Detailed Action
The communications received 09/22/2025 have been filed and considered by the Examiner. Claims 13-25 and 27-29 are pending. Claims 13 and 18 are currently amended.
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 Objections
The amendments supplied 09/22/2025 have removed the objection of claim 13
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “applied by means of the application device” in claim 20.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The amendments supplied 09/22/2025 have successfully removed the rejection of claim 18.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13-17, 20-25, and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poetschl et al (US 2009/0095317) hereinafter POE in view of Cowelchuck et al (US 2006/0097544) hereinafter COW.
As for claim 13, POE teaches a method for production of an application device comprising a holding member (hard component) and an applicator element (the soft component which is foam) [0003; 0035] comprising a foamed plastic part, the method comprising:
Supplying a holding member (hard component) [0014]
Implementing the applicator element (injection molding it) [0014]; and
Attaching the applicator element to the holding member (via injection molding) [0026];
Method wherein the implementation of the applicator element comprises:
Injecting liquid plastic into a mold in order to implement a foamed plastic (as one example of a soft component is foam injected over another component. The injecting of a component over a preformed component is understood to be over-molding and will be referred to as such for the rest of the office action) [0003]; and
After cooling, withdrawing the foamed plastic part made in step d from the mold, where the foamed plastic part forms at least a part of the applicator element (the formed part is understood to be removed after molding one sufficiently hardened) [0026].
POE does not teach that a gas is injected along with plastic to form the foam.
COW teaches a method for the production of a device with a foam overmolded (a cover which is foam based which is overmolded onto a substrate), in which a gas is injected (introduced) into a thermoplastic in order to creating conditions for creating foamed sections [0021-23]. The manner of over-molding a foam as taught by COW allows for the control of desired color and texture which can enhance both the tactile feel and appearance.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have over-molded the foam onto the holding member of POE which includes injecting gas as taught by COW as COW teaches that this manner of forming foam onto a substrate allows for improved tactile feel and appearance. As both POE and COW pertain to the art of over-molding, one of ordinary skill in the art would have looked to COW for advantageous teachings applicable to POE and would have had a reasonable expectation of success in the combination.
As for claim 14, POE/COW teach claim 13 and where the mold is heated (as the hard component is heated before the injection of the soft component, as the hard component is understood to be in the mold it is understood to be heated) [POE: 0030].
As for claim 15, POE/COW teach claim 13 and COW further teaches that during step c, a portion of the gas is evacuated (vented) in order to foam [0023].
As for claim 16, POE/COW teach claim 13 and wherein the applicator element comprises a rigid head [POE: Fig. 4b #409; 0065] and wherein the application part in foamed plastic is overmolded on the rigid head [POE: Fig. 4b #402; 0065].
As for claim 17, POE/COW teach claim 13 and wherein in step c, a quantity of material less than the volume of the mold to be filled with said material is injected (as the foam material must expand in the mold cavity as part of its formation, therefore in order for there to be volume into which expansion can occur one of ordinary skill in the art would recognize the requirement of introducing a quantity of material less than the mold cavity volume to achieve mold foaming) [POE: 0025].
As for claim 20, POE/COW teaches the applicator formed in accordance with claim 13 and the method of producing a cosmetic product package by supplying a container to contain the cosmetic product along with the applicator [POE: 0013].
As for claim 21, POE/COW teach claim 20 and wherein the applicator is attached onto the container [POE: 0013].
As for claim 22, POE/COW teach claim 16 and wherein the rigid head and the application part are fixed to each other by at least one among interlocking shape and adhering (via over-molding on an anchor) [POE: 0010].
As for claim 23, POE/COW teach claim 22 and wherein the rigid head has an internal connecting area receiving an anchoring portion (an anchor) of the application part [POE: 0022; 0028-29l Fig. 4a-4b].
As for claim 24, POE/COW teach claim 23, wherein the internal connecting area of the rigid head comprises at least one channel where the at least one channel extends along a first longitudinal segment opening into a longitudinal end of the rigid head [POE: Fig. 4b #401-402] and along a second radial section [POE: Fig. 4b #107-108; 0064-70], opening into a lateral side of the rigid head.
As for claim 25, POE/COW teach claim 16, wherein the applicator element is connected to the holding member, by a stem (stabilizer) and wherein the rigid head is jointly molded with the stem [POE: Fig. 4b #409; 0065].
As for claim 27, POE/COW teach claim 13, wherein the application device is selected from a mascara applicator [POE: Fig. 4a-4b; 0003].
