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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 18 recites “in which the hair styling device has heating means for heating one or more parts of the device to a desired operating temperature.” This limitation invokes a 112(f) interpretation. Paragraph [000158] describes the heating means as potentially being heating elements or hot air blown along the channels of the device.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,082,672. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is a generic claim on the more specific Claim 13 of US 12,082,672. All of instant application claim 1 is recited in ‘672 Claim 13, as shown below by the bolded portions of claim 13. Claim 13 recites “driving members” on which there are multiple “driving elements”, and the driving members move relative to the forming members therefore the driving elements do as well. Claim 13 also requires multiple pairs of forming members, while the instant application only requires 1 pair of forming members.
Instant Application Claim 1
U.S. Patent 12,082,672 Claim 13
A hair styling device for imparting a wave to a section of hair,
the device having a first forming member and a second forming member,
a hair-receiving region between the first forming member and the second forming member, and
a primary driving element which is movable relative to the first forming member and the second forming member and which is adapted to move the section of hair in the hair-receiving region in a hair-deforming direction, the device having a secondary driving element which is movable relative to the first forming member and the second forming member and which is adapted to move the section of hair in the hair-receiving region in a direction opposed to the hair-deforming direction.
A hair styling device for imparting a wave to a section of hair without clamping the section of hair to which the wave is imparted, the device having a first forming member and a second forming member comprising a first pair of neighboring forming members, a first hair-receiving region between the first forming member and the second forming member, the device having a second pair of neighboring forming members with a second hair-receiving region between the second pair of neighboring forming members, the device having multiple driving members including at least a first driving member and a second driving member, the first driving member being movable relative to the first forming member and the second forming member to engage the section of hair and to deform the section of hair in the first hair-receiving region in use, the second driving member being movable relative to the second pair of neighboring forming members to engage the section of hair and to deform the section of hair in the second hair-receiving region in use, the first and second driving members undertaking a two-stage movement as they deform the section of hair, the driving members in a first stage being movable in a first direction to drive the section of hair into the respective hair-receiving region in use, the driving members in a second stage being movable in a second direction, the second direction being at an angle to the first direction whereby in use to further move the section of hair in the respective hair-receiving region, in which the driving members have a primary driving element which is adapted to drive the section of hair in a hair-deforming direction, the driving members also having a secondary driving element which is adapted to drive the section of hair in a direction opposed to the hair-deforming direction.
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.
Claim 10 is 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.
The term “sharply” in claim 10 is a relative term which renders the claim indefinite. The term “sharply” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Sharply pointed could refer to the required angle between the sides of a pointed tip, but the bounds of such an angle are not obvious or recited in the claim or specification. For the sake of examination, claim 10 will be interpreted to require the driving elements to be pointed.
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 1-7 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheridan (US 716,295).
Regarding Claim 1, Sheridan discloses hair styling device for imparting a wave to a section of hair (lines 2-7; Figure 1), the device having a first forming member (top comb A as shown in Figure 1) and a second forming member (middle comb A as shown in Figure 1), a hair-receiving region between the first forming member and the second forming member (the space between the first and second forming members, occupied by comb B), and a primary driving element (a tooth of comb B located between the comb As) which is movable relative to the first forming member and the second forming member (see Figure 3 where the combs are slid or displaced relative to each other) and which is adapted to move the section of hair in the hair-receiving region in a hair-deforming direction (to the right as shown in Figure 3), the device having a secondary driving element (another tooth of the comb B located between the comb As, specifically the tooth directly to the right of the tooth selected as the primary driving element) which is movable relative to the first forming member and the second forming member and which is adapted to move the section of hair in the hair-receiving region in a direction opposed to the hair-deforming direction (to the left as shown in Figure 3; see annotated Figures 1 and 3 below).
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Regarding Claim 2, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which the primary and secondary driving elements are connected to move together (the primary and secondary driving elements are adjacent teeth on the same comb, therefore they are connected and move together, as shown when the comb moves from the normal position of Figure 1 to the displaced position of Figure 3).
Regarding Claim 3, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which the primary and secondary driving elements are parts of a unitary component (the primary and secondary driving elements are adjacent teeth on the same comb B, which is a unitary component as shown in Figure 2).
Regarding Claim 4, Sheridan discloses the hair styling device according to claim 3 (as presented above) in which the unitary component is a driving member (comb B).
Regarding Claim 5, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which the primary driving element and the secondary driving element comprise upstanding driving elements (teeth on comb B) of a driving rail (base of comb B, as shown in side view in Figure 2).
Regarding Claim 6, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which at least one of the first forming member (top comb A as shown in Figure 1) and the second forming member (middle comb A as shown in Figure 1) has a number of upstanding forming elements (teeth of combs).
