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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly filed limitation “wherein both the base and the second adhesive extend along the plurality of eyelash filaments from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments” was not previously set forth in the specification and therefore constitutes as new matter.
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 1-22 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.
Claims 1 and 11, state “wherein both the base and the second adhesive extend along the plurality of eyelash filaments from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments”; it appears that applicant is referring to the specification “support strip” as the claimed “base”. The specification does not disclose both the base and the second adhesive extend along the plurality of eyelash filaments, the specification states “The support strip 12 may be attached to the bases of the eyelash filaments. The support strip 12 has a leading edge from which eyelash filaments 14 extend.”. Therefore, it is unclear how both the base and the second adhesive extend along the eyelash filaments, since it does not appear that the base extends along the eyelash filaments. It will be examined as the second adhesive extends along the plurality of eyelash filaments.
Claim 21, states “the second adhesive is disposed on one-half to three-fourths of the plurality of eyelash filaments”; however claim 1 states “from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments, whereby no adhesive is present on either an upward-facing surface or a downward-facing surface of the plurality of eyelash filaments between said location and the second ends of the plurality of eyelash filaments. Therefore, claim 21 contradicts no adhesion placement of claim 1.
Claim Objections
Claims 9 and 19 are objected to because of the following informalities: please change “lotaction” to - -location- -. Appropriate correction is required.
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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 8,225,800) in view of Shin (US 2002/0056465) and Aylott (US 3,935,872).
Byrne discloses an artificial eyelash extension comprising a plurality of eyelash extensions having a width that is less than or equal to one third a width of a user’s natural eyelashes; and a plurality of eyelash filaments (7), each of the plurality of eyelash filaments comprising a first end and a second end opposite the first end (see Figure 1); a base (5) configured to support the plurality of eyelash filaments, the base comprising a first adhesive (microbonding; col. 7, line 26), the first adhesive being configured to attach the first ends of the plurality of eyelash filaments (col. 7, line 26); and a second adhesive (col. 7, lines 50-55) disposed on the base the second adhesive being adapted to adhere to natural eyelashes of a user when the artificial eyelash extension is applied (see Figure 1; col. 7, lines 5-15) wherein at least some of the eyelash filaments extend from the base such that they overlap or cross one another (Fig. 32) and no adhesive is present on either ran upward-facing surface or a downward-facing surface of the plurality of eyelash filaments between the location and the second ends of the plurality of eyelash filaments (Fig. 1). Byrne does not disclose the second adhesive extends along the plurality of eyelash filaments from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments. Shin teaches artificial filaments wherein the adhesive is a tape strip (14) applied to the base and the plurality of filaments such that the second adhesive extends along the plurality of eyelash filaments from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments (Fig. 7). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial lashes of Byrne be made with a tape strip adhesive that extends from the base along the eyelashes as taught by Shin to further secure the eyelash extension to the user’s eyelashes. The combination of Byrne and Shin disclose the claimed invention except for a package configured to store the artificial eyelashes. Aylott teaches a package (fig. 3) used to store artificial eyelashes prior to use. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial eyelashes of Byrne be stored in a package as taught by Aylott prior to use to keep the artificial eyelashes protected.
Regarding claim 2, the combination of Byrne and Shin disclose the second adhesive is applied to upward-facing surfaces of the base and eyelash filaments, the upward- facing surfaces corresponding to surfaces designed to face toward a top of a user's eye when applied (i.e. the tape adhesive is capable of being applied to either top or bottom surface of the base).
Regarding claim 3, the combination of Byrne and Shin disclose the first adhesive is disposed between the second adhesive and at least the base of the artificial eyelash extension (Bryne Figure 1; microbonding; col. 7, line 26).
Regarding claim 4, the combination of Byrne and Shin disclose the second adhesive comprises an adhesive that retains its stickiness during storage of the artificial eyelash extension (i.e. tape strip).
Regarding claim 5, the combination of Byrne and Shin disclose the artificial eyelash extension is approximately one quarter to one third the width of the user’s natural eyelashes (Bryne and Lotti disclose multiple lash extension of different sizes).
Regarding claim 6, the combination of Byrne and Shin disclose the artificial eyelash extension curls upward toward an upward-facing direction (see Byrne Figure 1).
