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, 7 and 8 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). Claim 1 requires each said end tab be wrapped around hair, where the hair recited is the hair of a person. Thus, the claim recites part of a human organism. It is suggested Applicant amend the claim to recite “each of the folding end tabs is configured to wrap around an individual’s hair”.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kenna (US 20090120451), Wang (US 20130133680), Gold (US 20130298925) and Sthair (US 7533676).
Regarding claim 1, Kenna discloses a hair extension (Refer to Figures 1-25) comprising: a tuft of hair (18) formed from a plurality of individual hair strands (individual strands of 18) having a proximal end and a distal end; a stitch line (34, 34’ is a sewn end or weft, Refer to Figures and paragraphs 0013, 0069, 0070, 0072) juxtapositioned to said proximal end of said tuft, said stitch line constructed and arranged to maintain a lateral length of the tuft by inhibiting stretching and separating; a bonding base (20 and/or 22) having an upper edge and a lower edge formed of non-allergenic flexible tape (Refer to paragraph 0006) having a first side surface (surface of 20 and/or 22 contacting hair 18) secured to said proximal end of said tuft with adhesive, and a second side surface (surface of 20 and/or 22 with cover sheet 24 or 26, respectively) having a tacky adhesive; a cover sheet (24 and/or 26) releasably secured to said second side surface, said cover sheet including a cut line (scoring forms a cut line, Refer to paragraph 0061) for ease of cover sheet removal, whereby removal of said cover sheet exposes said second side surface of said bonding base, allowing securement of said tuft of hair to an individual’s scalp or hair wherein said air passage apertures inhibit moisture buildup between the individual’s scalp and said bonding base. However, Kenna is silent regarding the stitched line being a monofilament stitched line and the cut line being centrally disposed extending from said upper edge to said lower edge forming a peel edge, and Kenna does not disclose at least two air passage apertures located along the length of said bonding base and said bonding base including folding ends tabs wherein each said end tabs are wrapped around hair.
Kenna teaches the hairs are sewn along the proximal end forming a stitch line (34, 34’), where a filament (e.g. thread, nylon filament, etc.) is required when sewing. Although Kenna does not specify the type of filament used to create the stitch line, monofilaments are well-known and a commonly used type of thread. It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of Kenna such that the thread used to form the stitch line be a monofilament as it is well-known and conventional for threads to be monofilaments and to use monofilaments in making hair extensions/wigs and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
With regard to the cover sheet, Kenna teaches the cover sheet is cut/scored to facilitate removal of the cover sheet (Refer to paragraph 0061) but does not specify the exact location of the cut line. Wang discloses a similar hair extension where hairs are secure together and attached to an adhesive tape bonding base where a cover sheet is disposed over the adhesive (Refer to Figures 1-8). Wang teaches the cover sheet has a cut line (33), which forms a peel edge, centrally positioned along the length of the bonding base and extending between the upper and lower edges of the bonding base (Refer to Figure 4), where the cut line/peel edge facilitates removal of the cover sheet (Refer to paragraph 0060-0062). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of Kenna such that the cover sheet include a peel edge centrally disposed and extending between the upper and lower edges of the bonding base as Wang demonstrates it is well-known for such cover sheets to have a cut line and therefore a peel edge disposed centrally along the length to facilitate removal of the cover sheet.
Gold discloses a similar hair extension having a plurality of hairs fixed to a bonding base in the form of tape (Refer to Figures 1-5A). Gold teaches the tape provides a plurality of through holes (Refer to paragraph 0040 and 0047) which reduces the overall weight of the bonding base and creates a ventilated arrangement which makes the base more breathable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of the combination of Kenna and Wang to include a plurality of air passage apertures along the length of the bonding base as taught by Gold in order to decrease the weight of the bonding base and make the base more breathable for the comfort of the wearer.
Sthair discloses a similar hair extension (Refer to Figures 1-11) where a tuft/section of hair (12) is secured to an adhesive tape bonding base (14, 16). Sthair teaches the bonding base includes folding end tabs (16) which serve to secure the hair extension to the user’s hair by wrapping the tabs around the hair such that the adhesive on the portion of the bonding base corresponding to the tuft is secured to one side of the user’s natural hair and the folding tabs are wrapped around the user’s natural hair and adhered to a backside thereof, as best shown in Figures 5-10. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of the combination of Kenna, Wang and Gold such that the bonding base include folding end tabs as taught by Sthair in order to enhance securement of the hair extension to the user’s natural hair by permitting wrapping of the hair extension on the user’s hair via the tabs.
