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 .
Status of the Claims
Claims filed 2/6/2025 have not been considered as these claims are non-compliant. For purposes of examination, claims filed 12/09/2024 will be considered.
Claim Objections
Claim 17 is objected to because of the following informalities: Claim 17 recites “an the in depth”, where “an” and “the” should be not both be recited. 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, section c) recites “and running along a presumed horizontal plane between the left edge and the right edge which longitudinal length is divided into categories of short, medium, and long” where the italicized clause renders the claim indefinite.
Claim 1 section f) states “which ratio determines the apex length according to an inverse relationship of the ratio and the longitudinal length” where this language renders the claim indefinite. The ratio is defined as the apex length to the longitudinal length.
Claim 2 recites categories of longitudinal lengths within previously claimed range of 15 to 37 mm and provides a table which repeats the written categorizations. The table requires deletion as it is repetitive. It is unclear if the claim is attempting to require the plastic extension be within on e of these categories, i.e. the length be either 15-21mm, 19-28 mm and 24-37 mm, in which case, the claim does not further limit claim 1 or if the claim is attempting to require a plurality of extensions which include extensions of different lengths, within the claimed ranges.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “no more than about 4.5 mm”, and the claim also recites “preferably abut 0.5mm to about 4mm, more preferably about 0.5-1mm to about 3.5mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In claim 11 there is an inconsistency in the language of the preamble and that of body of the claim thus making their scope unclear. The preamble recites the plastic extension, e.g. a singular extension, thus indicating that the claims are directed to the subcombination, a plastic extension. However lines 2-4 positively recite the one or more members of a group of plastic extensions, as an element of the invention, e.g. a group/plurality of extensions thus indicating that the claims are directed to the combination of the various extensions (a kit or system). As such it is unclear whether applicant intends the claims to be drawn to the combination or the subcombination. Applicant is hereby required to indicate which, the combination (a kit or system having a plurality of plastic extensions) or subcombination (a plastic extension) the claims are intended to be drawn and make the language consistent with this intent and properly amend the claim to overcome the indefiniteness issues. For examination purposes, the claims will be considered as requiring a plurality of plastic extensions of different dimensions.
Claim 11 attempts to define the dimension of each member in relation to the dimension of thumbnails and fingernails where thumbnails and fingernails have different dimensions from person to person and even between hands of the same person. Thumbnail and fingernails are not standard units of measure.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation a UV lamp, and the claim also recites preferably constructed of LED diodes which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim 20 appears to lack a body and only provide a preamble. The claim is directed to a method of application, yet the claim lacks steps.
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.
Claims 2, 5, 10 and 17 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 2 recites does not further limit the subject matter of claim 1, as claim 1 provides the range of length values (15-37mm), whereby assigning certain lengths a ranking or description associated therewith (short, medium or long) does not further limit the structure. Claims 5 and 10 fail to further limit the subject matter of claim 1; both claims lacks additional structural recitations. 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 10 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 10 requires the plastic extension be placed on a human fingernail and contact the cuticle end contact the cuticle surface of the fingernail.
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 1-12, 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) 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, medium and long (Refer to paragraph 0025 and table included therein); 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); 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); j) a distal end thickness of no more than about 1 mm (Refer to Figure 11 and paragraphs 0033-0034); k) a cuticle end thickness of no more than about 1 mm (Refer to Figure 11 and paragraphs 0033-0034); l) an apex thickness of no more than about 1.5 mm (Refer to Figure 11 and paragraphs 0033-0034).