Regarding Claim 7, Sheridan discloses the hair styling device according to claim 6 (as presented above) having a body (the set of combs A and B connected by bar C) and a closure part (caps E), the closure part being movable relative to the body between an open position and a closed position (cap E shown open in figures with full lines and closed with dotted lines; lines 44-51), in which the primary and secondary driving elements overlap the forming elements when the closure part is in the closed position (the caps E being closed does not affect the driving elements and forming elements, but when the device is in the normal position of Figure 1 the driving elements overlap the forming elements when viewed from the side as all the teeth of the combs line up).
Regarding Claim 12, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which each of driving elements is movable between a start position (Figure 1) and a limit position (Figure 3).
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 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sheridan (US 716,295) as applied to claims 1 and 7 above, and further in view of Siers (US 1,852,269).
Regarding Claim 8, Sheridan discloses the hair styling device according to claim 7, as presented above. Sheridan does not disclose the driving members mounted on the on and the forming elements mounted to the closure part.
However Siers, in the same field of endeavor of hair styling devices for imparting a wave on the hair (page 1 lines 1-6), teaches in which the driving members (movable combs 43 and 46 with inclined teeth 44 and 48) are mounted to one movable side of a device (mounted on upper presser member 5) and the forming elements (sides of groove 32 and rib 33 into which the combs insert between when in the closed position) are on the other movable side of the device (mounted on lower presser member 6). Siers has the driving members mounted on a different side than the forming elements so that waves can be imparted on the hair both by the driving members moving longitudinally and by the forming elements being at different heights, creating 3-dimensional waves (page 3 lines 84-107).
Therefore 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 styling device as taught by Sheridan to have the driving members on one movable (closable) side and the forming elements on the other movable (closable) side as taught by Siers in order to allow for the stationary components to be in different planes to impart 3-dimensional waves. While Siers describes the driving members as being on the upper presser member, either the upper or lower member could be considered the body and the other the closure part as the two parts move towards each other to close the device.
Regarding Claim 9, Sheridan discloses the hair styling device according to claim 1, as presented above. Sheridan does not disclose the device having a chamber, rather the device is constructed of 4 combs with caps connected by a bar and cord.
However Siers, in the same field of endeavor of hair styling devices for imparting a wave on the hair (lines 1-6), teaches the hair styling device (Figure 1) having a chamber (defined by combs 36 which extend along the longitudinal direction, cover plate 68, bottom plate 20, connecting post 14 towards the handle, and the end teeth of combs 36 opposite the handle) for containing the section of hair in use (during use hair runs through the chamber; page 3 lines 72-107), the forming members and the driving elements being located in the chamber (movable combs 43 and 46 and cooperating groove 32 and rib 33 are all located within the chamber). Siers teaches the device having a chamber containing the section of hair in use in order to have a top and bottom to the area containing the forming members and driving elements such that heating elements can be added (page 3 lines 56-63).
Therefore 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 device as taught by Sheridan to further include a chamber as taught by Siers in order to have a space to add heating elements to the device.
Regarding Claim 10, Sheridan discloses the hair styling device according to claim 1, as presented above. Sheridan does not disclose the driving elements being at an angle and pointed.
However Siers, in the same field of endeavor of hair styling devices for imparting a wave on the hair (lines 1-6), teaches the driving elements (inclined teeth 44 and 48 of movable combs 43 and 46) are angled (described as inclined teeth and shown in Figures 2 and 4 to be angled) in the hair-deforming direction (shown as angled in both directions) and are sharply pointed (teeth are wider at the bottom than at the top therefore can be considered to be pointed). Siers teaches the driving elements (teeth) being angled in order to reduce the disturbance of the wave when the teeth are removed from the hair (page 2 lines 113 to 119).
Therefore 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 device as taught by Sheridan to include the driving elements being inclined and pointed as taught by Siers in order to reduce unwanted disturbances to the wave and hair during removal. It would be obvious to try the elements being angled in the hair-deforming direction as Siers shows teeth angled in opposite directions on the two movable combs.
Regarding Claim 11, Sheridan discloses the hair styling device according to claim 1 (as presented above) in which the primary and secondary driving elements (teeth of comb B located between combs A) are mounted to a driving rail (base of comb B, as shown in side view in Figure 2), in which each of the driving elements has a first side (right side of teeth as shown in Figure 2) and a second side (left side of teeth as shown in Figure 2), in which the driving rail has a linear edge between the first side of the first driving element and the second side of the second driving element (space between teeth, see annotated Figure 2 below), the first side leading when the driving elements are moving in the hair-deforming direction and the second side leading when the driving elements are moving in the direction opposed to the hair-deforming direction (see annotated Figure 2 below).
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Sheridan does not teach the teeth being angled and therefore does not teach the second side being angled.
However Siers, in the same field of endeavor of hair styling devices for imparting a wave on the hair (lines 1-6), teaches the driving elements (inclined teeth 44 and 48 of movable combs 43 and 46) are angled (described as inclined teeth and shown in Figures 2 and 4 to be angled) and therefore the sides of the driving elements are angled. Siers teaches the driving elements (teeth) being angled in order to reduce the disturbance of the wave when the teeth are removed from the hair (page 2 lines 113 to 119).
