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 Objections
The claims are objected to for failing to follow appropriate rules for amending claims such as canceled claims not having text (e.g. text is stricken-through in the cancelled claims), failing to underline newly added text (e.g. in claim 1, b) previously recited a longitudinal curve, a bottom surface…. and in section d) 2) of claim 1 ranging should be underlined), etc. Appropriate correction is required.
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.
Claims 1-18 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a plastic extension having an overall shape of at least round, square almond, coffin and/or stiletto, where it is unclear how the shape can be round, square, almond, coffin and stiletto, or square and almond, or coffin and almond. Various combinations do not appear possible given their individual characteristic shapes. It is also unclear which ratios would be applicable to the combination shapes; for example, if the extension is square and coffin and in the short category would the ratio be 0.48 or 0.46, a range therbetween, or some other value.
The preamble of claim 1 recites “A plastic extension”, meaning a single extension is recited; however, the body of the claim discloses length and width categories as if various extensions were being claimed (a kit or system instead of a single extension). The various options/categories are not explicitly listed as alternatives. Additionally, the claim provides multiple options which result in numerous possibilities rending the claim indefinite as the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. There are also overlaps in the values of different categories which renders the claims indefinite; for example, it is unclear how a medium category extension can be shorter than a short category extension, which is possible per Table A, similarly a medium extension can be longer than a long extension.
In claim 11 recites ”Members of a group of plastic extensions” where it is unclear what the members are and if they are the same or different from the extensions. It is suggested Applicant ament the claims to recite a kit or system comprising a plurality of the plastic extensions of claim 1. It is unclear if Applicant is intending the extensions be of the same overall shape and if so, are combinations of shapes included per claim 1, and the extensions have the same dimensions or different dimensions.
Claim 17 recites the flash irradiation and the in depth irradiation; however, these irradiation types are provided as alternatives in claim 16, as a result, both are not required.
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 8 is 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 8 does not further limit the subject matter of claim 1, as claim 1 provides the range of length values recited. Claim 17 fails to further limit the subject matter of claim 16; by definition, flash irradiation partially cures a UV gel (results in tacky UV gel state) and in depth irradiation cures a UV gel. 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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 20 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 20 requires the fingernail applique be attached to a fingernail, which is part of a human organism.
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 1, 3, 5, 7-12, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fracassi et al. (US 20080289646), Dung (CN 115517446A) and Li et al. (US 20140183769).
Regarding claim 1, Fracassi et al. a plastic extension (Refer to paragraph 0036) for covering a nail plate comprising: a) an overall shape of at least round and/or square (Refer to Figures 1 and 3) b) a top surface (112), a bottom surface (114), a cuticle end (120), a distal end (122), a left edge (130) and a right edge (132); b) a longitudinal curve running from the cuticle end to the distal end which increases in slope from the cuticle end to an apex and then decreases in slope from the apex to the distal end (Refer to Figures 7, 8 and 11), and a latitudinal curve extending between the left and right edges and running from the cuticle end to the distal end (Refer to Figures 1, 2, 5, 6-7, 9, 10); c) a longitudinal length of from about 15 mm to about 37 mm as a straight line from the midpoint of cuticle end to the midpoint of the distal end and running along a presumed horizontal plane between the left edge and right edge which longitudinal length is divided into categories of short ranging from about 15 to about 21 mm and medium ranging from about 19 mm to 28 mm (Refer to paragraph 0025 and table included therein which disclose lengths between 11.9 and 22.5 mm which provide various values within the claimed range. It is noted the claim only recited ‘a plastic extension” meaning one extension is required not a kit and therefor only one type of extension (short, medium or long) is required) ; d) a width between left and right edges of from about 6 mm to about 15 mm wherein the width is measured at the widest distance between the left and right edges (Refer to paragraph 0025 and table included therein which disclose widths between 6.7 and 16 mm thereby providing widths within the claimed range) and where the width and length categories are related as provided by Table A (Refer to paragraph 0025 which provides various combinations within Table A such as 12.6 mm width and 20 mm length, or 13.8 mm width and 21 mm length, etc.)
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e) an apex point on the longitudinal length which is directly coincident with and below the apex of the longitudinal curve wherein the length between the cuticle end of the longitudinal length and the apex point is the apex length (the artificial nail provides an apex, Refer to paragraph 0026, and the distance between the cuticle edge and the apex is the apex length); k) a distal end thickness of about 0.6 mm to about 0.9 mm (Refer to Figure 11 and paragraphs 0033-0034 which teach a terminal distal end thickness of 0.89 mm which falls within the claimed range); l) a cuticle end thickness of no more than about 0.2 mm to about 0.4 mm (Refer to Figure 11 and paragraphs 0033-0034 which disclose a cuticle terminal end thickness of 0.23 mm which falls within the claimed range); m) an apex thickness of from about 0.6 mm and 0.7 mm (Refer to Figure 11 and paragraphs 0033-0034 where the apex thickness is between about 0.53 mm and about 0.66 mm which falls within the claimed range).
