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 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 5,6,8,12,13,15 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.
In claim 5, line 1, “the banana fiber” has no prior antecedent basis.
In claim 8, lines 1 and 2, “the dyed banana fiber” has no prior antecedent basis.
In claim 12, line 2, “the banana fiber” has no prior antecedent basis.
In claim 13, lines 1 and 2, “the dyed banana fiber” has no prior antecedent basis.
In claim 15, line 2, “the banana fiber” has no prior antecedent basis.
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 1-7,9,10,14,15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12331428 in view of O’Brien et al 20060222609.
Claims 1-17 of U.S. Patent No. 12331428 recites all of the limitations of the above identified claims of the instant application, but do not recite sealing the fiber by soaking in a sealing solution as recited in instant claims 1 and 13.
O’Brien et al discloses sealing synthetic hair fibers. See paragraph 187.
It would have been obvious to one skilled in the art to recite sealing the fiber in the method of making synthetic hair as recited in claims 1-17 of U.S. Patent No. 12331428, in view of the teaching of O’Brien et al that it is known to seal synthetic hair fibers.
Claims 11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12331428 in view of Nho et al 20080159975.
Claims 1-17 of U.S. Patent No. 12331428 recites all of the limitations of the above identified claims of the instant application, but do not recite soaking the fiber by soaking in a conditioning solution or sealing solution as recited in instant claims 11 and 13.
Nho et al discloses a process for soaking synthetic hair fibers. See paragraph 96.
It would have been obvious to one skilled in the art to recite sealing the fiber in the method of making synthetic hair as recited in claims 1-17 of U.S. Patent No. 12331428, in view of the teaching of Nho et al that it is known to soak synthetic hair fibers.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12331428 in view of Adam et al 20050251932.
Claims 1-17 of U.S. Patent No. 12331428 do not recite massaging the fiber in the conditioning solution.
Adam et al disclose massaging artificial hair fibers in a solution. See paragraph 470.
It would have been obvious to one skilled in the art to recite massaging the fiber in claims 1-17 of U.S. Patent No. 12331428, in view of the teaching of Adam et al that it is known to massage a solution in artificial hair fibers.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12331428 in view of Tanaka et al 20190021425.
Claims 1-17 of U.S. Patent No. 12331428 do not recite applying oil to the fiber.
Adam et al disclose applying oil to artificial hair fibers. See paragraph 24.
It would have been obvious to one skilled in the art to recite applying oil to the fiber in claims 1-17 of U.S. Patent No. 12331428, in view of the teaching of Tanaka et al that it is known to apply oil to artificial hair fibers.
Allowable Subject Matter
Claims 16-20 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS D LUCCHESI whose telephone number is (571)272-4977. The examiner can normally be reached M-F 800-430.
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.
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
Prosecution Insights