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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/2026 has been entered.
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 1-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/209,386 in view of Pham (US 2015/0114421). The copending application discloses the claimed invention except for the applicator, Pham discloses an applicator with a pair of opposing arms, each arm comprising a first and second section see Figure 2.
This is a provisional nonstatutory double patenting rejection.
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.
4. Claim(s) 1-4 and 7-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choe (US 2005/0061341) in view of Cardellino (Cosmopolitan Article “You’ve Been Applying False Eyelashes Wrong Your Whole Life”) and Pham (US 2015/0114421).
5. Choe disclose a system comprising an adhesive (26); a plurality of artificial lash extensions (20) configured to attach adjacent to one another (see Figure 5), each comprising a knotless base (20f) and a plurality of clusters of artificial hairs (see Figure 3), wherein the plurality of clusters protrude from the knotless base along a length of the knotless base, wherein at least some of the artificial hairs are connected to one another at respective part of the knotless base (see Figure 3; paragraph 34 cross at bottom); and an applicator comprising a pair of opposing arms each arm comprising a first section and a second section the second section configured to grasp an artificial lash extension a(see Figure 5). Choe does not disclose the knotless bases are configured to attach to the underside of the natural eyelashes and the applicator having the second section of the arms comprising a curvature.
Cardellino teaches a cluster of artificial eyelashes with a base shown (see Figures) (col. 3, lines 60-65; 5-20 mm) the base is coated with an adhesive and applied to the underside of the user’s natural lashes to attach to and maintain attachment thereto (see Figures). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have the knotless bases of Choe be attached to an underside of a user’s eyelashes as taught by Cardellino to allow for a thicker and longer looking eyelashes with weightless feel. Pham discloses false eyelash applicator (19) comprising a pair of opposing arms, each arm comprising a first section; and a second section connected to the first section of the arm, each of the second sections comprising a curvature, wherein at least part of the second sections are configured to grasp an artificial lash extension of the plurality of artificial lash extensions (see Figure 2). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the device of Choe be made with an applicator having a second section with a curvature to aid in the attachment of the false eyelashes.
Claim 2, Choe further discloses the adhesive (26) comprises an adhesive layer applied to at least part of a top surface of each of the plurality of artificial lash extensions (paragraph 36).
Claim 3, Choe does not disclose the adhesive layer is pre-applied at manufacturing. However, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Claim 4, Choe discloses the claimed invention except for the adhesive layer comprises a pressure sensitive adhesive. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the adhesive be a pressure sensitive adhesive, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim 7, Choe disclose the plurality of groupings are spaced apart along the length of the knotless base (see Figure 3 of Choe).
Claim 8, Choe discloses each of the plurality of clusters comprises multiple artificial hairs having distal ends and proximal ends, wherein at least one artificial hair of a first grouping of the plurality of clusters crosses at least one artificial hair of a section grouping of the plurality of clusters between the distal end and the proximal end of the respective artificial hairs (see Figures 9A-10B)
Claim 9, Choe further disclose the plurality of groupings protrude from the knotless base in a pattern along the knotless base (see Figure 3 of Choe).
Claim 10, Choe discloses the length of the knotless base of each of the plurality of lash extension is in a range between 4 mm and 8 mm (paragraph 19)
Claim 11, Choe further disclose at least some artificial hairs of the groupings are connected to the knotless base by heating (Choe col. 3, lines 20-30).
Claim 12, Choe further disclose the knotless base of each of the plurality of artificial lash extensions is formed by at least heating (Choe paragraph 52).
Claim 13, Choe further disclose the plurality of groupings are connected to the knotless base by at least heating (Choe paragraph 52).
Claim 14, Choe further disclose the heating facilitates at least a partial melting of at least some artificial hairs of the groupings that are connected at the respective part of the knotless base (Choe paragraph 49). The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 15, Choe discloses the claimed invention except for the heating comprises heat sealing. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Claim 16, Choe further disclose heating but does not state heat fusing. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Claim 17, Choe disclose the plurality of groupings of artificial hairs comprise a synthetic material.
Claim 18, the combination of Choe, Cardellino, and Pham disclose the claimed invention except for plurality of groupings of artificial hairs comprise at least one of polybutylene terephthalate (PBT) or polyester. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the fibers be made from PBT or polyester, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim 19, Choe as combined with Pham disclose the second section comprises a first end portion, a second end portion, and the curvature disposed between the first end portion and the second end portion (see Figure 2 of Pham).
Claim 20, Choe as combined with Pham disclose the at least part of the second sections of the applicator are designed to grasp two or more artificial lash extensions of the plurality of artificial lash extensions (see Figure 2 of Pham).
Claim 21, Choe as combined with Pham disclose the curvature comprises a concave curvature (see Figure 2 of Pham).
Claim 22, Choe as combined with Pham disclose the second section further comprises a convex curvature disposed between the first end portion and the second end portion, wherein the convex curvature of the second section is positioned opposite the concave curvature (see Figure 2 of Pham).
Claim 23, Choe as combined with Pham disclose the first end portion forms a tip of the applicator (see Figure 2 of Pham).
Claim 24, Choe as combined with Pham disclose the first section connects to the second section at an area closer to the second end portion than the first end portion (see Figure 2 of Pham)
Claim 25, Choe discloses the claimed invention except for a storage case designed to hold the plurality of artificial lash extensions. Pham teaches a storage case configured to hold the plurality of artificial lash extensions (see Figure 1). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the lash extension of Choe be packaged in a storage case as taught by Pham to allow for easy transport.
12. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choe (US 2005/0061341) in view of Cardellino (Cosmopolitan Article “You’ve Been Applying False Eyelashes Wrong Your Whole Life”) and Pham (US 2015/0114421) as applied to claims 1-3 and 7-25 above, and further in view of Iosilevich (US 2003/0005941).
The combination of Choe, Cardellino, and Pham disclose the claimed invention except for the adhesive is configured for application at the underside of the natural eyelash prior to an application of the plurality of artificial lash extension to the underside of the natural eyelash. Iosilevich teaches applying artificial lash extensions to the underside of the natural eyelash (paragraph 8; see Figures 8-14) by applying the adhesive to the eyelash prior to an application of the plurality of lash extension (applying thick mascara). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial eyelashes of Choe, Cardellino, and Pham be attached by applying the adhesive to the user’s eyelash prior to application of the eyelashes as taught by Iosilevich to allow for easy application to the user’s eyelashes.
Response to Arguments
Applicant’s arguments filed 5/5/2026 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.
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
7/1/2026
Prosecution Insights