However, Fracassi et al. do not disclose g) a ratio of the apex length for each overall shape of each of the short, medium and long categories of elements d and e to the longitudinal length, wherein the ratio is a single number for each overall shape of each of the length categories according to tables H, I and J (for short, medium and long round and/or square shapes the ratios are 0.4 and 0.49, 0.39 and 0.31, respectively); h) an apex height of from about 3 mm to about 6 mm as measured vertically from the top surface at the apex to the presumed horizontal plane between the left and right edges positioned directly below the apex; i) a cuticle height of from about 1.5 mm to about 3.5 mm relative to the presumed horizontal plane between the left and right edges; j) a ratio of the cuticle height to apex height of about 0.5 to about 0.62.
Fracassi et al. do not explicitly provide the apex at a discrete/particular location (length from the distal or proximal edges). Dung discloses artificial nails having an apex, where the apex is provided at a distance from the cuticle end, thereby defining an apex length. Dung explains the apex length is 26% to 43.5% the total length of the artificial nail (Refer to paragraph with highlighted clauses on page 6 of the translation), meaning the ratio of the apex length to the longitudinal length is 0.26 to 0.435. 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 artificial nails of Fracassi et al. such that ratio of the apex length to the longitudinal length be within the claimed values (e.g. 0.31, 0.39, etc.) as Dung demonstrates it is well-known and conventional in the art for the apex to be provided at apex lengths yielding the claimed ratios.
Although Fracassi et al. is silent regarding the apex height and cuticle height, Fracassi et al. do depict the height as being significantly larger in the region of the apex and significantly smaller at the cuticle and distal ends, where the respective heights are designed to mimic the arch of natural nails along their length. Li et al. is directed to custom-fit three-dimensional artificial nails and their method of manufacture, where Li et al. explain the artificial nails have arch heights (260, Refer to Figure 5 and paragraph 0037-0038) defined by the tooling used to construct it and the library of nail tooling provides arch heights ranging from 1.7 mm to 6.8 mm (Refer to paragraph 0042). Figure 7 also provides a table of exemplary apex heights ranging between 3.25 and 5 mm. The cuticle height is significantly smaller than the apex height, as this follows the conventional configuration of natural nails. It would have been obvious to one of ordinary skill in the art before the effective filing date of the clamed invention to modify the artificial nails of the combination of Fracessi et al. and Dung such that the apex height range from about 3.2 mm to 5.7 mm as Li et al. demonstrate these apex dimensions are well-known and conventional and mimic those of natural nails. Additionally, 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 artificial nails of the combination of Fracessi et al., Dung and Li et al. such that the cuticle height be from about 1.5 mm to about 3.5 mm and a ratio of the cuticle height to the apex height be about 0.5 to about 0.62, since it has been held that where the general conditions of a claim are disclosed in the prior art (cuticle height being significantly smaller than apex height and cuticle height being comparable with that of natural nails), discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 3, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, where a distal end height is provided; however, the combination is silent regarding the distal end height being no more than about 4.5 mm. Fracassi et al. depict the distal end height as being significantly smaller than the apex height. Li et al. was relied upon for the teaching of the apex height, where the apex height is between 3 and 6 mm. 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 artificial nails of the combination of Fracessi et al., Dung and Li et al. such that the distal end height be no more than about 4.5 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art (distal end height being significantly smaller than apex height and distal end height being comparable with that of natural nails), discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 5, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, having parallel and flat edges which provide a non-rock property to the plastic extension, which property resists a moving or rocking movement of the plastic extension when placed on a flat surface with the left and right edges of the plastic extension in contact with the flat surface and a downward force is applied to the cuticle end or the distal end of the plastic extension (Refer to Figures 1-6). If a downward force applied is not sufficient, movement/rocking does not occur.
Regarding claim 7, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, Fracassi et al. further disclose the distal end thickness is about 0.61 mm to about 0.89 mm (Refer to Figure 11 and paragraph 0034); however, the combination is silent regarding the distal end height being about 1 mm to about 3.5 mm.
