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 .
Election/Restrictions
Applicant elects species shown in Fig. 18-26 with traverse.
Applicant's election with traverse of election of species in the reply filed on 6/19/2026 is acknowledged. The traversal is on the ground(s) that the scope of the species does not include identification of generic or linking claims to the species. Further, applicant argues that the statement of search burden is not tied to the identified species. This is not found persuasive because it is unclear from the provided claim set which figures are found to be deemed generic or linking. Further, the search burden is found to be present as the various species would result in a search burden due to the different features presented in the figures. With that said, after further review of the claims with the presented elected species, it is found that claims 1-20 are applicable.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 5, 7, 9-10, and 16 are objected to because of the following informalities:
Claim 5 recites “accessory attachment layer” in line 1 wherein antecedent basis has already been established and should be revised to read “the accessory attachment layer”.
Claim 7 recites “the accessory attachment layer” in line 2 wherein it should be revised to read “the nail accessory attachment layer” for consistency purposes.
Claim 9 recites “the accessory layer” in line 2 wherein it should be revised to read “the nail accessory attachment layer” for consistency purposes.
Claim 10 recites “the accessory layer” in lines 1-2 wherein it should be revised to read “the nail accessory attachment layer” for consistency purposes.
Claim 16 recites “the guide walls” in line 6 wherein it should be revised to read “the pair of guide walls” for consistency purposes.
Appropriate correction is required.
Claim Rejections – 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-8, 10-15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Smith (US 20240398091 A1).
Re. Claim 1, Smith discloses a modular nail assembly (100/400; Fig. 2A-2E) comprising:
an accessory attachment layer (400) including a base member (Annotated Figure A of Fig. 2E) and a securement member (Annotated Figure A of Fig. 2E) protruding from a top surface of the base member (Annotated Figure A of Fig. 2E);
wherein the accessory attachment layer is configured to be removably secured to a user's natural nail (Fig. 2A) through a securement layer adhered to an underside of the base member (Par. 128); and
a nail accessory layer (110) including a top surface configured for ornamental design (see Fig. 2C where label 110 points to. This is found to be the top surface which is fully capable of having an ornamental design), and a bottom surface (Annotated Figure B of Fig. 2D) including a recess (Par. 28 discloses the nail is curved and as such would make a recess) configured for housing a fastening system (Annotated Figure B of Fig. 2D; Fig. 2B-2D where the shape and side walls making the recess creates the fastening system), wherein the fastening system includes a receiving inlet (Annotated Figure C of Fig. 2D), a securement recess connected to the receiving inlet (see Fig. 2A which shows it extending throughout the nail), and a sidewall surrounding the securement recess (Annotated Figure C of Fig. 2D); and
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Par. 90 and 128; Fig. 2C-2D).
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Re. Claim 2, Smith discloses the modular nail assembly of claim 1, wherein the securement member further includes
a stem and one or more flange members extending outwardly from the stem (Annotated Figure D of Fig. 2A); and
wherein the fastening system further includes a securement channel that is configured to engage with the stem of the securement member upon removable securement of the accessory attachment layer to the nail accessory layer (Annotated Figure E of Fig. 2D where the channel is formed at the portions interacting with the flanges and is found to be a part of the recess).
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Re. Claim 3, Smith discloses the modular nail assembly of claim 1, wherein the securement channel has a tapered shape (Annotated Figure E of Fig. 2D).
Re. Claim 4, Smith discloses the modular nail assembly of claim 1, wherein the flanges are disposed within the securement recess of the fastening system when the nail accessory layer is removably secured to the accessory attachment layer (Fig. 2D where it is found to be disposed within the securement channel portion of the securement recess; Par. 128).
Re. Claim 7, Smith discloses the modular nail assembly of claim 1, wherein the accessory layer fully conceals the accessory attachment layer (Fig. 2A where it is full concealed at an angled view).
Re. Claim 8, Smith discloses the modular nail assembly of claim 1, wherein the accessory attachment layer is configured to only partially conceal the user's natural nail (Fig. 2B).
