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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 4/1/25 & 9/27/24 was/were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Election/Restrictions
Applicant’s election of Group I drawn to a method of installing a hair extension in the reply filed on 3/12/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 16-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected device, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/12/26.
Priority
Acknowledgement is made of applicant’s claim for priority under 35 U.S.C. 119 (e) with reference to Provisional Application Number: 63/586967 filed on 9/29/23. The office notes, however, the provisional application does not provide support for any of the pending claims because all the pending claims 1-15 now require an “adhesive”, claims 4 and 7 each requires heating, claim 6 requires a backing layer, claim 8 requires applying pressure to the base, claim 10 requires a “common cuticle scale direction”, claim 14 requires sewing and adhesive, claim 15 requires a keratin based adhesive specifically, none of which is not discussed in applicant’s provisional application so claims 1-15 have an effective filing date of 9/27/24.
Drawings
The drawings were received on 9/27/24. These drawings are objected to.
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(s) 1-10 and 15 is/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 pre-AIA the applicant regards as the invention.
Claim 1: this claim recites “selecting the installation site”; however, it is unclear what step this exactly is meant to include. Can someone do this in their mind? Does it require combing the hair, some sort of data analysis, no analysis, some of the above, none of the above, all of the above? It is unclear what exact “step” is being claimed because it is unclear what one would need to do to “select an installation site” and there is no clarity provided in the disclosure to help define what actual steps one must perform to meet this limitation making the metes and bounds of the claim unclear. This claim also recites “preparing an adhesive for attachment”; however, what does this language mean? Is this mixing the adhesive together, is it just taking adhesive from a kit box, is it manufacturing the adhesive, none of the above, all of the above? The metes and bounds of the method step are unclear. The last lines of this claim also recite “causing the adhesive to affix to the hair extension”; however, this method step language is also confusing and unclear because adhesive by definition adheres/affixes so what step must one perform to “cause” the adhesive to affix besides applying the adhesive which is already set forth in the preceding step. The metes and bounds of the claim are unclear. For examination purposes, the claim will be treated as reciting “selecting the installation site by sectioning, at the installation site,…” in the first lines; reciting “providing a prepared adhesive” rather than “preparing an adhesive” and omitting the last clause because this is a naturally occurring phenomenon and therefore cannot be claimed as a method step unless an actual step is being performed. Clarification or correction is requested.
Claim 2: this claim requires “the base portion comprises a linear portion and an angled portion”; however, this claim depends from claim 1, which requires the extension strands extend from the base at an oblique angle. Based on a review of applicant’s disclosure, the extension strands only extend at an oblique angle to the base when the base itself is angled or curved and not when the base is formed in a straight line. Therefore claim 2 would appear to directly contradict claim 1, from which it depends because some of the extension strands will not extend at an oblique angle to the base. For examination purposes, the claim will be treated as reciting “wherein the base portion includes an angled section where the extension strands extend at the oblique angle; and a linear section joined to the angled section with additional extension strands extending from the linear section”. Clarification or correction is requested.
Claim 6: this claim recites “removing a backing layer of adhesive”; it is unclear what applicant is trying to claim. Is this claiming a backing layer on the adhesive that is removed prior to using the adhesive; like a wax paper strip? Or is this claiming a second removable layer of adhesive? Please note that if applicant is attempting to claim a second removable layer of adhesive, this will result in a drawing objection, which does not constitute a new grounds for going Final in the next office action. For examination purposes, the claim will be treated as reciting “removing a backing strip to expose the adhesive”. Clarification or correction is requested.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 9 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9: this claim recites “selecting a respective base portion based on a respective oblique angle”; however, this language is confusing. It is unclear what additional step this actually requires because claim 1 already requires aligning the base portion to the oblique angled area meaning it was already selected based on the angle in claim 1. Is claim 9 trying to set forth multiple base portions like a kit of some kind? Is it trying to require that the angle is some particular angle? As presented, claim 9 does not appear to further limit the method of claim 1 in any way; it is improper dependent form.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1, 4-5, 7-9, 11, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Claycomb (US 20240081454).