Regarding claim 3, the combination of Kenna, Wang, Gold and Sthair disclose the hair extension of claim 1 above; however, the combination is silent regarding the openings being circular and having a diameter of 3 mm. It is well-known and conventional in the art for such mesh materials, like that used in the tape of the combination of Kenna, Wang, Gold and Sthair, to have various shapes such as circular, oval, hexagonal, diamond, square, etc. (See pertinent prior art cited in Conclusion). It is also well-known and conventional for such openings to have a diameter/width of about 3mm size (See pertinent prior art cited in Conclusion). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of the combination of Kenna, Wang, Gold and Sthair such that the openings be circular and have a diameter of 3mm as these are well-known and conventional configurations of mesh/netted materials used in hair extensions.
Regarding claims 4 and 5, the combination of Kenna, Wang, Gold and Sthair disclose the hair extension of claim 1 above where the apertures are equally spaced apart on the bonding base. Kenna further discloses the bonding base may be 1.5 inches long or 3 inches long (Refer to paragraph 0061 which states the length may be 1.5 to 4 inches). Although Kenna does not explicitly disclose the bonding base being 0.25 inches tall (width per Kenna), Kenna states the base is preferably 0.75 inches tall but “but other widths may be functional” (Refer to paragraphs 0060, 0063 and 0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the height of the bonding base of the hair extension of the combination of Kenna, Wang, Gold and Sthair to be 0.25 inches, as Kenna explains the dimensions can be changed as desired.
Regarding claim 8, the combination of Kenna, Wang, Gold and Sthair disclose the hair extension of claim 1 above, wherein bonding base is releasably secured to said hair tuft wherein said hair tuft can be reused by bonding base substitution (Refer to paragraph 0008 of Kenna).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kenna, Wang, Gold and Sthair as applied to claim 1 above, and further in view of Ukei et al. (US 20080081143).
Regarding 2, the combination of Kenna, Wang, Gold and Sthair disclose the hair extension of claim 1 above, wherein said cover sheet is removable without releasing said first side surface from the tuft of hair, such that a first coefficient of release for said tacky side surface at a rate less than a second coefficient of release for said first side surface (Kenna teaches the cover sheet is removed while the tuft of hair remains on the bonding base, thus, the coefficients of release of the first and second sides are as claimed, if not the hair would be removed from the first side when the cover sheet is removed); however, the combination does not disclose said cover sheet is treated with a release powder. It is well-known and conventional practice for cover sheets of adhesive tapes to be release treated with powders such as silica powder as demonstrated by Ukei et al. (Refer to paragraph 0064). The release liner disclosed by Ukei et al. is release-treated with “any of various conventionally known release agents” such as “a silicone-based release agent, fluoride-based release agent,…., silica powder and the like” (Refer to paragraph 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cover sheet of the combination of Kenna, Wang, Gold and Sthair such that the cover sheet be treated with a release powder as Ukei et al. demonstrates it is well-known and conventional in the art to provide such release powder treatments on cover sheets to facilitate their release from the adhesive surfaces which they cover. The combination of Kenna, Wang, Gold, Sthair and Ukei et al. provide a cover sheet treated with release powder which thereby provides a first coefficient of release for said tacky side surface at a rate less than a second coefficient of release for said first side surface.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kenna, Wang, Gold and Sthair as applied to claim 1 above, and further in view of Fazal (US 11596191).
Regarding claim 7, the combination of Kenna, Wang, Gold and Sthair disclose the hair extension of claim 1 above, where the stitch line is formed of a monofilament; however, the combination does not disclose said monofilament stitched line is a 5 lb line. The combination of Kenna and Gold is silent regarding the specific break strength of the thread used to create the stitched line, but it is well-known and conventional in hair extensions to use strong threads to prevent breakage as demonstrated by Fazal. The disclosure of Fazal is directed to a hair extension and method of use thereof, where top and bottom wefts of hair are sewn together using a thread that has a break strength of at least about 5 lbs or more (Refer to col. 2 lines 47-55 and claim 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hair extension of the combination of Kenna, Wang, Gold and Sthair such that the monofilament thread used to form the stitched line be a 5lb line as Fazal demonstrated it is well-known and conventional to use such strong threads when sewing to provide structural integrity and prevent breakage.
