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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/1/2026 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show each of the plurality of adhesive elements is sized so that it can only be applied to fewer than all of the eyelash filaments in an eyelash segment as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 5, please amend “the plurality of eyelash comprising:” to - -the plurality of eyelash segments comprising: - -. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “each of the plurality of adhesive elements is sized so that it can only be applied to fewer than all of the eyelash filaments in an eyelash segment” was not described in the specification specifically “that it can only be applied” paragraph 34 of the specification states “The adhesive element 20 can be disposed on a plurality of eyelash filaments 14 across the entire length L of the support strip 12 or some fraction of the eyelash filaments 14, such as two-thirds, one-half, or one-third.”
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.
Claim(s) 1-8, 10, 17, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 8,225,800) in view of Shin (US 2002/0056465).
Byrne discloses an artificial eyelash system comprising: a package (col. 8,lines 10-15) a plurality of eyelash segments (2, 3, 4) within the package, each of the plurality of eyelash segments being a maximum of one third a width the user’s natural eyelashes, and each of the plurality of eyelash segments comprising: a plurality of eyelash filaments comprising a base (2) and a tip (7) and an average filament length; and a support strip (4) attached to the bases of the plurality of eyelash filaments, the support strip having a width; and a plurality of adhesive elements within the package, each adhesive element having a first surface adapted to adhere to natural eyelashes of a user and a second surface adapted to adhere to the plurality of eyelash filaments of an eyelash segment, (col. 7, lines 10-15), wherein each adhesive element has a width wherein the adhesive element comprises an adhesive that retains its stickiness while in the package and the first surface is adapted to adhere to the user’s natural eyelashes without application of additional adhesive to the natural eyelash or to the adhesive element (col. 8, lines 50 and col. 9 ,lines 1-30). Byrne does not disclose wherein each adhesive element has a width greater than the width of the support strip and less than half the average filament length, such that the adhesive element necessarily extends onto the eyelash filaments even if it is disposed on the support strip, and such that the adhesive element can be applied to the eyelash filaments below one half the average filament length without extending beyond one-half the average length, thereby defining a portion of each eyelash filament that is free of adhesive beyond one-half the average filament length. Shin teaches an adhesive tape wherein each adhesive element has a width greater than the width of the support strip and less than half the average filament length, such that the adhesive element necessarily extends onto the eyelash filaments even if it is disposed on the support strip, and such that the adhesive element can be applied to the eyelash filaments below one half the average filament length without extending beyond one-half the average length, thereby defining a portion of each eyelash filament that is free of adhesive beyond one-half the average filament length (Fig. 6-7; paragraph 43-45). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash segments of Byrne be applied from the base toward the tip to a location less than half the average length as taught by Shin to assist the device in attachment to the eyelashes.
Regarding claim 2, Byrne further wherein the second surface of the adhesive element is applied to an upward-facing surface of the eyelash filaments (i.e. is capable of being applied to an upward-facing surface see Fig. 1; col. 7, lines 15-25).
Regarding claim 3, the combination of Byrne and Shin disclose the claimed invention except for the plurality of adhesive elements having rounded distal ends. Modifying the distal ends of the tape of Bryrne and Shin would have been obvious to one having ordinary skill in the art at the time of the effective filing date because such modification constitutes a change in shape that does not affect the function of the device. The straight ends would perform the same function as the rounded ends. Altering the shape of a known device where the modification yields predictable results is considered an obvious matter of design choice. See MPEP 2144.04. Therefore, the difference between the ends of Byrne and Shin is merely a predictable variation and does not patentably distinguish the claim.
Regarding claim 4, the combination of Byrne and Shin discloses ach of the plurality of adhesive elements is sized so that it can only be applied to fewer than all of the eyelash filaments in an eyelash segment. (i.e. Shin is capable of being cut to only apply to some of the filaments).
Regarding claim 5, Byrne and Shin disclose the upward-facing adhesive is overlaid with a removable substrate before the plurality of eyelash segments are placed in the package (Shin; paragraph 43-45).
Regarding claim 6, Byrne and Shin further disclose the adhesive element comprises first adhesive and the second surface of the adhesive element comprises a second adhesive (Shin; Fig. 15).
Regarding claim 7, Byrne and Shin disclose the adhesive element comprises a double-sided tape with a substrate between the first adhesive and the second adhesive (Shin; Fig. 15 paragraph 43-45).
Regarding claim 8, Byrne further discloses the eyelash filaments extend form the support strip such that at least some of the eyelash filaments overlap (Fig. 6).
Regarding claim 10, Byrne further discloses he eyelash extension system is a wisp, cluster, flare, or individual eyelash extension system (Fig. 1-36).
Regarding claim 17, the combination of Byrne and Shin disclose the adhesive element extends from the support strip along a length of the eyelash filament (Shin; Fig. 7).
Regarding claim 26, Byrne and Shin disclose the adhesive element does not coalesce during storage of the artificial eyelash extension system (Byrne; col. 7, lines 12-17).
Claim(s) 9, 11, 27, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne in view of Shin as applied to claims 1-8, 10, 17, and 26 above, and further in view of Hassler (US 2,503,552).
Byrne and Shin disclose the claimed invention except for the first and second adhesive have different strengths of adhesion and the strength of adhesion between the first adhesive and the underside of the user’s natural eyelashes is less than the strength of adhesion between the second adhesive and the plurality of eyelash filaments such that the plurality of eyelash segments can be removed from the underside of the user’s natural eyelashes without the adhesive element being removed from the eyelash segments.
Hassler teaches the first adhesive and the second adhesive have different strengths of adhesion (Hassler col. 2, lines 5-15 “a tacky coating 11b on one surface. The lash hairs 12 are secured to the opposite face of the foundation strip by cement 13”) and the strength of adhesion between the upward-facing adhesive and the underside of the user’s natural eyelashes is less than the strength of adhesion between the downward-facing adhesive and the plurality of eyelash filaments such that the plurality of eyelash segments can be removed from the underside of the user’s natural eyelashes without the adhesive element being removed from the eyelash segments (Hassler col. 2, lines 5-15 “a tacky coating 11b on one surface. The lash hairs 12 are secured to the opposite face of the foundation strip by cement 13”). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the adhesive of Byrne and Shin be of different strengths as taught by Hassler in order to allow for easy removal of the adhesive from the user.
Response to Amendment
The declarations under 37 CFR 1.132 filed 6/1/2026 are insufficient to overcome the rejection of claims 1-11, 17, and 26-28 based upon the new rejection as set forth in the current Office action because: It refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant’s arguments filed 6/1/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
7/29/2026
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