Claims 1 and 9: Claycomb discloses a method of installing a hair extension section (200) from a plurality of hair extension sections (see Figs 2-3); each of the hair extension sections comprises: a base portion (202) with a plurality of hair extension strands (204) extending from the base at an oblique angle relative to a length of the base portion (see Fig 2). The installation method comprising: selecting an installation site by sectioning the wearer’s natural hair [0016] at the oblique angle (see Figs 2-3) thereby forming an upper section of natural hair parted from a lower section of natural hair (because this is the definition of parting hair) by the angled path/oblique angle (see Figs 2-3) which can be angled with respect to a sagittal axis of the wearer (see Fig 3). Applying a prepared adhesive in the form of a double sided tape [0016] to the base portion and the lower section of hair [0016] and affixing the hair extension section against the natural hair/scalp of the wearer such that the extension strands fall parallel to the user’s natural hair (see Fig 3) and the base is aligned along the oblique angle/path while allowing the adhesive to affix the extension to the user’s natural hair [0016].
Claims 4 and 7: a user holding the base in their hands for installation constitutes “heating” the base portion of “applying heat to the base portion” via the installer’s body heat. Note applicant’s claims do not specify how the heat is applied or what temperature is required, and room temperature is lower than human body temperature so the human installer holding the base constitutes “heating” the base or “applying heat” to the base as claimed.
Claim 8: the base portion is described as a pliable liquefied polymer [0016] material that is “secured” [0081] to the user’s natural scalp or hair using double sided tape [0016] and the installer’s hands. This requires gripping the extension and applying the tape thereto [0016] which by definition requires some amount of pressure on the base portion, thereby meeting the claim limitations.
Claim 11: Claycomb discloses a method of installing a hair extension section (200) from a plurality of hair extension sections (see Figs 2-3); each of the hair extension sections comprises: a base portion (202) comprising a first section and a second section (see Fig 2) with a plurality of hair extension strands (204) extending from the first section and the second section at an oblique angle relative to a length of the respective section of the base portion (see Fig 2). The installation method comprising: sectioning the wearer’s natural hair [0016] at the oblique angle (see Figs 2-3) to form an installation site and thereby forming an upper section of natural hair parted from a lower section of natural hair (because this is the definition of parting hair) by the angled path/oblique angle (see Figs 2-3) which can be angled with respect to a sagittal axis of the wearer (see Fig 3). Applying a prepared adhesive in the form of a double sided tape [0016] to the base portion and the lower section of hair [0016] and affixing the hair extension section against the natural hair/scalp of the wearer such that the extension strands fall parallel to the user’s natural hair (see Fig 3) and the base sections each are aligned and run along the angled path [0016].
Claim(s) 1-5, 7-9, 11-14, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salinas (US 20050252518).
Claims 1-3 and 9: Salinas discloses a method of installing a hair extension section to a wearer, the hair extension section comprising a base portion (see Fig 8) comprising a plurality of hair extension strands (20, Fig 2) extending from the base portion at an oblique angle relative to a length of the base portion (see Figs 2 & 8). The installation method comprising selecting an installation site by sectioning the wearer’s natural hair (see Figs 3-4) [0049] at the oblique angles to match the base portion angles (see Fig 8) and applying adhesive tape sections [0050] to the natural hair and the base portion and affixing the base portion to the installation site at the oblique angles [0050], which requires alignment. The base is chosen from multiple shaped base choices (see Figs 1-10) and these shapes can include a linear section and an angle section joined at a junction (see Fig 8) and this base is applied to the scalp in the same way as illustrated (see Figs 3-5) so the path would match the shape of the base as illustrated (see Figs 3-5 & 8).
Claims 4 and 7: a user holding the base in their hands for installation constitutes “heating” the base portion or “applying heat to the base portion” via the installer’s body heat. Note applicant’s claims do not specify how the heat is applied or what temperature is required, and room temperature is lower than human body temperature so the human installer holding the base constitutes “heating” the base or “applying heat” to the base as claimed.
Claim 5: one of the oblique angles is between 30-60 degrees (see Fig 8).
Claim 8: the base portion is described as a flexible material [0014-0015] that is secured to the user’s natural scalp or hair using double sided tape [0050] and the installer’s hands. This requires gripping the extension and applying the tape thereto [0050] which by definition requires some amount of pressure on the base portion, thereby meeting the claim limitations.
