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 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.
Claims 1-5, 7-9, 11, and 21-25 are 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 and 23 recite a solid consumable preparation that has a buttery consistency. There is no support for “a buttery consistency” in the original disclosure. The only description of the consistency of the cosmetic is in paragraph 0043 of the original specification, which says “The solid consumable preparation may have a consistency and hardness similar to that found in stick deodorants.” This neither states nor implies that the solid consumable preparation has a “buttery consistency”.
Claims 2-5, 7-9, 21-22, and 24-25 are rejected as inheriting the defect(s) of their respective parent claim(s).
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 1-5, 7-9, 11, and 21-25 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.
The term “buttery” in claims 1 and 23 is a relative term which renders the claim indefinite. The term “buttery” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how one of ordinary skill in the art would determine if a particular cosmetic were buttery or not.
Claim 23 recites the limitation "the axle" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-5, 7-9, 21-22, and 24-25 are rejected as inheriting the defect(s) of their respective parent claim(s).
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 (i.e., changing from AIA to pre-AIA ) 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) 1-3, 7-9, and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKey (US 2545700) in view of Schiaparelli (GB 413864).
Regarding claim 1, MacKey teaches an apparatus for applying a consumable preparation comprising: an applicator assembly including a handle (11), an arm (12, 13, 14); the arm having a first portion (12) longitudinally extending from one end of the handle to an arm end, the arm having a second portion (between 12 and 13) extending and projecting substantially orthogonally from the arm end, and a third portion (13) extending from an end of the second portion in a direction substantially parallel to the first portion, the third portion having a third portion end (at 14); and an axle (extending from 14 to 16) fixedly connected to the arm at the third portion end, projecting laterally from the arm, and longitudinally spaced from the handle and the second portion, so as to be supported only from the third portion; a roller assembly (1) including a unitary core (2) having a first end cap (5) configured to rotatably receive the axle at a first end of the roller assembly and a second end cap (5) disposed at a second, opposed end of the roller assembly, configured to rotatably receive the axle, the axle extending through an entire length of the core (Fig. 3), each end cap having an opening (8) for receiving and directly supporting the axle therein, the core extending transversely from the at least one end cap, wherein the roller assembly is interchangeable on the applicator assembly (col. 1, ll. 13-16, and col. 3, ll. 16-25).
MacKey does not teach a solid consumable preparation fixedly connected to at least an exterior surface of the core, wherein the solid consumable preparation has a buttery consistency.
Schiaparelli teaches a roller with a solid consumable preparation (lipstick 3) fixedly connected to at least an exterior surface of a core (31), wherein the solid consumable preparation has a “buttery” consistency (lipstick can be considered “buttery”).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have replaced the fabric of MacKey with the “buttery” solid consumable preparation of Schiaparelli for the purpose of providing the user with a lipstick applicator.
Regarding claim 2, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, wherein the core is generally cylindrical in shape and the solid consumable preparation projects radially outward from the exterior surface of the core (Schiaparelli, Fig.1).
Regarding claim 3, the combination of MacKey and Schiaparelli teaches the apparatus of claim 2, wherein the core is made from cardboard (MacKey, col. 1, ll. 41-45).
Regarding claim 7, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, wherein the solid consumable preparation projects radially outwards from the exterior surface of the core such that the solid consumable preparation has a generally cylindrical shape (Schiaparelli, pg. 1, line 70).
Regarding claim 8, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, but does not teach that the solid consumable preparation projects outwards from the exterior surface of the core such that the solid consumable preparation has a generally spherical shape.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have made the solid consumable preparation in a generally spherical shape because Applicant has not disclosed that the particular shape of the consumable preparation provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Schiaparelli's lipstick and the applicant's invention to perform equally well with either the cylindrical shape taught by Schiaparelli or the claimed spherical shape because both shapes are equally capable of applying the consumable preparation to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the shape of the consumable preparation of Schiaparelli to obtain the invention as specified in claim 8 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of MacKey and Schiaparelli.
Regarding claim 9, the combination of MacKey and Berhault teaches the apparatus of claim 1, but does not teach that the solid consumable preparation has a generally elliptical shape when viewed in cross section along a longitudinal axis of the roller assembly.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have made the solid consumable preparation in a generally elliptical shape because Applicant has not disclosed that the particular shape of the consumable preparation provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Schiaparelli's lipstick and the applicant's invention to perform equally well with either the cylindrical shape taught by Schiaparelli or the claimed elliptical shape because both shapes are equally capable of applying the consumable preparation to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the shape of the consumable preparation of Schiaparelli to obtain the invention as specified in claim 9 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of MacKey and Schiaparelli.
