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 .
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 1-5 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
In claim 1, lines 9 and 10 appear to encompass a human organism. Specifically, the recitation “…and an uncoated surface of the nail have a third adhesion coefficient…” appears to positively recite the surface of the nail.
In claim 2, lines 1 and 2 appear to encompass a human organism. Specifically, the recitation “…a surface of a dried regular nail polish coat applied ot the nail…” appears to positively recite the nail itself.
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 1-5 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, lines 9 and 10 are unclear. These lines recite that the at least one decal and an uncoated surface of the nail have a third adhesion coefficient. Does this mean that the decal and the surface of the nail have the same coefficient, or that they each have a distinct coefficient that is less than the first adhesion coefficient? For purposes of this action, the latter will be assumed.
In claim 2, lines 1 and 2, “and a surface of a dried regular nail polish coat applied to the nail” is unclear, since the dried regular nail polish has not been recited as being part of the claimed kit.
Is the “regular nail polish” the same as the “nail polish” recited in claim 1? Clarification is requested. For purposes of this action, they will be assumed to be the same.
In claim 4, line 9, “the first spool” has no prior antecedent basis.
In claim 5, line 2, “rotatably supporting” is unclear. It appears that “supporting” should be –supports--.
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 (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 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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lawrence 20160106193.
With regard to claim 1, Lawrence discloses a kit for decorating nails, comprising: a nail polish 3 (see description in paragraph 37) that, when applied to a nail of a human digit and dried, has a tacky surface (see paragraph 37 which describes polish 3 acting as an adhesive); and a decal application product 6, including a substrate (see fig.4 which shows product 6 including a backing sheet) and at least one decal adhered to the substrate (see decal in fig. 4), the at least one decal and the substrate having a first adhesion coefficient therebetween (inherent), wherein the at least one decal and the tacky surface of the nail polish have a second adhesion coefficient that is greater than the first adhesion coefficient (this is inherent, see discussion in paragraphs 27-29 which disclose that when the substrate/sheet and decal is applied to a nail, the decal adheres to the nail as it leaves the sheet…thus the tacky surface of the polish 3 applied to the nail has a greater coefficient of adhesion than the coefficient of adhesion between the decal and the substrate/sheet);
and wherein the at least one decal and an uncoated surface of the nail have a third adhesion coefficient that is lesser than the first adhesion coefficient. This is also inherent because an uncoated nail (without polish 3), has a less adhesive properties than a nail coated with polish 3.
With regard to claim 2, note that the at least one decal and a surface of a dried regular nail polish coat (the polish recited in claim 1) applied to the nail have a fourth adhesion coefficient that is lesser than the first adhesion coefficient. This is inherent, because the nail polish 3 disclosed by Lawrence is “tacky” (when applied) and thus would inherently have a lower coefficient of adhesion when dry.
With regard to claim 3, note that the nail polish 3 of Lawrence comprises a first nail polish 3, and wherein the kit further comprises a second nail polish 10 that adheres to the first nail polish when the first nail polish is dry, and a subset of the at least one decal adhered to the first nail polish 3. See paragraph 55 and figure 10.
Allowable Subject Matter
Claims 4 and 5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, as well as the rejection under 35 U.S.C. 101 and section 33(a) of the America Invents Act set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 4 and 5 have not been rejected with prior art because claim 4 contains all of the limitations of allowed claim 1 of parent application 16/230,276, which was indicated as allowable for reasons articulated in the office action mailed 3/4/21 in that application. Those reasons for allowance are as follows:
The claims in this application have not been rejected with prior art because the prior art of record fails to disclose either singly or in combination, an apparatus for decorating nails comprising a housing with a rotation support structure dimensioned to rotatably support a supply spool with a tape at least partially wound, the tape having at least one decal transferrable to nail of a human digit, an actuator coupled to the housing, a tape advancement arrangement coupled to the actuator which actuates a tape grip to extend the tape from the supply spool as the actuator is moved as recited, and a decal application surface that is sufficiently pliable to conform to a range of nail shapes and sufficiently firm to press the tape against the nail when the actuator is moved as recited. The closest prior art appears to be the references to Walia et al 20170215550 and Brown et al 20100158598, however these references fail to disclose the kit comprising an apparatus having these limitations, in combination with the other limitations in instant claim 4.
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 NICHOLAS D LUCCHESI whose telephone number is (571)272-4977. The examiner can normally be reached M-F 800-430.
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/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772