Regarding claim 7, the combination of Byrne and Shin disclose a removable substrate adapted to cover at least a part of the filaments and the substrate is removed prior to use (Byrne col. 7, lines 5-15).
Regarding claim 8, the combination of Byrne and Shin disclose wherein the second adhesive is disposed between the first adhesive and the elongated substrate (Shin Fig. 7).
Regarding claim 9, the combination of Byrne and Shin disclose wherein the eyelash filaments extend from the base such that at least some of eyelash filaments overlap (see Bryne Figure 32).
Regarding claim 10, the combination of Byrne and Shin disclose a strength of the first adhesive (i.e. microbonds) is greater than a strength of the second adhesive (i.e. removable adhesive).
Claim(s) 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 8,225,800) in view of Shin (US 2002/0056465).
Regarding claim 11, Byrne discloses an artificial eyelash extension comprising a plurality of eyelash filaments (7), each of the plurality of eyelash filaments comprising a first end and a second end opposite the first end (see Figure 1); a base (5) configured to support the plurality of eyelash filaments, the base comprising a first adhesive (microbonding; col. 7, line 26), wherein the artificial eyelash extension has a width that is less than or equal to one third a width of the user’s natural eyelashes; the first adhesive being configured to attach the first ends of the plurality of eyelash filaments (col. 7, line 26); and a second adhesive (col. 7, lines 50-55) disposed on the base the second adhesive being adapted to adhere to natural eyelashes of a user when the artificial eyelash extension is applied without the addition of another adhesive to the artificial eyelash extension or the natural eyelashes of the user (see Figure 1; col. 7, lines 5-15). Byrne does not disclose the second adhesive on the plurality of eyelash filaments. Shin teaches artificial filaments wherein the adhesive is a tape strip (14) applied to the base and the plurality of filaments such that the second adhesive extends along the plurality of eyelash filaments from the first ends of the plurality of eyelash filaments to a location less than or equal to one-half of an average length of the plurality of eyelash filaments (Fig. 7). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the artificial lashes of Byrne be made with a tape strip adhesive that extends from the base along the eyelashes as taught by Shin to further secure the eyelash extension to the user’s eyelashes.
Regarding claim 12, the combination of Byrne and Shin disclose the second adhesive is applied to upward-facing surfaces of the base and eyelash filaments, the upward- facing surfaces corresponding to surfaces designed to face toward a top of a user's eye when applied (i.e. the tape adhesive is capable of being applied to either top or bottom surface of the base).
Regarding claim 13, the combination of Byrne and Shin disclose the base is disposed between the second adhesive and at least the plurality of eyelash filaments (Bryne Figure 1; microbonding; col. 7, line 26).
Regarding claim 14, the combination of Byrne and Shin disclose the second adhesive comprises an adhesive that retains its stickiness during storage of the artificial eyelash extension (Shin; tape adhesive).
Regarding claim 15, the combination of Byrne and Shin disclose the artificial eyelash extension is approximately one quarter to one third the width of the user’s natural eyelashes (Bryne and Shin disclose multiple lash extension of different sizes).
Regarding claim 16, the combination of Byrne and Shin disclose the artificial eyelash extension curls upward toward an upward-facing direction, the upward-facing direction corresponding to a direction facing toward a top of a user’s eye when the artificial eyelash extension is applied to the natural lashes of the user (see Byrne Figure 1).
Regarding claim 17, the combination of Byrne and Shin disclose a removable substrate adapted to cover at least a part of the filaments and be removed prior to use (Byrne col. 7, lines 5-15).
Regarding claim 18, the combination of Byrne and Shin disclose wherein the second adhesive is disposed between the first adhesive and the elongated substrate (see Shin Figure 7).
Regarding claim 19, the combination of Byrne and Lotti disclose wherein the eyelash filaments extend from the base such that at least some of eyelash filaments overlap (see Bryne Figure 32).
Regarding claim 20, the combination of Byrne and Lotti disclose a strength of the first adhesive (i.e. microbonds) is greater than a strength of the second adhesive (i.e. removable adhesive).
Allowable Subject Matter
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments filed 8/7/2026 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
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.
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
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