Re. Claim 10, Smith discloses the modular nail assembly of claim 1, further comprising a longitudinal axis (Annotated Figure F of Fig. 2A), wherein the accessory layer secures to the accessory attachment layer through a one-direction sliding motion along the longitudinal axis (Fig. 2A-2C; Par. 128), and wherein the accessory layer detaches from the accessory attachment layer through a one-direction sliding motion along the longitudinal axis (Fig. 2A-2C; Par. 128).
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Re. Claim 11, Smith discloses the modular nail assembly of claim 10, wherein the sliding motion for securement is in the opposite direction to the sliding motion for detachment of the accessory attachment layer to and from the nail accessory (Par. 128 discloses it being slid on where the sliding motion would be different between attachment and detachment as the attachment direction would require it to go towards the nail vs the detachment direction would be going away from the nail).
Re. Claim 12, Smith discloses the modular nail assembly of claim 1, wherein each of the accessory attachment layer, securement layer, nail accessory layer, and fastening system are contoured to mimic the shape of a natural nail (Par. 119-120, 129).
Re. Claim 13, Smith discloses a modular nail assembly (100/300; Fig. 1A-1E) comprising:
an accessory attachment layer (300) including a receiving recess (372) configured to receive and house a fastening mechanism (330/322/324 are elements to receive the fastening mechanism 200; Fig. 1B);
an accessory layer (100) including a top surface (see Fig. 1A) configured for ornamental design (Par. 66 and 119 wherein it is fully capable of having an ornamental design), and a bottom surface (see Fig. 1C where label 100 points to) including a securement member (200) protruding from the bottom surface (Fig. 1D) and configured to removably secure to the accessory attachment layer (Fig. 1B-1C; Par. 78, 80-82, 87 and 123); and
wherein the fastening mechanism is configured to receive and removably secure the securement member of the accessory layer to the receiving recess of the accessory attachment layer (Fig. 1B-1C; Par. 78, 80-82, 87 and 123).
Re. Claim 14, Smith discloses the modular nail assembly of claim 13, wherein the receiving recess includes a rail member (370) positioned within the receiving recess and extending outwardly from the recess (Fig. 1B; Par. 86); and wherein the securement member further includes a mating groove (220) that mates with the rail member of the receiving recess to removably secure the nail accessory layer to the accessory attachment layer (Fig. 1B-1C; Par. 74, 86 and 123).
Re. Claim 15, Smith discloses a modular nail assembly (Fig. 2A-2E; 110/400) comprising:
an accessory attachment layer (400) including a base member (416) and a securement member (414) protruding from a top surface of the base member (Fig. 2A);
a nail accessory layer (110) including a top surface (Fig. 2D see where label 110 points to) configured for ornamental design (Par. 67 and 119 wherein it is fully capable of having an ornamental design), and a bottom surface (Annotated Figure B of Fig. 2D) including a receiving recess (Par. 28 discloses the nail is curved and as such would make a recess) configured for housing a fastening system (120; Annotated Figure B of Fig. 2D; Fig. 2B-2D where the shape and side walls making the recess creates the fastening system);
wherein the fastening system includes a receiving inlet (Annotated Figure C of Fig. 2D) that connects to a securement recess (see Fig. 2A which shows it extending throughout the nail), and a sidewall surrounding the securement recess (Annotated Figure C of Fig. 2D),
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Par. 90 and 128; Fig. 2C-2D); and
wherein the receiving inlet includes a pair of guide walls (112 at the opening of the fastening system which would be where the receiving inlet would be found) extending outwardly and angled from the receiving inlet and configured to guide the securement member of the accessory attachment layer into the securement recess (Fig. 2D where it is angled inwards to create a wider wall for seating edge 114; Par. 68 and 116).
Re. Claim 17, Smith discloses the modular nail assembly of claim 15, furthering comprising a securement layer, wherein the securement layer is an adhesive secured to a bottom surface of the base member and configured to removably secure the accessory attachment layer to the user's natural nail (Par. 128).