Li et al. was relied upon in the rejection of claim 1 above to provide an apex height between 3 and 6 mm and although Fracassi et al. is silent regarding the distal end height dimensions, the drawings do depict the height being significantly larger in the region of the apex and significantly smaller at the distal end, where the respective heights are designed to mimic the arch of natural nails along their length. 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 artificial nails of the combination of Fracessi et al., Dung and Li et al. such that the distal end height be from about 1 mm to about 3.5 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art (distal end height being significantly smaller than apex height and distal end height being comparable with that of natural nails), discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 8, as explained in the rejection of claim 1 above, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, wherein the cuticle end thickness is from about 0.21 mm to about 0.39 mm (Refer to Figure 11 and paragraphs 0033 and 0034 of Fracassi et al. which disclose a cuticle terminal end thickness of 0.23 mm which falls within the claimed range) and the apex thickness is from about 0.61 mm to about 0.7 mm (Refer to Figure 11 and paragraphs 0033-0034 of Fracassi et al. where the apex thickness is between about 0.53 mm and about 0.66 mm which falls within the claimed range).
Regarding claim 9, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above. Although, the combination is silent regarding the cuticle end having a flex resistance of less than 350 g/mm (measured using a mechanical pressure tester having a vertical, mechanically operated pressure bar and opposing anvil wherein the plastic extension is arranged on the anvil so that the pressure bar contacts the cuticle end and the pressure bar is mechanically operated to apply pressure in grams per mm), the nail extension of the combination is made of the same materials as that of Applicant (Refer to paragraph 0036 of Fracessi et al.) and the same or similar geometry and as a result, the nail extension is expected to have the same or similar material properties. 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 artificial nails of the combination of Fracessi et al., Dung and Li et al. such that the cuticle end have a flex resistance of less than 350 g/mm, since it has been held that where the general conditions of a claim are disclosed in the prior art (same/similar materials and geometry), discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 11, the combination of Fracessi et al., Dung and Li et al. disclose the plastic extension of claim 1 above, Fracessi et al. further disclose one or more members of a group of plastic extensions of one overall shape wherein each member has a width and a length selected according to the dimensions of the thumbnail and fingernails of a hand onto which the members of the group are to be placed (Refer to paragraphs 0005 and 0035).
Regarding claim 12, the combination of Fracessi et al., Dung and Li et al. disclose the plastic extension of claim 1 above, Fracessi et al. further disclose a nail applique kit comprising one or more plastic extensions and an adhesive (Refer to paragraphs 0005 and 0035).
Regarding claim 18, the combination of Fracessi et al., Dung and Li et al. disclose the kit of claim 12 above, Fracessi et al. further disclose a method using the nail applique kit comprising applying the adhesive to a fingernail nail plate, optionally processing the adhesive to render it at least partially adherent, fitting the plastic extension to the fingernail with adhesive, allowing the adhesive to bind the plastic extension to the fingernail nail plate (Refer to paragraphs 0009, 0022, 0028 and 0029).
Regarding claim 10, the combination of Fracessi et al., Dung and Li et al. disclose the method of claim 18 above, wherein the plastic extension is fitted on the fingernail is compressed at the cuticle end of the plastic extension by a pressure overcoming the cuticle end flex resistance to cause the cuticle end of the plastic extension to contact the corresponding cuticle surface of a fingernail (Refer to paragraphs 0009, 0022, 0028 and 0029 of Fracessi et al.). Although, the combination is silent regarding the cuticle end having a flex resistance of less than 350 g/mm (measured using a mechanical pressure tester having a vertical, mechanically operated pressure bar and opposing anvil wherein the plastic extension is arranged on the anvil so that the pressure bar contacts the cuticle end and the pressure bar is mechanically operated to apply pressure in grams per mm), the nail extension of the combination is made of the same materials as that of Applicant (Refer to paragraph 0036 of Fracessi et al.) and the same or similar geometry and as a result, the nail extension is expected to have the same or similar material properties. 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 artificial nails of the combination of Fracessi et al., Dung and Li et al. such that the cuticle end have a flex resistance of less than 350 g/mm, since it has been held that where the general conditions of a claim are disclosed in the prior art (same/similar materials and geometry), discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 20, the combination of Fracessi et al., Dung and Li et al. disclose a fingernail applique where the fingernail applique is the plastic extension of claim 1 and an adhesive (Refer to paragraphs of 0005 and 0022 of Fracessi et al.).
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Fracessi et al., Dung and Li et al. as applied to claim 12 above, and further in view of Tan et al. (US 20210112941).
Regarding claim 13-17, the combination of Fracessi et al., Dung and Li et al. disclose the nail applique kit claim 12; however, the combination does not discloses the adhesive is a UV curable gel and the nail applique kit further comprises a UV lamp for generation of electromagnetic radiation in the range of 280 to 420 nm, the UV lamp provides selective control of the generated UV light wavelength and is capable of producing a flash irradiation of 340-360 nm or an in depth irradiation of 380-420 nm, and the flash irradiation is capable of producing a tacky UV gel state and an the in depth irradiation to produce a cured UV gel.
