DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/7/26 has been entered.
Drawings
Applicant’s amendment filed 7/7/26 cancelling claims 2 and 12 moots the previous drawing objection(s); therefore, the replacement drawings received on 3/13/26 are accepted.
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 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.
Claim(s) 1, 4, 6-11, 14, and 16-17, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Glass (US 20140026914) in view of Kim (US 20040194794).
Regarding the claims recitation that the tongue member “operates as a plug or cork to seal the opening of the cavity thereby maintaining the volume of liquid within the cavity, the applicant is advised that, while the features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In addition, it has been held by the courts that apparatus claims cover what a device is, not what a device does. In this case, the patented apparatus of Glass in view of Kim discloses (as detailed above) all the structural limitations required to perform the recited functional language, therefore was considered to anticipate the claimed apparatus. The device of modified Glass includes a plug and includes a sealed cavity containing liquid and therefore meets the structural limitations required by the claims.
Claims 1, 4, 11, and 14: Glass discloses an artificial fingernail comprising: a base (13) for attachment to the natural nail (see Figs 1-7) comprising: a curved lower surface, a curved upper surface, and a cavity (19 & 14); an interchangeable tip (10) for detachably connecting to the base, the interchangeable tip comprising: an attachment portion including a curved bottom surface for attachment to the base and thereby the natural nail, a tongue member (11) integrally connected to and extending outwardly from the attachment portion; and the tongue member is received within the cavity of the base sealing the cavity (see Figs 1-7). The attachment portion and the tongue member are both curved (see Fig 1), and Glass discloses the invention essentially as claimed except for providing the cavity on the interchangeable tip and the tongue on the base and the decorative element including a liquid in a cavity with beads suspended in the liquid.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the artificial fingernail of Glass by reversing the fastener so the base carries the tongue member(s) and the interchangeable tip carries the cavity of the fastener, since it has been held by the courts that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(A).
Glass discloses the invention is meant to enable a user to change their nail color and design quickly [0013], and modified Glass discloses the invention essentially as claimed except for the design including a liquid cavity carrying a liquid with at least one bead in the liquid forming the decoration/design of the nail.
Kim, however, teaches a molded artificial fingernail having an interchangeable tip with a curved upper surface (12) and a curved lower surface (11) with a liquid (14) [0020] housed in a cavity formed therebetween and a series of beads (13) suspended in the liquid as the decorative element of the artificial nail in order to increase the decorative appeal [0009] of the nails. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the artificial nails of Glass by providing a cavity carrying a liquid and beads and formed between the lower and upper portions of the nail to form the design in view of Kim in order to increase the decorative appeal of the nails as taught by Kim.
Claims 6 and 9: Modified Glass discloses the invention of claim 1 and Glass further discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7) and extends coextensive with the natural nail. The limitation requiring the cavity extends “entirely beyond a terminating edge of the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 7: Modified Glass discloses the invention of claim 1 and Glass further discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7) and extends coextensive with the natural nail. The limitation requiring the cavity extends “over the natural nail and beyond a terminating edge of the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 8: Modified Glass discloses the invention of claim 1 and Glass further discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7) and extends coextensive with the natural nail. The limitation requiring the cavity extends “only over the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 10: Modified Glass discloses the invention of claim 1 and Glass further discloses the base is attached to the natural nail and can be attached to the natural nail with a space between the base and the cuticle if so desired because it is a functional recitation and the device is capable of being used this way if so desired.
Claims 16: Glass discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7).
Claim 17: while Glass illustrates the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7), there is nothing that precludes a user from attaching the base spaced away from the cuticle since the base is attached with adhesive [0027]. Since applicant is essentially claiming an intended use recitation and the device of modified Glass is capable of being used/attached in this way, it meets the limitations.
Claim(s) 1, 4, 6-11, 14, and 16-17 as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 20040194794) in view of Glass (US 20140026914).
Claims 1, 4, 11, and 14: Kim discloses a molded artificial fingernail comprising a curved bottom surface for attachment to the natural nail and a tip with a curved upper surface (12) and a curved lower surface (11) with a volume of liquid (14) [0020] housed in a cavity formed therebetween and a series of beads (13) suspended in the liquid as the decorative element of the artificial nail in order to increase the decorative appeal [0009] of the nails. Kim explicitly illustrates that the entire nail tip can include liquid (see Fig 3) or only a portion of the nail tip can include the liquid decoration (see Fig 4) depending on user preference. Kim discloses the invention essentially as claimed except for the nail tip including a base for attachment to the natural nail and the base having a tongue member to join the tip to the natural nail with the tongue member being received in the cavity.
