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 § 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 less adhesive properties than a nail coated with polish 3. Therefore, it is clear that the polish is necessary to transfer the decal from the substrate…which means that the adhesive properties of the decal/substrate are greater than the decal/bare nail.
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 are 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.
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.
Response to Arguments
Applicant's arguments filed 4/14/26 have been fully considered but they are not persuasive.
Applicant’s arguments are based on the assertion that the Lawrence reference does not disclose that the third adhesion coefficient is lesser than the first adhesion coefficient (response, page 7).
This is not found persuasive. The first adhesion coefficient of Lawrence is the adhesion coefficient between the decal and the substrate. The third adhesion coefficient of Lawrence is the adhesion coefficient between the decal and an uncoated nail. Since Lawrence clearly discloses that the application of the liquid polish to the nail is necessary for the decal to transfer from the substrate to the nail, it is clear that the decal cannot adhere/transfer directly to the nail (without adhesive on the nail). Therefore, it is clear that the bond (adhesion coefficient) between the decal and the substrate is stronger than the bond (adhesion coefficient) between the decal and an uncoated nail. Otherwise, the tacky surface created by the adhesive applied to the nail (prior to the application of the decal) would not be necessary.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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