Fracessi et al. provide an adhesive composition as part of the kit but are silent regarding the type of adhesive. It is well-known and conventional in the art to use UV curable gel adhesive to adhere artificial nails to a user’s natural nails, where the use of UV curable adhesive requires a UV lamp which emits electromagnetic radiation in a range suitable for curing the UV curable adhesive, as demonstrated by Tan et al. (Refer to paragraphs 0007-0008 and 0086). Tan et al. explain UV curable adhesive is used to secure artificial nails by exposing the applied adhesive to electromagnetic radiation in the range of 330 nm and 440nm using a UV lamp with LEDs capable of flash curing and deep irradiation within the range (Refer to paragraphs 0014 and 0086, where shorter times such as 10 seconds are reflective of a flash cure while longer exposure times such as 45 or 60 seconds correspond to a deep cure and the operating wavelengths are between about 330 nm and 440nm). 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 kit of the combination of Fracessi et al, Dung and Li et al. such that the adhesive be a UV curable gel and the kit include a UV lamp having LEDs capable of emitting electromagnetic radiation in the range of 280nm to 420nm and selective control for flash irradiation of 340 to 360 nm and in-depth irradiation of 380-420 nm as taught by Tan et al. in order to provide well-known and conventional elements for securing artificial nails as part of the kit, where packaging/providing items known to be used together is standard practice and within the level of ordinary skill in the art. It is noted that flash curing/irradiation by definition provides a partial cure which produces a “tacky UV gel state” and in-depth curing/irradiation provides a cured/harden UV gel.
Response to Arguments
Applicant's arguments filed 4/22/2026 have been fully considered but they are not persuasive.
Argument: Dung’s apex ratios are nothing more than what the art in general describes and what commercial tip products show and Dung provides a range of ratios. Applicant presents fixed apex ratios.
Response: The range disclosed by Dung includes the values claimed by Applicant and Applicant also claims a range as claim 1 states “a ratio range of 0.41 to 0.49”, “0.32 to 0.40” and “0.27 to 0.31” where specific shapes have different values in the ranges.
Argument: Dung’s apex ratios do not correspond to the short, medium and long categories claimed.
Response; Dung is not relied upon for the short medium and long categories (length and width dimensions) as Fracessi et al. provide these limitations. Instead, Dung is relied upon for the teaching of the apex ratio being within the claimed values/ranges.
Argument: Li does not remedy the deficiencies of Fracessi et al. and Dung. The motivation statement does not appear to make sense.
Response: The rejection explains that although Fracassi et al. is silent regarding the apex height and cuticle height, Fracassi et al. do depict the height as being significantly larger in the region of the apex and significantly smaller at the cuticle and distal ends, where the respective heights are designed to mimic the arch of natural nails along their length. Li et al. disclose artificial nails have arch heights (260, Refer to Figure 5 and paragraph 0037-0038) defined by the tooling used to construct it and the library of nail tooling provides arch heights ranging from 1.7 mm to 6.8 mm (Refer to paragraph 0042). Figure 7 also provides a table of exemplary apex heights ranging between 3.25 and 5 mm. The cuticle height is significantly smaller than the apex height, as this follows the conventional configuration of natural nails. Therefore, modification of the extensions of the combination of Fracessi et al. and Dung such that the apex height range from about 3.2 mm to 5.7 mm would have been obvious given Li et al. demonstrate these apex dimensions are well-known and conventional and mimic those of natural nails, which is desired in the configuration of the artificial extensions (the extensions mimic natural nails). The rejection also explains that modification of the cuticle height to be from about 1.5 mm to about 3.5 mm and a ratio of the cuticle height to the apex height be about 0.5 to about 0.62, would also be obvious, as the prior art discloses the general conditions provided by the ratios, such as the cuticle height being significantly smaller than the apex height (meaning ratio is significantly less than 1) and the cuticle height being comparable with that of natural nails (nail portions adjacent the cuticle commonly have a height of 1.5 mm to 3.5 mm) and discovering the optimum or workable ranges involves only routine skill in the art. Refer to MPEP 2144.05.
In effort to advance prosecution, it is suggested Applicant amend claim 1 to recite a kit having a plurality of nail extensions having the various shapes recited in the alternative (e.g. round, square…or stiletto), where the kit includes extensions of at least two of the shapes and the extensions include at least one short, at least one medium and at least one long for each shape, where and the specific dimensions and ratios for each short, medium and long category are outlined in the claim along with the other current claim limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
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