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 1-25 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.
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 Pays et al. (US 9,125,468) and Pham (US 2015/0114421).
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.
Pays et al. teaches a plurality of artificial eyelashes with a knotless base (“support” col. 3, lines 31-35) wherein the length of the support is the same as disclosed by Choe (col. 3, lines 60-65; 5-20 mm) the support is coated with an adhesive and applied to the underside of the user’s natural lashes (col. 4, lines 1-10). 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 Pays et al. to allow for a thicker and longer looking eyelashes. 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 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, 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, Jacobs in combination with 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, Pays et al. 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choe (US 2005/0061341) in view of Pays et al. (US 9,125,468) 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, Pays et al. 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 Jacobs as modified by Choe 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 9/12/2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that the combination of Choe, Pays, and Pham fails to teach or suggest “wherein the knotless bases are configured to attach to the underside of the natural eyelashes using an adhesive,” as recited in claim 1. Applicant’s arguments are not persuasive. As noted in the prior Office Action, Pays (col. 4, lines 1–10) explicitly teaches that the support of the artificial lashes is coated with an adhesive and is applied to the underside of the user’s natural lashes. While Applicant asserts that Pays teaches detachment of fibers from the support, Pays nonetheless discloses that the support itself is capable of carrying adhesive and being positioned beneath natural lashes for bonding. Thus, Pays reasonably suggests that the base portion (support) of an artificial lash may be configured to attach beneath the natural lashes using adhesive, as recited in claim 1. The claim language does not exclude partial detachment or modification during use; it only requires that the knotless base be “configured to attach” to the underside using adhesive. Therefore, Pays provides a sufficient teaching of the claimed configuration.
Furthermore, Applicant’s argument that combining Choe and Pays would result in “unpredictable results” is not persuasive. Choe and Pays both relate to artificial eyelash attachment systems employing adhesive bonding techniques. A person of ordinary skill in the art would have found it obvious to modify Choe’s lash extensions in view of Pays’s teaching of underside adhesive attachment to achieve a similar or improved method of securing artificial lashes. Such a combination would represent a predictable variation of known eyelash extension systems to obtain the known benefit of a more natural appearance and stronger adhesion to the underside of the lashes. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (stating that if a technique has been used to improve one device, and a person of ordinary skill would recognize it would improve similar devices in the same way, using the technique is obvious).
Applicant’s arguments regarding the differences in length and structure of Pays’ support relative to Choe are also unpersuasive. The precise length or illustration of the support in Pays does not negate the clear teaching that the support may be coated with adhesive and applied beneath the user’s natural lashes. The claim does not recite any specific length limitation that would exclude Pays’ configuration.
Pham, as cited, further supports the obviousness of the combination by disclosing a lash applicator system with opposing arms and curved sections for grasping lash segments, consistent with the claimed applicator features. Accordingly, the combination of Choe, Pays, and Pham collectively teaches or suggests all limitations of claim 1.
With respect to claim 5, Applicant argues that Iosilevich fails to remedy the alleged deficiencies of Choe, Pays, and Pham. As discussed above, however, no such deficiencies exist. Iosilevich is relied upon for additional features specific to claim 5, and its teachings further support the overall combination. Therefore, the rejection of claim 5 under 35 U.S.C. §103 remains proper.
Accordingly, Applicant’s arguments have been fully considered but do not overcome the rejections. The rejections of claims 1–5 and 7–25 under 35 U.S.C. §103 are maintained.
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.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
11/3/2025