Claims 11-13: Salinas discloses a method of installing a hair extension section to a wearer, the hair extension section comprising a base portion (see Fig 8) comprising a first section and a second section joined to the first section (see Fig 8) and a plurality of hair extension strands (20, Fig 2) extending from the base portion first section at an oblique angle relative to a length of the first section of the base portion (see Figs 2 & 8). The installation method comprising sectioning the wearer’s natural hair (see Figs 3-4) [0049] at the oblique angles to match the base portion angles (see Fig 8) and applying adhesive tape sections [0050] to the natural hair and the base portion and affixing the base portion to the installation site at the oblique angles [0050], which requires alignment. The base is chosen from multiple shaped base choices (see Figs 1-10) and these shapes can include a linear second section and an angled first section joined at a junction (see Fig 8) with the first section defining a first angle relative to the sagittal axis of the wearer and the second section defining a second angle relative to the sagittal axis of the wearer and being different from the first angle (see Fig 8). At least one of the first section and second section comprise a curved part at the junction (see Fig 8). The base is applied to the scalp in the same way as illustrated (see Figs 3-5) so the path would match the shape of the base as illustrated (see Figs 3-5 & 8) and be aligned along this path for installation (see Figs 3-5 & 8).
Claim 14: Salinas indicates the attachment means can include sewing the base [0047] to the user’s hair.
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.
Claims 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claycomb (US 20240081454).
Claim 6: Claycomb discloses the kit coming with double sided tape, which is old and well known to include a backing paper to protect the adhesive during transport. In the event applicant disagrees that double sided tape rolls typically come with some sort of backing paper; it would have been an obvious matter of design choice to provide the double sided tape with a removable backing paper since this is an industry standard in supplying double sided tapes for dispensing and in order to protect the adhesive itself during transport so that it remains sticky for use when delivered to the customer.
Claims 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claycomb (US 20240081454) in view of Alex (US 20170318884).
Claim 10: Claycomb discloses the hair extension strands can be natural, synthetic or a combination of both [0077] invention essentially as claimed except for the cuticles of the natural strands all being aligned. Alex, however, teaches a hair extension (see Fig 2e) made of natural hair where the cuticles of each strand are aligned specifically so that during color treatment the color is equally absorbed into the strands [0007]. 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 hair extension of Claycomb by providing all the cuticles aligned in the same direction in view of Alex in order to ensure that if a wearer color treats their hair once the extensions are applied, the color will be absorbed evenly.
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claycomb (US 20240081454) in view of Koenig (US 20120073592).
Claim 14: Claycomb already discloses applying a prepared adhesive in the form of a double sided tape [0016] to the base portion and the lower section of hair [0016] and affixing the hair extension section against the natural hair/scalp of the wearer such that the extension strands fall parallel to the user’s natural hair (see Fig 3) and the base sections each are aligned and run along the angled path [0016]. So Claycomb discloses the invention essentially as claimed except for sewing the hair extension to the user’s natural hair instead of using adhesive strips of tape. Koenig, however, teaches a hair extension kit (see Fig 5) and explicitly teaches that adhesive strips, keratin glue, and sewing are all old and well known equivalent methods for securing hair extensions to a user’s natural hair [0031]. 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 hair extension of Claycomb to include a sewing attachment instead of adhesive strips in view of Koenig since Koenig teaches these to be art recognized equivalents.
Claim 15: Claycomb already discloses applying a prepared adhesive in the form of a double sided tape [0016] to the base portion and the lower section of hair [0016] and affixing the hair extension section against the natural hair/scalp of the wearer such that the extension strands fall parallel to the user’s natural hair (see Fig 3) and the base sections each are aligned and run along the angled path [0016]. So Claycomb discloses the invention essentially as claimed except for the adhesive being keratin based. Koenig, however, teaches a hair extension kit (see Fig 5) and explicitly teaches that adhesive strips, keratin glue, and sewing are all old and well known equivalent methods for securing hair extensions to a user’s natural hair [0031]. 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 hair extension of Claycomb to include a keratin based adhesive instead of adhesive strips in view of Koenig since Koenig teaches these to be art recognized equivalents.
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.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
