color from the color palette 400, the application 300, which is electronically linked to the manicure device 200 by, for example, Bluetooth, WiFi or other wireless means, sends a signal to the manicure device 200 identifying the selected color. Referring to step 5, responsive to receipt of the signal identifying the selected color, the manicure device 200 sends the requisite voltage to the microchip, or applies the requisite temperature, light and/or stress to the color-changing material in the nail 211 to result in the nail 211 changing to the selected color. The manicure device 200 includes the requisite circuitry, heat elements (e.g., coils), light elements (e.g., bulbs, LEDs, OLEDs, etc.), transducers, movable elements, etc. required to generate the requisite voltage, temperature, light and/or stress. [0025])
Terry does not use the term “a conductive substrate”.
Zhang discloses “a conductive substrate”. (Fig. 6, 500 a substrate layer 500 [0013] [0062] [0064][0066])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate substrate by Zhang into device of Terry. The suggestion/motivation would have been to provide a transparent layer. (Zhang: [0013])
Claims 2, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022) in view of Kim et al. (US 20230176610 A1).
Regarding claim 2, Terry and Zhang do not disclose wherein the conductive substrate is graphene-based.
Kim discloses wherein the conductive substrate is graphene-based. ([0204] [0196] – [0203])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate graphene substrate by Kim into device of Terry and Zhang. The suggestion/motivation would have been to provide a transparent layer. (Kim: [0204])
Regarding claim 5, Terry and Zhang do not disclose wherein the conductive substrate is a conductive polymer.
Kim discloses wherein the conductive substrate is a conductive polymer. ([0204] [0196] – [0203])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate conductive polymer by Kim into device of Terry and Zhang. The suggestion/motivation would have been to provide a transparent layer. (Kim: [0204])
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022) in view of Brook et al. (US 20210251047 A1).
Regarding claim 6, Terry and Zhang do not disclose wherein the conductive substrate is a conductive ink.
Brook discloses wherein the conductive substrate is a conductive ink. ([0055] [0047] – [0054])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate conductive ink by Brook into device of Terry and Zhang. The suggestion/motivation would have been to provide a transparent layer. (Brook: [0055])
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022) in view of Kumita et al. (US 20110287312 A1).
Regarding claim 7, Terry and Zhang do not disclose further comprising a biofuel cell comprising the conductive substrate.
Kumita discloses further comprising a biofuel cell comprising the conductive substrate. ([0025] [0026] [0049] [0066])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate biofuel cell by Kumita into device of Terry and Zhang. The suggestion/motivation would have been to provide a transparent layer. (Kumita: [0066])
Claims 9, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022) in view of Cheng et al. (TW 202134731 A).
Regarding claim 9, Terry and Zhang do not disclose wherein the color-changing layer comprises a pattern-changing layer.
Cheng discloses wherein the color-changing layer comprises a pattern-changing layer. ([0007] [0009] [0011] [0070])
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate pattern-changing layer by Cheng into device of Terry and Zhang. The suggestion/motivation would have been to change color. (Cheng: [0070])
Regarding claim 10, Terry, Zhang and Cheng disclose wherein the pattern-changing layer includes electronic ink. (Cheng [0020] [0009] [0011] [0070])
Claims 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Terry et al. (US 20230320472 A1) in view of Zhang et al. (US 20240081738 A1, Filed: 11/29/2022) in view of Byram et al. (JP H11510475 A).
Regarding claim 11, Terry and Zhang do not disclose further comprising a coating of a water- resistant material.
Byram discloses further comprising a coating of a water- resistant material. (abstract, pages 11, 13, 14)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate water- resistant material by Byram into device of Terry and Zhang. The suggestion/motivation would have been to provide a transparent layer. (Byram: [0021])
Regarding claim 12, Terry and Zhang do not disclose further comprising a coating of a biocompatible material.
Byram discloses further comprising a coating of a biocompatible material. (abstract, pages 11, 13, 14)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate coating by Byram into device of Terry and Zhang. The suggestion/motivation would have been to provide a biocompatible coating. (Byram: [0030])
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11452354 B1 discloses electronic fingernail display on abstract.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN-NAN LIN whose telephone number is (571)272-5646. The examiner can normally be reached Monday - Thursday 7:30am - 6pm.
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/CHUN-NAN LIN/Primary Examiner, Art Unit 2629
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