Response to Arguments
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive.
Argument: The claims require a monofilament stitch line where Kenna does not disclose the stitch line being formed from a monofilament. The Examiner’s position that monofilaments are well-known and conventional threads does not cure the deficiency.
Response: MPEP 2144.017 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness”. Kenna teaches the hairs are sewn along a proximal end forming a stitch line, where a filament/strand is required when sewing. Filaments/strands are either of a monofilament construction or a multi-filament construction. Use of a monofilament for sewing is extremely well-known. If Applicant requires evidence that use of monofilament thread for sewing is well known, refer to col. 1 lines 21-26 of US 2660546, Abstract of US 4097652, Abstract of US 6448367, col. 1 lines 46-55 of US 6670034, and specifically with respect to hairpieces, refer to paragraph 0130 of US 20120186595 and paragraph 0084 of US 20180035738; additionally fishing line and hair are also commonly used as a sewing thread in hair pieces, where it is common for fishing line and hair to be a monofilament.
Argument: Kenna fails to disclose any tab structure.
Response: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The tabs limitation was previously recited in claim 9, where the rejection of claim 9 acknowledges that Kenna does not provide tabs and relies on the teachings of Sthair for the tabs.
Argument: Kenna does not disclose a centrally disposed cut line extending form the upper edge to the lower edge of the bonding base forming a peel edge for removal from a central position. Instead, Kenna provides scoring to facilitate removal of a cover sheet (paragraph 0061), but does not teach or suggest a cut line that extends across the bonding base from edge to edge.
Response: Applicant appears to be unfamiliar with how such scoring lines work and therefore not one of ordinary skill in the art. Scoring lines of a cover sheet extend from one end to another in order to facilitate removal of the cover sheet; if the lines do not extend all the way (to both edges) then the user would need to manually tear the portion of the cover sheet that isn’t scored which would not serve to facilitate removal.
This is such a well-known concept and clear to a person with only basic knowledge in the art that such a feature would not lead to allowability. Applicant can refer to the following references which disclose such cut or score lines extending from one edge to the opposing edge: US 8881741 (centrally disposed cut lines 130, 192, 240, 230, 476 Refer to Figures 1-6), US 2288386 (cutting/scoring lines are disposed centrally between adjacent sections 10 and extend from the bottom edge to the top edge defined by the long cut/score line) and US 8820332 (Refer to Figures 6 and 13).
Kenna explains the cover sheet is cut/scored to facilitate removal (Refer to paragraph 0061) and in a different embodiment, Kenna depicts a centrally disposed score/cut line (67) to facilitate removal of the backing layer, where the score/cut line extends between opposing edges (Refer to paragraph 0078 and Figures 19-20). One of ordinary skill in the art understands that the embodiment of Figures 1and 1 to which paragraph 0061 is directed would provide a cut line extending between the upper and lower edges to facilitate removal of the backing, and given the central location in the other embodiment, it is clearly well-known for such cut lines to be centrally disposed.
Argument: Gold is relied upon for the teaching of the air passages, where Gold teaches a tape structure having through holes for material characteristics such as weight reduction and ventilation of the tape itself but Gold does not disclose or suggest a hair extension having a bonding base applied to a user’s scalp. The modification would require importing a feature from a separate tape structure into Kenna without a teaching or suggestion that such a modification would be desirable in the context of a hair extension.
Response: Kenna provides a hair extension in which a group of hair filaments is disposed between an adhesive bonding base formed by two strips of double-sided tape. Gold also discloses a hair extension in which groups of hair filaments are disposed between an adhesive bonding base formed by two strips of tape. Gold explains the bonding base has a plurality of passing through holes, where the existence of such holes results in a hair extension base which is lighter in weight and more breathable/ventilated compared to a hair extension of the same structure without the holes (continuous base). There is a clear motivation outlined in the rejection and Gold is directed to a hair extension.
Argument: Regarding claim 2, Applicant appears to argue that because the prior art does not explicitly state a first coefficient of release of the cover sheet provides a rate less than a second coefficient of release for the first side surface, that this concept is not provided. Applicant asserts that the cover sheet being removable without the backing being removed from the hair, does not establish or suggest the defined relationship between the first and second coefficients of release.