Re. Claim 18, Smith discloses the modular nail assembly of claim 17, wherein each of the accessory attachment layer, securement layer, nail accessory layer, and fastening system are contoured to mimic the shape of a natural nail (Par. 119-120 and 129).
Re. Claim 19, Smith discloses the modular nail assembly of claim 15, wherein the sidewall of the fastening system is in direct contact with the securement member of the accessory attachment layer while the accessory attachment layer is secured to the nail accessory layer (Fig. 2D).
Claim(s) 1, 4, 7-8, 13, 15, 17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Surowiec (US 20230067516 A1).
Re. Claim 1, Surowiec discloses a modular nail assembly (1/3; Abstract) comprising:
an accessory attachment layer (4) including a base member and a securement member protruding from a top surface of the base member (Annotated Figure G of Fig. 4 front view);
wherein the accessory attachment layer is configured to be removably secured to a user's natural nail through a securement layer adhered to an underside of the base member (Abstract discloses it is glued on); and
a nail accessory layer (1) including a top surface (see Fig. 4 top view) configured for ornamental design (Abstract), and a bottom surface (see Fig. 4, front view) including a recess (the nail accessory layer is curved creating a recess as shown in Fig. 4 front view) configured for housing a fastening system (see Fig. 4 where label 6 points to), wherein the fastening system includes a receiving inlet (Annotated Figure G of Fig. 4 where it is the opening), a securement recess (Annotated Figure G of Fig. 4 where it is the lumen extending after the opening) connected to the receiving inlet (Fig. 4), and a sidewall surrounding the securement recess (Annotated Figure G of Fig. 4); and
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Fig. 4; Par. 13; Abstract).
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Re. Claim 4, Surowiec discloses the modular nail assembly of claim 1, wherein the flanges (Annotated Figure H of Fig. 4) are disposed within the securement recess of the fastening system when the nail accessory layer is removably secured to the accessory attachment layer (Fig. 4; Par. 13).
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Re. Claim 7, Surowiec discloses the modular nail assembly of claim 1, wherein the accessory layer fully conceals the accessory attachment layer (Fig. 3-4).
Re. Claim 8, Surowiec discloses the modular nail assembly of claim 1, wherein the accessory attachment layer is configured to only partially conceal the user's natural nail (Fig. 3-4).
Re. Claim 13, Surowiec discloses a modular nail assembly (1/3; Abstract) comprising:
an accessory attachment layer (4) including a receiving recess configured to receive and house a fastening mechanism (Annotated Figure I of Fig. 4; Par. 13);
an accessory layer (1) including a top surface (see Fig. 4 top view) configured for ornamental design (Abstract), and a bottom surface (see Fig. 4 front view) including a securement member protruding from the bottom surface and configured to removably secure to the accessory attachment layer (Annotated Figure I of Fig. 4; Par. 13); and
wherein the fastening mechanism is configured to receive and removably secure the securement member of the accessory layer to the receiving recess of the accessory attachment layer (par. 13).
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Re. Claim 15, Surowiec discloses a modular nail assembly (1/3) comprising:
an accessory attachment layer (4) including a base member and a securement member protruding from a top surface of the base member (Annotated Figure G of Fig. 4 front view);
a nail accessory layer (1) including a top surface (see Fig. 4 top view) configured for ornamental design (Abstract), and a bottom surface (see Fig. 4, front view) including a receiving recess (the nail accessory layer is curved creating a recess as shown in Fig. 4 front view) configured for housing a fastening system (see Fig. 4 where label 6 points to);
wherein the fastening system includes a receiving inlet (Fig. 4) that connects to a securement recess (Annotated Figure G of Fig. 4 where it is the opening), and a sidewall surrounding the securement recess (Annotated Figure G of Fig. 4),
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Fig. 4; Par. 13; Abstract); and
wherein the receiving inlet includes a pair of guide walls extending outwardly and angled from the receiving inlet and configured to guide the securement member of the accessory attachment layer into the securement recess (Annotated Figure J of Fig. 4 where they are angled to extend towards the recess).