However, Fracassi et al. do not disclose f) a ratio of the apex length to the longitudinal length selected from a range of from 0.27 to 0.49 which ratio determines the apex length according to an inverse relationship of the ratio and the longitudinal length; g) 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; h) 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; i) 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 26.5% 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 0.265 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 range (0.27 to 0.49) 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 mm to 6 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 2, 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 longitudinal length within a range of about 15 mm to about 21 mm, which would fall in Applicant’s short length category, and longitudinal lengths within a range of about 19 to about 28 mm, which would fall in Applicant’s medium length category (Refer to paragraph 0025 and the table therein). Although Fracassi et al. is silent regarding the nails being up to 37 mm in length and thereby providing a long length category, Fracassi et al. explain the length dimensions are simply exemplary and intended to be non-limiting and Dung demonstrates it is conventional to provide artificial nails with lengths between 17 and 35 mm (Refer to paragraph with highlighted clauses on pages 2 and 6 of the translation). 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 plastic extensions of the combination of Francessi et al., Dung and Li et al. to include a long length category with length dimensions between about 24 mm and 37 mm, as Fracassi et al. explain the disclosed dimensions are exemplary and non-limiting and Dung demonstrates it is well-known and conventional to provide artificial nails with length dimensions within the claimed range.
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 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 claims 4 and 8, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, Fracassi et al. further disclose distal end thickness is from about 0.6 mm to about 0.9 mm (Refer to Figure 11 and paragraphs 0033 and 0034); the cuticle end thickness is from about 0.2 mm to about 0.4 mm and from about 0.21 mm to about 0.39 mm (Refer to Figure 11 and paragraphs 0033 and 0034); however, Fracassi et al. do not disclose the apex thickness is from about 0.6-0.61 mm to about 0.7 mm. Fracassi et al. explain that the artificial nail is designed such that the thickness from the distal end to the cuticle end decreases by at least 70% and more preferably by about 75% (Refer to paragraph 0033) and the thickness increases from the cuticle end to the distal end by at least 0.55 mm and more preferably about 0.66 mm (Refer to paragraph 0035). Fracassi et al. describe two examples of the dimensions along the length, where both examples have the same cuticle end thickness (0.23mm) and distal end thickness (0.89mm) but the thickness changes differently along the length (Refer to paragraph 0034, example 1: from cuticle to distal end 0.23, 0.30, 0.38, 0.46, 0.53, 0.61, 0.69, 0.78, 0.89 and example 2: from cuticle to distal end 0.23, 0.3, 0.33-0.34, 0.38, 0.41-0.46, 0.5-0.53, 0.55-0.58, 0.63-0.66, 0.89). Thus, Fraccassi et al. demonstrate the thickness at a particular location along the length can be changed (increased or decreased) to result in a different incremental gradient as the important aspect is to provide an overall decrease in thickness from the distal end to the cuticle end of 75% or about 0.66 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 apex thickness of the nail of the combination of Fraccassi et al., Dung and Li et al. to be from about 0.6 mm to about 0.7 mm as these dimensions fall within the thickness values provided by Fracassi et al. for portions of the nail between the cuticle and distal ends and Fracassi et al. teach the dimensions at particular lengths can be changed, within the range of values, as the important aspect is to provide the desired overall change in thickness between the opposing ends.
Regarding claim 5, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, wherein the extension is capable of not moving or rocking 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. If a downward force applied is not sufficient, movement/rocking does not occur.
Regarding claim 6, the combination of Fracassi et al., Dung and Li et al. provide the plastic extension of claim 1 above, wherein the apex height is about 3.2 mm to about 5.7 mm and the ratio of cuticle height to apex height is about 0.52 to 0.62. As explained in the rejection of claim 1 above, Dung is relied upon for the teaching of the apex height being between 3 and 6 mm, where Dung provides a table of exemplary apex heights ranging between 3.25 and 5 mm in Figure 7. The rejection of claim 1 above, also explains that prior art provides the general conditions regarding the ratio of cuticle height to apex height, where the range of claim 1 encompasses the range of claim 6.
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 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 10, the combination of Fracessi et al., Dung and Li et al. disclose the plastic extension of claim 1 above, wherein the plastic extension is configured to be placed on a fingernail of a user and the cuticle end of the plastic extension is capable of being compressed by a single finger 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).
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 20, the combination of Fracessi et al., Dung and Li et al. disclose the plastic extension of claim 1 above, Fracessi et al. further disclose as a method of application of the plastic extension to a fingernail to produce a fingernail applique on the fingernail (Refer to paragraphs 0009, 0022, 0028 and 0029).
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 preferably constructed of LED diodes 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 is capable of producing 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.
Conclusion
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799