Glass, however, teaches an artificial fingernail comprising: a base (13) for attachment to the natural nail (see Figs 1-7) comprising: a curved lower surface, a curved upper surface, and a cavity (19 & 14); an interchangeable tip (10) for detachably connecting to the base, the interchangeable tip comprising: an attachment portion including a curved bottom surface for attachment to the base and thereby the natural nail, a tongue member (11) integrally connected to and extending outwardly from the attachment portion; and the tongue member is received within the cavity of the base sealing the cavity (see Figs 1-7). The attachment portion and the tongue member are both curved (see Fig 1), and Glass discloses providing artificial nails with this type of base and interchangeable tip arrangement in order to enable a user to change their nail color and design quickly [0013]. In other words, Glass teaches providing artificial nails with a decorative interchangeable tip and with a base for attachment thereto via a tone and groove connection mechanism in order to allow a user to quickly change their nail design as desired. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the artificial nail tip of Kim by providing it with the base and tip arrangement taught by Glass in order to allow a user to easily change their nail design as taught by Glass.
Modified Kim discloses the invention essentially as claimed except for reversing the tongue and groove fastener taught by Glass. Glass discloses the tongue on the interchangeable tip sealing the cavity of the base rather than the tongue on the base and the cavity on the tip. However, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the artificial fingernail of modified Kim by reversing the fastener so the base carries the tongue member(s) and the interchangeable tip carries the cavity of the fastener, since it has been held by the courts that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(A).
Claims 6 and 9: Modified Kim discloses the invention of claim 1 and modified Kim discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7 of Glass) and extends coextensive with the natural nail. The limitation requiring the cavity extends “entirely beyond a terminating edge of the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 7: Modified Kim discloses the invention of claim 1 and modified Kim discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7 of Glass) and extends coextensive with the natural nail. The limitation requiring the cavity extends “over the natural nail and beyond a terminating edge of the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 8: Modified Kim discloses the invention of claim 1 and modified Kim further discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7 of Glass) and extends coextensive with the natural nail. The limitation requiring the cavity extends “only over the natural nail” is relative to the size of the fingernail it is being attached to, so the device meets these limitations because it is a functional recitation and the device is capable of being used this way if so desired.
Claim 10: Modified Kim discloses the invention of claim 1 and modified Kim further discloses the base is attached to the natural nail and can be attached to the natural nail with a space between the base and the cuticle if so desired because it is a functional recitation and the device is capable of being used this way if so desired.
Claims 16: Modified Kim discloses the invention of claim 1 and Kim further discloses the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7).
Claim 17: Modified Kim discloses the invention of claim 1 and while Glass illustrates the base is attached to the natural nail and can abut and extend forwardly from the cuticle (see Figs 6-7), there is nothing that precludes a user from attaching the base spaced away from the cuticle since the base is attached with adhesive [0027]. Since applicant is essentially claiming an intended use recitation and the device of modified Glass is capable of being used/attached in this way, it meets the limitations.
Response to Arguments
Applicant’s arguments filed 7/7/26 have been considered but are moot because they are all drawn to the newly amended claim limitations, which have been addressed above with modified grounds of rejection.
Applicant argues the claims require a “structural plug”; however, the claims require a tongue/plug, which is simply another word for a projection. The functional recitation of “sealing the cavity” is essentially a method step because once the nail is assembled for use, the plug is received in a cavity. At the outset, the proposed modification provides the nail tip of Kim containing liquid to the artificial nail tip of Glass. Glass already teaches a plug and a cavity for joining the base to the nail tip, so the proposed modification would result in the plug also helping to seal the cavity because otherwise the liquid would leak out and the device would not work as disclosed in the proposed modification, so this functional recitation does not assist in overcoming the previous prior art rejection.
Furthermore, in the interest of compact prosecution, the office asserts that reversing the reference of Kim and Glass would also render the claims obvious because Kim already discloses a sealed cavity containing liquid and beads as the decorative element in the nail tip. Glass discloses providing nail tips removable with a base via a tongue and groove connection or plug and socket connection. The proposed modification is the provide the nail tip of Kim with the removable base arrangement of Glass in order to allow a user to quickly and easily change their nail design as desired. This proposed modification would also result in the cavity being “sealed” with the plug because again, if it was not “sealed” the liquid would not be retained and would leak out which is contrary to the disclosures themselves. Applicant appears to be attempting to claim a step of construction/using the nail within the device claims, which does not receive patentable weight because the claims are not drawn to a method of using or manufacturing the device, they are drawn to the device itself which structurally requires a base with a tongue member, an interchangeable tip detachably connected to the base via the tongue, a volume of liquid within the tip and decorative elements within the liquid. All of which are taught by the proposed modifications. Whether the cavity is sealed prior to application of the plug or after, the end result is still a sealed cavity containing liquid and decorations as claimed.
Applicant argues Kim fails to teach a nail base; In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references.
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 Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