Therefore 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 device as taught by Sheridan to have angled driving elements, and therefore angled sides on the driving elements, as taught by Siers in order to reduce unwanted disturbances to the wave and hair during removal. It would be obvious to try the elements being angled in the hair-deforming direction as Siers shows teeth angled in opposite directions on the two movable combs. With the teeth angled towards the hair forming direction, it would cause the second side to lift the section of hair it is acting on up away from the linear edge of the driving rail when moved in the opposite direction to the hair-deforming direction.
Claims 13-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sheridan (US 716,295).
Regarding Claim 13, Sheridan teaches a method of styling a section of hair (lines 57- 69) with a hair styling device (shown in Figure 1) having a first forming member (top comb A of Figure 1) and a second forming member (middle comb A of Figure 1), a hair-receiving region between the first forming member and the second forming member (space between comb As, occupied by comb B as shown in annotated Figure 1 above), a primary driving element (a tooth of comb B located between the comb As) which is movable relative to the first forming member and the second forming member (Figure 1 shows normal or start position and Figure 3 shows displaced position, where teeth of comb B move relative to the comb As), and a secondary driving element (another tooth of the comb B located between the comb As, specifically the tooth directly to the right of the tooth selected as the primary driving element) which is movable relative to the first forming member and the second forming member (Figure 1 shows normal or start position and Figure 3 shows displaced position, where teeth of comb B move relative to the comb As), the method comprising the steps of: {i} moving the primary driving element relative to the first and second forming members to move the section of hair in the first hair-receiving region in a hair-deforming direction (displacing the comb from normal position of Figure 1 to displaced position of Figure 3; lines 57-66).
While Sheridan may not explicitly teach the second step of {ii} moving the secondary driving element relative to the first forming member and the second forming member to drive the section of hair in the hair-receiving region in a direction opposed to the hair-deforming direction, it would be obvious that releasing cord G to remove the device from the hair will also release the tension displacing comb B and cause the combs to move back to the left and the normal position as shown in Figure 1.
Regarding Claim 14, Sheridan teaches the method of claim 13 (as presented above) in which the primary and secondary driving elements move together relative to the first and second forming members (Figure 3 shows that comb B, and therefore the teeth on comb B that are the driving elements, moves relative combs A when in use).
Regarding Claim 15, Sheridan teaches the method according to claim 13 (as presented above) in which in step {i} the primary driving element moves to a limit position (displaced position of Figure 3), and in which in step {ii} the secondary driving element moves in the reverse direction to a retracted position (return to normal position of Figure 1).
Regarding Claim 16, Sheridan teaches the method according to claim 15 (as presented above) having a start position for the secondary driving element, in which the retracted position is the start position (Figure 1).
Regarding Claim 17, Sheridan teaches the method according to claim 13 (as presented above) in which a driving element acts as the primary driving element for a first section of hair and as the secondary driving element for a second section of hair (each tooth of comb B will act as both a primary driving element to the hair to the right of the tooth, as oriented in the figures, and a secondary driving element to the hair to the left of the tooth).
Regarding Claim 19, Sheridan teaches the method according to claim 13 (as presented above) in which the section of hair is released from the secondary driving element during step {ii} (step {ii} is the end of the process of imparting a wave on the hair, therefore the hair is removed from the device at least at the end of this step).
Regarding Claim 20, Sheridan teaches the method according to claim 13 (as presented above) in which the section of hair is not clamped (the device has a “cap” E to retain the hair within the combs, but the cap E sits on top of the teeth of the combs while the hair sits between the teeth, therefore closing cap E does not clamp the hair; the hair is still able to slide between the teeth).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sheridan (US 716,295) as applied to claim 13 above, and further in view of Siers (US 1,852,269).
Regarding Claim 18, Sheridan teaches the method according to claim 13, as presented above. Sheridan teaches that heating hair to hold its shape is known (lines 13-21), but does not explicitly teach the hair styling device having heating means.
However Siers, in the same field of endeavor of hair styling devices for imparting a wave on the hair (page 1 lines 1-6), teaches in which the hair styling device has heating means (resistance 40, page 2 lines 88 to 93) for heating one or more parts of the device to a desired operating temperature (page 2 lines 88 to 93; page 3 lines 56-63).
Therefore 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 device and method taught by Sheridan to include heating means in the device and heating the device to a desired temperature as taught by Siers. Application of heat is known to improve the retention of desired hair styles, therefore it would be obvious to optimize the temperature and the time at which it is applied during styling.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer P. Connell whose telephone number is (703)756-1169. The examiner can normally be reached Monday - Thursday 9 am - 3 pm ET.
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/JENNIFER P CONNELL/Examiner, Art Unit 3772
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772