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Re. Claim 17, Surowiec discloses the modular nail assembly of claim 15, furthering comprising a securement layer, wherein the securement layer is an adhesive secured to a bottom surface of the base member and configured to removably secure the accessory attachment layer to the user's natural nail (Abstract; Par. 13).
Re. Claim 19, Surowiec discloses the modular nail assembly of claim 15, wherein the sidewall of the fastening system is in direct contact with the securement member of the accessory attachment layer while the accessory attachment layer is secured to the nail accessory layer (Fig. 4).
Claim(s) 1-8, 10-11, 15, 17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanagida (JP 2008029652 A, see machine translated version).
Re. Claim 1, Yanagida discloses a modular nail assembly comprising (Fig. 13; Abstract):
an accessory attachment layer (31) including a base member (33) and a securement member (35) protruding from a top surface (33a) of the base member (Fig. 5b);
wherein the accessory attachment layer is configured to be removably secured to a user's natural nail through a securement layer adhered to an underside of the base member (Fig. 8b; Par. 19); and
a nail accessory layer (81) including a top surface (23) configured for ornamental design (Fig. 13), and a bottom surface (24) including a recess (see Fig. 13 which houses element 91) which shows it is configured for housing a fastening system (91), wherein the fastening system includes a receiving inlet (25 where inlet is the opening and the channel extending from the opening would be the securement recess), a securement recess connected to the receiving inlet (25 where inlet is the opening and the channel extending from the opening would be the securement recess), and a sidewall surrounding the securement recess (Annotated Figure K of Fig. 13b); and
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Abstract; Par. 34).
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Re. Claim 2, Yanagida discloses the modular nail assembly of claim 1, wherein the securement member further includes a stem and one or more flange members extending outwardly from the stem (Annotated Figure K of Fig. 5b); and wherein the fastening system further includes a securement channel (Fig. 13b where the receiving inlet extends longitudinally making the securement channel) that is configured to engage with the stem of the securement member upon removable securement of the accessory attachment layer to the nail accessory layer (Par. 34-35).
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Re. Claim 3, Yanagida discloses the modular nail assembly of claim 1, wherein the securement channel has a tapered shape (see Fig. 13b where the sidewall tapers to allow the flanges es to be fitted into the securement recess).
Re. Claim 4, Yanagida discloses the modular nail assembly of claim 1, wherein the flanges are disposed within the securement recess of the fastening system when the nail accessory layer is removably secured to the accessory attachment layer (Fig. 13b).
Re. Claim 5, Yanagida discloses the modular nail assembly of claim 1, wherein accessory attachment layer includes a first end positioned closest to a user's nail bed (Fig. 8), and a second end positioned closest to the user's fingertip (Fig. 8); and wherein the securement member of the accessory attachment layer is positioned closer to the first end of the accessory attachment layer than the second end (see embodiment shown in Fig. 8 which presents the arrangement for the securement members are positioned closer to the user’s nail bed).
Re. Claim 6, Yanagida discloses the modular nail assembly of claim 5, wherein the stem of the securement member extends a portion of the accessory attachment layer, between the first end and second end; and wherein the stem is flush with the one or more flanges when closest to the first end; and wherein the stem has a cross-sectional shape that corresponds to the tapered shape of the securement channel (see Fig. 6b and 13a where it displays a portion of the stem fits within the channel to allow the flanges to fit within the securement recesses).
Re. Claim 7, Yanagida discloses the modular nail assembly of claim 1, wherein the accessory layer fully conceals the accessory attachment layer (Fig. 1).
Re. Claim 8, Yanagida discloses the modular nail assembly of claim 1, wherein the accessory attachment layer is configured to only partially conceal the user's natural nail (see Fig. 8b displays that the attachment layer doesn’t cover the entirety of the user’s natural nail).
Re. Claim 10, Yanagida discloses the modular nail assembly of claim 1, further comprising a longitudinal axis, wherein the accessory layer secures to the accessory attachment layer through a one-direction sliding motion along the longitudinal axis, and wherein the accessory layer detaches from the accessory attachment layer through a one-direction sliding motion along the longitudinal axis (Par. 34).
