DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/22/26 has been entered.
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.
Claim(s) 1-12, 17-19, and 21 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.
Claims 1, 17, and 20: each of these claims was amended to require “at least one distal end lumen”; however, while applicant has support for “a distal end lumen” there is no support for more than one or the language “at least one” in combination with another claimed lumen as presented. This is a new matter rejection.
Applicant is required to cancel the new matter in response to this office action.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 and 103 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
102(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.
103: 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) 1-9, 11-12, 17-19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bouix (US 20090276973).
Claims 1, 5-6, 11-12, 17, and 21: Bouix discloses an applicator assembly (see Fig 4) for applying a mascara [0043] substance to keratin (see abstract) comprising: a container (60, Fig 4) holding the substance; an applicator (see Fig 4) comprising a stem (52, Fig 4) with an applicator head (3) at an end of the stem and the applicator head is arranged along a longitudinal axis (vertical axis of Fig 4) and includes a horizontal axis (horizontal axis of Figure 3C) perpendicular to the longitudinal axis; the applicator head comprising: a unitary first application member (see Figs 1B-1C) comprising a proximal portion including at least one lumen (12) [0036-0037] extending through a shank (10, Fig 1B). The shank attaches to the stem (see Fig 4), and the distal portion of the first applicator member includes an arm having a convex outer surface (24, Fig 1C) and a concave inner surface (see Fig 1C) curved about the longitudinal axis to form a reservoir for holding a portion of the substance (see Figs 1-4). The arm defines a semi-cylindrical sidewall with a substantially C-shaped transverse cross-section along the horizontal axis (see Fig 1C), The arm comprises a substantially straight bottom portion (bottom of 24; note applicant’s own “straight portion” is simply the bottom of the C, or the apex of the curve see 55b, Fig 18 & [0154] of applicant’s disclosure and this is also illustrated by Bouix) extending parallel with the longitudinal axis and extending distally from the shank. Bouix explicitly states the lumen can extend the entire length of the polymeric core or only through a portion with a closed end at the end (24T) [0036]. In other words, Bouix states the lumen can extend through the distal end (24T) or stop at the end (24T) [0036], thereby forming a “distal end lumen” or hole, as well as a proximal end lumen or hole that receives a portion of the core (see Figs 1-2). A second applicator member (2, Fig 2A) comprising a twisted wire brush including a plurality of bristles (42 & 44) each having their own maximum lengths and supported by and extending radially from a twisted wire core (30), where a proximal end of the core is non-rotatably connected with, and extends from the shank in a distal direction and a distal end of the core extends through the distal end lumen (see hole at distal end of Fig 3B) [0036]; and a first portion of the plurality of bristles (44) having their maximum length extends into the reservoir while a second portion of the plurality of bristles (42) having their maximum length do not extend into the reservoir and the portion of the substance in the reservoir is releasably held in the reservoir and on surface of at least the first portion of the plurality of bristles (see Figs 1-3).
Alternately, if applicant disagrees that Bouix discloses and illustrates a second lumen at the distal end of the applicator member, then Bouix discloses the first applicator member can comprise more than one recess for engaging the metal wire core of the twisted wire brush [0036] and discloses the invention essentially as claimed except for this additional lumen at the second end. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the applicator of Bouix by duplicating the proximal lumen at the distal end since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(B). Furthermore, it would be obvious because Bouix suggests it with the language “may comprise one or more” in [0036]. Additionally, another securement lumen at the distal end of the first applicator member would logically help prevent the twisted wire brush from being mistakenly removed from the first applicator member, which is common sense, because it is well known that a cantilever is best secured at its opposite end for optimum stability, another reason it would be obvious to make the proposed modification.
Claim 2: the first applicator member includes flexible elastically deformable bristles (26).
Claim 3: the container can include a wiper arranged to surround the neck of the container [0043], so it would also surround the stem when the applicator is inserted into the container and would contact an outer surface of the applicator head when the applicator is withdrawn from the container while allowing the portion of the substance to remain in the reservoir of the applicator because this reservoir would not be contacted by the wiper (see Figs 1-4).
Claim 4: when the applicator head is in contact with the wiper, the first applicator would inevitably move at least slightly toward the second applicator member because of the presence of the illustrated gap between the two (see Fig 3C).
Claims 7-9: the shank can include a locking member forming a second engaging feature connected with the core, in the form of a loop, or groove, or pit of the twisted wire core [0036] on an outer surface of the core and which is inserted into the first lumen when the applicator is assembled [0036]. The second engaging feature mates with a first engaging feature in the form of an annular surface groove or protrusion(s) including pins, clips, and hooks [0036] on the inner surface of the lumen to fix the first applicator member to the second applicator member [0036]. Since Bouix discloses an annular groove [0036] and mating protrusion arrangement, the office interprets this to constitute Bouix disclosing the first and second engaging features to comprise an annular groove and annular bead.
Claim 18: The first unitary applicator member includes the substantially straight bottom portion extending distilling from the shank (see above rejection of claim 17) and the C-shaped portion forms a curving hood at the distal end and this curving hood crosses the longitudinal axis of the applicator (see Fig 3C).
Claim 19: the concavity of the C-shaped portion extends radially around 30-80% of the circumference of the twisted wire brush (see Fig 3C).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bouix (US 20090276973) in view of Jacob (US 20170347784).
Claim 10: Bouix, or modified Bouix discloses the invention of claim 6 and further discloses a distal end of the core extending through the second lumen (see above rejection) and discloses the invention essentially as claimed except for adding adhesive to the first lumen and the second lumen to secure the first applicator member to the second applicator member.
Jacob, however, teaches a two-piece mascara applicator (see Fig 8) wherein the two pieces are connected by extensions of their cores (15c+14k & 15b+14d) and further teaches that connecting two cores together can be achieved by snap-fitting, friction-fitting, or adhesives [0020] and a snap or friction fit is an interference fit. Therefore, it would have been obvious to one possessing ordinary skill in the art at the time of filing to modify the two-piece mascara applicator of Bouix by providing the two ends of the connecting cores of each applicator with an adhesive in view of Jacob since Jacob teaches this to be a known method of securing a two-part mascara applicator together and to provide an additional securement means to the applicator.
Response to Arguments
Applicant’s arguments filed 4/7/26 have been considered but are moot because they are all drawn to the newly presented claim limitations, which have been addressed in the above modified rejection and with a new ground of rejection, as necessary.
Applicant argues previous limitations regarding a radius that have since been removed from the claims rendering these arguments moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 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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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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