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 .
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.
Claims 1 and 3-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,171,289. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Rejections - 35 USC § 102
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, and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arai (JP 3201846U).
Arai discloses a case for storing items a body (2) comprising a first outer sidewall (4); and a first plurality of slots (Figure 4; slot 4) recessed in the body and extending inward from the first outer sidewall; and a lid (1) that in a secured position with the body is configured to frictionally engage with and releasably hold a first plurality of artificial lash extensions in the slots (see Figure 3; paragraph 19) the body (2) further comprises a first plurality of vertical partitions that define the first plurality of slots (see Figure 4)
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in the secured position the lid (1) and the first plurality of slots are configured to form a first plurality of windows at an exterior surface of the case (see Figure 3). Claim 4, the lid (1) comprises a first plurality of protrusions (downward curved surface), wherein in the secured position the first plurality of protrusions of the lid are configured to releasably hold the first plurality of the artificial lash extensions in the first plurality of slots (see Figure 3; paragraph 19). Claim 5, the secured position the first plurality of protrusions of the lid extend within respective slots of the first plurality of slots (see Figure 3). Claim 7, the body further comprises a second outer sidewall (i.e. interpreted as the circle divided into two half circles) opposite the first outer sidewall, the first outer sidewall having a first curved surface, and the second outer sidewall having a second curved surface; and a second plurality of slots extending inward the second outer sidewall, wherein each of the first plurality of slots comprises a first floor that extends inward from the first curved surface, wherein each the second plurality of slots comprises a second floor that extends inward from the respective curved surface, and wherein in the secured position the lid is configured to releasably hold a second plurality of the artificial lash extensions in the second plurality of slots (see Figure 2A). Claim 8, the body further comprises a second plurality of vertical partitions that define the second plurality of slots (see Figure 4). Claim 9, each of a first plurality of floors of the first plurality of slots are located between respective adjacent pairs of the first plurality of vertical partitions, and each of a second plurality of floors of the second plurality of slots are located between respective adjacent pair of the second plurality of vertical partitions (see Figure 4). Claim 10, the first plurality of slots and the second plurality of slots are configured such that the artificial lash extensions at least in part extend within respective slots (see Figure 3). Claim 11, the first plurality of slots and the second plurality of slots are configured such that the artificial lash extensions extend entirely within respective slots (see Figures 3 and 4; paragraph 22).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai (JP 3201846-U).
Arai discloses the claimed invention except for the protrusions having a rough portion. It would have been an obvious matter of design choice to have the protrusions be made with a rough portion, since applicant has not disclosed that the rough portion solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the protrusions of Arai.
Response to Arguments
Applicant's arguments filed 3/6/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Arai does not disclose “a first plurality of vertical partitions that separate the first plurality of slots that extend away from a bottom surface of the body” and “wherein in the secured position the lid and the first plurality of vertical partitions are configured to form a first plurality of windows for the first plurality of slots at an exterior surface of the case” is not persuasive. Arai discloses a first plurality of vertical partitions that separate the first plurality of slots that extend away from a bottom surface of the body, see Figure below. These structures divide and separate boundaries between adjacent recesses which reasonably correspond to the claim “slots.” The surfaces necessarily extend from the body structure and function to partition adjacent regions, thereby meeting the functional requirement of “separating the first plurality of slots.” The claim does not require planar or rectilinear dividers. Arai’s curved, undulating structurers are structurally equivalents that extend form the body and define separated regions.
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Regarding Applicant’s argument that Arai fails to disclose “windows” formed at the exterior surface because the lid and container surfaces “closely contact” this argument is unpersuasive. When the surfaces of Arai closely contact the arrangement of alternating curved structures, they define regions that would form visible segments or apertures at the exterior having a minor separation corresponding to the claims “windows” since they define externally observable segmented portions aligned with the internal slots. Furthermore, Arai device is configured to be opened and closed as desired by the user to allow for visual inspection of contents.
Regarding applicant’s argument that “wherein each of the first plurality of protrusions comprise a rough portion” is not a matter of design choice because the rough portion “helps in limiting movement” and therefore affects operation of the device; is not persuasive. Design choice is appropriate where the claimed feature and the prior art perform the same general function and the difference amounts to a predictable variation. MPEP 2144.04. Arai discloses protruding structures; the claimed “rough portion” is a known surface modification that improves friction between contacting elements. It is well understood in the art that increasing surface roughness would enhance frictional engagement and reduce slippage. Such texturing has been widely used across analogous containers and retention arts to improve grip or retention of objects; particularly where small or lightweight items are involved. Therefore, Applicant’s arguments that the rough portion affects how the device operates does not overcome a design choice rationale.
Conclusion
THIS ACTION IS MADE FINAL. 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 RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
4/20/2026
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