Re. Claim 11, Yanagida discloses the modular nail assembly of claim 10, wherein the sliding motion for securement is in the opposite direction to the sliding motion for detachment of the accessory attachment layer to and from the nail accessory (Par. 34).
Re. Claim 15, Yanagida discloses a modular nail assembly (Fig. 13; Abstract) comprising:
an accessory attachment layer (31) including a base member (33) and a securement member (35) protruding from a top surface (33a) of the base member (Fig. 5b);
a nail accessory layer (81) including a top surface (23) configured for ornamental design (Fig. 13), and a bottom surface (24) including a receiving recess (see Fig. 13 which houses element 91) configured for housing a fastening system (91);
wherein the fastening system includes a receiving inlet (25 where inlet is the opening and the channel extending from the opening would be the securement recess) that connects to a securement recess, and a sidewall surrounding the securement recess (25 where inlet is the opening and the channel extending from the opening would be the securement recess),
wherein the fastening system is configured to receive and removably secure the securement member of the accessory attachment layer to the nail accessory layer (Abstract; Par. 34); and
wherein the receiving inlet includes a pair of guide walls extending outwardly and angled from the receiving inlet (Annotated Figure M of Fig. 13b) and configured to guide the securement member of the accessory attachment layer into the securement recess (Abstract; Par. 34).
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Re. Claim 17, Yanagida discloses the modular nail assembly of claim 15, furthering comprising a securement layer, wherein the securement layer is an adhesive secured to a bottom surface of the base member and configured to removably secure the accessory attachment layer to the user's natural nail (Par. 19-20).
Re. Claim 19, Yanagida discloses the modular nail assembly of claim 15, wherein the sidewall of the fastening system is in direct contact with the securement member of the accessory attachment layer while the accessory attachment layer is secured to the nail accessory layer (Par. 34).
Claim Rejections - 35 USC § 102/103
Claim(s) 9 is/are rejected under 35 U.S.C. 102,103 as being unpatentable over (US 20240398091 A1).
Re. Claim 9, Smith discloses modular nail assembly of claim 1, but is silent to the fastening system is ultrasonically welded to the receiving recess of the accessory layer.
Smith teaches fastening system comprising a receiving recess of the accessory layer, but is silent as to the method of making. The claimed phrase “the fastening system is ultrasonically welded to the receiving recess of the accessory layer” is being treated as a product by process limitation; that is, that the fastening system is ultrasonically welded to the receiving recess of the accessory layer. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Thus, even though Smith is silent as to the process used to ultrasonically weld the fastening system to the receiving recess of the accessory layer, it appears that the product in Smith would be the same or similar as that claimed.
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) 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Surowiec (US 20230067516 A1).
Re. Claim 16, Surowiec discloses the modular nail assembly of claim 15, wherein Surowiec discloses the barbs can comprise various shapes such as a dove-tail member, L-shape catchement, stars, circles, arrows, etc. (Par. 13). Further, it is disclosed that the anchor itself can be made of multitudes of shapes such as circles.
As such, it would have been obvious to someone skilled in the art to have the anchor of Surowiec to be circles as taught by Surowiec as it is a design choice as to the shape of the particular anchor. Thus, the combination can provide teaching of having a double lobed profile as the circles would be each lobe shape which would correspond to the securement recess and guide walls; and wherein the securement member further includes a vertex formed at the connection between the first lobe and the second lobe, and wherein the vertex is configured to provide the securement point between the guide walls and the securement member.
Re. Claim 20, Surowiec discloses the modular nail assembly of claim 16, wherein the guide walls are flexible members that are configured to expand and contract when engaging with the securement member of the accessory attachment member, and wherein the guide walls generate an audible sound upon engagement with the vertex (Fig. 3; Par. 13).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See Form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY T TO whose telephone number is (571)272-0719. The examiner can normally be reached Monday - Thursday 6:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLY T. TO/Examiner, Art Unit 3772
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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