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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,414,595. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
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) 21-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lash Doll (JP 2022082925A) in view of Dinh (US 2015/0181967).
Regarding claim 21, Lash Doll discloses an eyelash fan system comprising an eyelash fan (10) configured to be coupled to a single natural eyelash (2) of a wearer, the eyelash fan (10) comprising a plurality of artificial hairs (4) having a proximate end and a distal end (Fig. 17), the plurality of artificial hairs clustered together define a bundle (Fig. 17); a second adhesive composition (6) configured to be applied to the single natural eyelash, wherein at least a region of the eyelash fan between the proximate end and the first adhesive composition is configured to couple to the single natural eyelash via the second adhesive composition (6) such that a portion of the plurality of artificial hairs at the region wraps at least partially around the single natural eyelash (Figs 18-28; paragraphs 21-22). Lash Doll does not disclose a first adhesive composition bonding the plurality of artificial hairs and positioned at least 1 mm from the proximate end. Dinh teaches an artificial eyelash cluster (300) wherein the artificial hairs are connected to each other with an adhesive bonding the plurality of artificial hairs and positioned at least 1 mm from the proximate end (Fig. 3 and 4; paragraph 24). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash cluster of Lash Doll be made with an adhesive bonding positioned at least 1 mm from the proximate end as taught by Dinh to allow for free ends with multiple free roots for increased bonding.
Regarding claim 22, Lash Doll discloses the eyelash fan is a first eyelash fan; and the eyelash fan system further comprises a plurality of eyelash fans including the first eyelash fan; and each eyelash fan of the plurality of eyelash fans is attached to a respective natural lash of the wearer such that the proximate end of each respective eyelash fan of the plurality of eyelash fans do not overlap (Fig. 18-28; paragraph 21).
Regarding claim 23, Lash Doll discloses the plurality of artificial hairs define a substantially circular bundle at the proximate end (Fig. 17).
Regarding claim 24, the combination of Lash Doll and Dinh disclose the claimed invention except for the first adhesive composition is positioned between 1 mm and 6 mm from the proximate end. However, one having ordinary skill in the art would find the parameters of the distance of the first adhesive to be deemed matters of design choice, will within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results.
Regarding claim 25, Lash Doll discloses each artificial hair of the plurality of artificial hairs define a respective curvature such that a first distance between adjacent eyelashes at the distal end is larger than a second distance between adjacent eyelashes at the first adhesive composition (Fig. 17).
Regarding claim 26, Lash Doll discloses the plurality of artificial hairs does not exceed 20 artificial hairs (Fig. 17).
Regarding claim 27, Lash Doll wherein the region is free from pre-applied adhesives (Fig. 17).
Regarding claim 28, Lash Doll discloses an eyelash fan comprising (10) a plurality of artificial hairs having respective curvatures; a cured adhesive binding the plurality of artificial hairs in a coupling region (3) such that the plurality of artificial hairs in the coupling region defines a stacked cross-section of artificial hairs (Fig. 17); a portion of the plurality of artificial hairs between the proximate end and the cured adhesive is configured to at least partially wrap around a natural eyelash of a wearer (Fig. 17-28; paragraph 21-22); and the plurality of artificial hairs does not exceed 36 artificial hairs (Fig. 17). Lash Doll discloses the claimed invention except for the proximate end and a distal end of each artificial hair of the plurality of artificial hairs is unbonded. Dinh teaches an artificial eyelash cluster (300) wherein the artificial hairs are connected to each other with an adhesive bonding the plurality of artificial hairs and positioned at least 1 mm from the proximate end and the ends are unbonded (Fig. 3 and 4; paragraph 24). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash cluster of Lash Doll be made with an unbonded end at the proximate end as taught by Dinh to allow for free ends with multiple free roots for increased bonding.
Regarding claim 29, the combination of Lash Doll and Dinh disclose the cured adhesive is at least 1 mm from the proximate end (Dinh, Fig. 3).
Regarding claim 30, Lash Doll discloses the stacked cross-section is a substantially circular cross-section (Fig. 17).
Regarding claim 31, Lash Doll and Dinh disclose the cured adhesive is a first adhesive (Dinh adhesive); a second adhesive (6) different from the first adhesive is configured to attach to the natural eyelash of the wearer (Fig. 18; Lash Doll).
Regarding claim 32, Lash Doll and Dinh disclose the claimed invention except for the cured adhesive is visually transparent. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the cured adhesive be transparent, 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. In this instance case, having the adhesive be transparent would allow for the artificial lashes to look natural.
Regarding claim 33, Lash Doll discloses the plurality of artificial hairs includes as few as 3 hairs and as many as 20 hairs (Fig. 17).
Regarding claim 34, Lash Doll and Dinh discloses the claimed invention except for the cured adhesive extends between 1 mm and 5 mm along a length of the plurality of artificial hairs. However, one having ordinary skill in the art would find the parameters of the distance of the first adhesive to be deemed matters of design choice, will within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results.
Regarding claim 35, Lash Doll discloses an eyelash fan system comprising an eyelash fan (10) configured to be coupled to a single natural eyelash (2) of a user via a liquid adhesive (6), the eyelash fan (10) comprising a plurality of artificial hairs fanning out from a coupling region (3); wherein the proximate end of the plurality of artificial hairs is configured such that the plurality of artificial hairs at least partially surround the single natural eyelash when applied to the single natural eyelash using the liquid adhesive (Fig. 17-28; paragraphs 21-22). Lash Doll does not disclose a solid adhesive cured to the plurality of artificial hairs at the coupling region, the coupling region spaced apart from a proximate end and a distal end of the plurality of artificial hairs such that each proximate end and each distal end of each hair of the plurality of artificial hairs is unbonded. Dinh teaches an artificial eyelash cluster (300) wherein the artificial hairs are connected to each other with an adhesive bonding the plurality of artificial hairs and positioned at least 1 mm from the proximate end and the ends are unbonded (Fig. 3 and 4; paragraph 24). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the eyelash cluster of Lash Doll be made with an unbonded end at the proximate end as taught by Dinh to allow for free ends with multiple free roots for increased bonding.
Regarding claim 36, Lash Doll discloses the plurality of artificial hairs includes or is less than 20 hairs (Fig. 17).
Regarding claim 37, the combination of Lash Doll and Dinh disclose an unbonded region between the coupling region and the proximate end is at least 1 mm (Fig. 3; Dinh).
Regarding claim 38, the combination of Lash Doll and Dinh disclose wherein a ratio of lengths of the coupling region and the unbonded region is at least 1:4. However, one having ordinary skill in the art would find the parameters of the ratio of the length of the coupling region and unbonded region to be deemed matters of design choice, will within the skill of the ordinary artisan, obtained through routine experimentation in determining optimum results.
Regarding claim 39, Lash Doll discloses the liquid adhesive is configured to be applied to the single natural eyelash prior to coupling to the eyelash fan (Fig. 17-28).
Regarding claim 40, the combination of Lash Doll and Dinh disclose the solid adhesive encapsulates each hair of the plurality of artificial hairs.
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.
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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.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
7/10/2026
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