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
Applicant’s election without traverse of elect Invention I in the reply filed on 1/26/2026 is acknowledged.
Claims 1 – 5 are pending for consideration.
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. 18/758602 (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.
Method claim of claimed invention recite substantially similar claim limitation of reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18/758742 Claimed Invention
18/758602 (reference application)
1. A method of customizing an appearance of a fingernail or toenail comprising:
providing a nail enhancement including:
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;
adhering the conductive substrate to the fingernail or the toenail; and
activating the color-changing layer by providing electrical current or heat to the color- changing layer.
claim 1, A nail enhancement system comprising:
a nail enhancement, the nail enhancement including:
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; and
a sensor configured to collect sensor data, the sensor at least one of physically connected and operatively connected to the color-changing layer.
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 - 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sola et al. (WO 2024220358 A1, Filed: 4/17/2023) in view of Spurling et al. (WO 2024152039 A1, Filed: 1/15/2023).
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Regarding claim 1, Sola discloses “A method of customizing an appearance of a fingernail or toenail comprising: (Fig. 1, [0049] a digital nail system 20 includes a client device 30, a color programming device 40 and an artificial nail assembly 60 with a color display 62 bonded to an underside of a nail blank 64.)
providing a nail enhancement including: (Fig. 1 combine a color programming device 40 and an artificial nail assembly 60)
a conductive substrate (Fig. 1 first conductive layer 70) configured for placement proximal to a nail of a wearer, ([0056] – [0058]) and
a color-changing layer (Fig. 1 [0057] In one embodiment, the electronic paper layer 72 is an electrophoretic layer. In other embodiments, the electronic paper layer 72 may be an electrochromic layer, for example. For discussion purposes of the color display 62, the electronic paper layer 72 is configured as the electrophoretic layer. [0058] E Ink Corporation is a supplier of electronic paper. Electronic paper is also known as e-paper, electronic ink, or e- ink, and is a technology that replicates the appearance of ordinary ink on paper. It works by using tiny capsules filled with clear fluid containing minuscule particles, each about the width of a human hair. ) comprising a chromic material, the color-changing layer integrated with the conductive substrate; ([0056] The color display 62 for the artificial nail assembly 60 includes a first conductive layer 70 that may also be referred to as a first electrode, an electronic paper layer 72 and a backplane 66. A transparent protective layer 90 covers the first conductive layer 70. The protective layer 90 is a thermoplastic polymer, such as polyethylene terephthalate (PET). The first conductive layer 70 is a transparent electrically conductive material, such as indium tin oxide (ITO). [0057] – [0060])
adhering the conductive substrate to the fingernail or the toenail; ([0011] The artificial nail assembly may include a nail blank, and a color display coupled to an underside of the nail blank. The color display may include a first conductive layer, an electronic paper layer, and a backplane. The backplane may include a support layer, a second conductive layer on an upper surface of the support layer, a plurality of traces on an underside of the support layer, a plurality of vias extending between the plurality of traces and the first and second conductive layers, and a bottom layer. [0013] – [0016]) and
activating the color-changing layer by providing electrical current or heat to the color-changing layer. ([0057] In one embodiment, the electronic paper layer 72 is an electrophoretic layer. In other embodiments, the electronic paper layer 72 may be an electrochromic layer, for example. For discussion purposes of the color display 62, the electronic paper layer 72 is configured as the electrophoretic layer. [0058] E Ink Corporation is a supplier of electronic paper. Electronic paper is also known as e-paper, electronic ink, or e- ink, and is a technology that replicates the appearance of ordinary ink on paper. It works by using tiny capsules filled with clear fluid containing minuscule particles, each about the width of a human hair. These capsules are arranged in a thin film with particles of different colors and electric charges. The electric charges are initially set at the factory so that the capsules remain in a charged state. When an electric field is applied to the individual electrodes, i.e., first and second conductive layers 70 and 76, the particles move within the charged capsules, causing the electronic paper layer 72 to appear as a certain color. [0060] – [0064])
Sola teaches providing visual display/indicia/color on a fingernail or toenail to customize its appearance, but does not expressly refer to it as providing a “nail enhancement”.
Spurling teaches in the same/related art of changing the appearance on a person’s nail and referring to it as “nail enhancement”. ([0049] nail enhancement)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that customizing the appearance of nails in a system/method of Sola could be considered to be, or chosen to be nail enhancement as taught by Spurling, especially when the visual display is or selected to be of the type resulting in a visually pleasing or enhanced appearance of the nail, for the purpose of enhancing the nail appearance (Spurling: [0049]).
Regarding claim 2, Sola and Spurling disclose further comprising:
providing a plurality of nail enhancement systems, each nail enhancement system comprising a nail enhancement including 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 controller comprising a non-transitory memory and one or more processors; (Sola Fig. 1, [0049] - [0054])
wherein the non-transitory memory of the controller of each nail enhancement system contains instructions to coordinate activation of the color-changing layer of each of the plurality of nail enhancement systems. (Sola Fig. 1, [0049] - [0054])
Regarding claim 3, Sola and Spurling disclose wherein the color-changing layer is activated based on pre-set timing. (Sola [0057] – [0060])
Regarding claim 4, Sola and Spurling disclose wherein the color-changing layer is activated based on geolocation data from the nail enhancement or an external device associated with the nail enhancement. (Sola [0057] – [0064])
Regarding claim 5, Sola and Spurling disclose wherein the color-changing layer is activated in response to acoustic input. (Sola [0057] – [0060])
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin C Lee can be reached at 571-2722963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUN-NAN LIN/Primary Examiner, Art Unit 2629
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