Response: Applicant’s disclosure states: “The use of two-sided tape has uniformity in tackiness, but with a cover sheet 26 having a surface that is pre-treated with a release powder so as to provide a coefficient of release of the tacky second side surface 24 to be less than the coefficient of release than the tacky first side surface 22. In this manner, the storage cover sheet 26 can be easily removed from the bonding base 20 without separating the bonding base 20 from the hair tuft 12.”
In order to easily remove the cover sheet without separating the bonding base from the hair tuft, the first coefficient of release needs to be less than the second coefficient of release. Applicant is reminded that the prior art does not need to use the exact same words to provide the claimed feature.
Argument: Regarding claim 2, Ukei does not single out a single release powder as a required or preferred feature and does not relate the use of such materials to the claimed relationship between coefficients of release.
Response: Again, the prior art does not need to use the exact same terminology to provide the feature. Ukei demonstrates it is well-known and conventional to treat release liners which various conventionally known release agents such as silica powder. This sufficiently demonstrates why one of ordinary skill in the art would be motivated to modify the release liner/cover of the combination of Kenna and Gold, as it is common practice to treat release liner with release agents such as silica powder to facilitate removal of the release liner/cover.
Argument: Regarding the rejection of claim 6 over the combination of Kenna, Gold and Wang, the rejection fails to provide a reason to adopt the specific configuration. The Examiner has not identified any problem in Kenna that would have prompted such a modification.
Response: Kenna provides a cover sheet with a cut line and therefore a peel edge. Kenna does not specify the location of the cut line being at the center along the length of the bonding base. Because Kenna is silent regarding the exact location, Wang is relied upon to demonstrate it is well-known and conventional in the art for such cut lines and therefore said peel edges to be located centrally along the length. There is no need for more explanation, the cut line needs to go somewhere on the cover sheet and Wang is demonstrating it’s known for that location to be the center along the length.
Argument: Regarding claim 7, Fazal discloses use of a thread having a strength break of at least about 5 pounds but Fazal does not disclose the thread is a monofilament thread.
Response: Fazal teaches “any type of thread can be used” (meaning monofilament or multi-filament threads are covered as any type of thread can be used), such as but not limited to polyester, nylon, polymeric material and the like. It has already been established that use of monofilament thread for sewing is well-known and conventional and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (Refer to MPEP 2144.07).
Argument: With regard to previous claim 9 which has been incorporated into claim 1, while Sthair discloses securing wings/tabs, the manner in which the wings are used differs from the presently claimed invention as in Sthair one wing is folded onto the bonding base and the other wing is then folded over and adhered to the first wig. The claimed configuration requires the tabs directly engage and wrap around the user’s hair. As presently disclosed, each tab is sized and shaped to fold back and wrap around hair.
Response: There being overlap or not is irrelevant. The invention is an apparatus claim not a method claim and the tabs of Sthair are “wrapped around hair”. As noted in the 101 rejection above, the part of the human body (hair) cannot be positively claimed and such limitations need to be provided for in intended use or functional clauses (e.g. said end tabs are capable of being wrapped around hair). The claims to not provide specific size or shape requirement to the tabs.
The current claims do not require the tabs directly engage and wrap around the user’s hair and if they did, the 101 rejection would remain as engagement with the human body is positively recited in this language.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Poellnitz (US 20230180873) demonstrates it is well-known for mesh materials to have circular apertures (Refer to paragraph 0092). Lloyd et al. (US 4245630) demonstrates it is well-known for the adhesive tape to have circular air passage holes (Refer to claim 10). Finamore (US 5368052) demonstrates it is well-known for mesh materials to provide apertures of 3mm (Refer to col. 2 lines 44-52, where 1/8 inch is approximately 3.175 mm). The following patent documents demonstrate it is conventional to use monofilament thread to sew: US 2660546 (Refer to col. 1 lines 21-26), US 4097652 (Refer to Abstract), US 6448367 (Refer to Abstract), US 6670034 (Refer to col. 1 lines 46-55). The following patent documents demonstrate it is conventional to use monofilament thread for sewing in hairpieces: US 20120186595 (Refer to paragraph 0130) and US 20180035738 (Refer to paragraph 0084).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TATIANA L NOBREGA whose telephone number is (571)270-7228. The examiner can normally be reached M-F 8am-4pm.
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
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