As for claim 28, POE/COW teach claim 20 and wherein the container contains a cosmetic product [POE: 0013].
As for claim 29, POE/COW teach claim 20 and wherein the container has an opening and the holding member is fixed onto the container in order to block the opening of the container (attached to the lid) [POE: 0013].
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poetschl et al (US 2009/0095317) hereinafter POE in view of Cowelchuck et al (US 2006/0097544) hereinafter COW as applied to claim 13 and further in view of Arai (US 2002/0014709) hereinafter ARA.
As for claim 18, POE/COW teach claim 13 and POE further teaches that the article is held in place until it is finished cooling [COW: 0023] but does not teach that the holding step within the mold for a closed state is done for a time greater than the length of the injection step.
ARA teaches an injection molding process in which gas is injected in order to form [Abstract]. ARA further teaches that one manner of reducing the overall cycle time of the mold is by shortening the injection and filling time which can also be used to control the cell size of the foam [0118; 0122]. One acceptable arrangement of injection and cooling times is an injection time which is shorter than a cooling time [0199-200].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have employed the cooling and filling time of ARA as these injection and cooling times are more efficient (contribute to a lower cycle time therefore a more efficient molding process). As both POE/COW and ARA pertain to the injection molding of foamable resins using injectable gas, one of ordinary skill in the art would have looked to ARA for advantageous teachings for POE/COW.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poetschl et al (US 2009/0095317) hereinafter POE in view of Cowelchuck et al (US 2006/0097544) hereinafter COW as applied to claim 13 and further in view of Toyohiko et al (US 2016/0001474) hereinafter TOYO.
As for claim 19, POE/COW teach claim 13 but does not teach what the gas is.
In accordance with the MPEP, a simple substitution of a known element for another is an exemplary rational that supports a conclusion of obviousness [see e.g. MPEP 2143(I)(B)].
TOYO teaches an injection molding method used to inject foam in which a gas is injected [Abstract; 0038; 0089]. TOYO teaches that known exemplary inert gases usable for injection molding process are carbon dioxide and nitrogen.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used carbon dioxide and nitrogen in POE/COW as these are known gas alternates usable in molding. In addition it would have been obvious to have replaced the gas of POE/COW with the gas of TOYO in order to foam an injection resin. As both POE/COW and TOYO pertain to the art of injection molding and foaming, one of ordinary skill in the art would have expected success in the combination.
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive.
The Applicant argues that as the art of Cowelchuck is not analogous to the art of claimed subject matter, as the claimed subject matter is specifically in the art of cosmetic product applicators and therefore one of ordinary skill in the art should be interpreted as one of ordinary skill in the art of cosmetic product applicators.
Respectfully the Examiner disagrees. The preamble of claim 13 begins with “a method for the production of an application device…” followed by limitations such as “supplying a holding member”, “attaching the applicator element to the holding member”, “injecting liquid plastic and gas into a mold in order to implement the foamed plastic part…” (emphasis Examiner’s) which readily suggest that the fundamental understanding of the method pertains to molding methods, in particular overmolding and foaming methods. Therefore the knowledge of one of ordinary skill in the art will readily extend into the arts of overmolding and foam molding. The Examiner recognizes that as a claimed method, that it must product the application device, however, that process is met by the primary reference of Poetschl which then utilizes teachings provided by Cowelchuck which pertain to the arts of overmolding and foaming, in order to meet the required foaming step. Especially as Cowelchuck is not used to teach a shape, only the foaming step, it does not matter that Cowelchuck does not explicitly teach the molding of an applicator element, as instead it teaching overmolding and foaming aspects which one of ordinary skill in the art would find readily analogous to the overmoulding and foaming method of the instantly claimed invention, along with being analogous, applicable, and advantageous to the primary reference Poetschl.
The Applicant argues that Cowelchuck’s two phase foaming method in combination with the first phrase forming a skin while the second phase forms a foam would render the benefits of an inner foam disadvantageous for the formation of a cosmetic article as it would cause issues such as rendering it difficult to store some cosmetic product in the foam.
Respectfully the Examiner disagrees that this poses an issue. As currently claimed there is no specific requirement that would suggest that Cowelchuck’s teachings whether including an outer skin or not, would interfere with the functions as claimed, i.e. as an applicator. Similarly, the outer skin may provide for benefits such as allowing for a certain texture, mixing, or smear which are desired during the application of cosmetics.
Conclusion
THIS ACTION IS MADE FINAL. 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 Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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/E.V./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748