Regarding claim 21, the combination of Mackey and Schiaparelli teaches the apparatus of claim 1, wherein the roller assembly is removable and replaceable on the handle assembly (MacKey, col. 3, ll. 16-25).
Regarding claim 22, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, wherein a distance from the first end of the roller assembly and the second, opposed end of the roller assembly is at least equal to a radius of the assembly (Schiaparelli, pg. 1, ll. 61-65).
Regarding claim 23, Schiaparelli teaches a roller assembly including a unitary core (31) having an axle (4) extending through an entire length of the core, and a solid consumable preparation (3) fixedly connected to at least an exterior surface of the core; wherein the consumable preparation has a “buttery” consistency.
Schiaparelli does not teach that the unitary core has a first end cap configured to rotatably receive the axle at a first end of the roller assembly and a second end cap disposed at a second, opposed end of the roller assembly, configured to rotatably receive the axle, each end cap having an opening for receiving and directly supporting the axle therein, the core extending transversely from the at least one end cap.
MacKey teaches a roller core with a first end cap (5) configured to rotatably receive an axle at a first end of the roller assembly and a second end cap (5) disposed at a second, opposed end of the roller assembly, configured to rotatably receive the axle, each end cap having an opening (8) for receiving and directly supporting the axle therein, the core extending transversely from the at least one end cap (Fig. 3).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the unitary core of Schiaparelli to include a first end cap configured to rotatably receive the axle at a first end of the roller assembly and a second end cap disposed at a second, opposed end of the roller assembly, configured to rotatably receive the axle, each end cap having an opening for receiving and directly supporting the axle therein, the core extending transversely from the at least one end cap as taught by MacKey for the purpose of enabling the unitary core to made from a cardboard tube (Mackey, col. 1, ll. 41-49) instead of a solid piece of wood.
Regarding claim 24, the combination of Schiaparelli and MacKey teaches the apparatus of claim 23, wherein the roller assembly is removable and replaceable on an applicator assembly (a user could deform the lugs 5 of Schiaparelli to remove the roller assembly).
Regarding claim 25, the combination of Schiaparelli and MacKey teaches the apparatus of claim 23, wherein a distance from the first end of the roller assembly and the second, opposed end of the roller assembly is at least equal to a radius of the assembly (Schiaparelli, pg. 1, ll. 61-65).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKey and Schiaparelli as applied to claim 1 above, and further in view of Durliat (US 5813784).
Regarding claims 4, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, but does not teach that the core is perforated and fixed within the solid consumable preparation such that the core is disposed intermediate a radially exterior surface and a radially interior surface of the solid consumable preparation.
Durliat teaches forming a solid consumable preparation (D) on a perforated support (comprising 48, 50, 52, 54, 56 and 58) such that the support is disposed intermediate a radially exterior surface and a radially interior surface of the solid consumable preparation (Fig. 4).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the combination of MacKey and Schiaparelli such that the core is perforated and fixed within the solid consumable preparation such that the core is disposed intermediate a radially exterior surface and a radially interior surface of the solid consumable preparation in light of Durliat’s teaching of a perforated support for the purpose of better retaining the solid consumable preparation (Durliat, col. 2, ll. 38-44).
Regarding claim 5, the combination of MacKey, Schiaparelli and Durliat teaches the apparatus of claim 4, wherein the core is made from recycled plastic (Durliat; col. 1, ll. 25-29 and col. 2, ll. 33-35).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKey and Schiaparelli as applied to claim 1 above, and further in view of Connelly (US 5564851).
Regarding claim 11, the combination of MacKey and Schiaparelli teaches the apparatus of claim 1, but does not teach that the handle includes one or more shafts wherein the shafts are connected so as to telescopically extend between a first length and a second length.
Connelly teaches a handle (27) that includes a plurality of shafts that are connected so as to telescopically extend between a first length and a second length (col. 4, ll. 25-30).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the handle of MacKey such that it comprises one or more shafts that are connected so as to telescopically extend between a first length and a second length as taught by Connelly for the purpose of making it easier for a user to access hard to reach places (Connelly, col. 4, ll. 25-30).
Response to Arguments
Applicant's arguments filed 10 November 2025 have been fully considered but they are not persuasive.
Applicant’s arguments against the Berhault reference are moot because none of the present rejections rely upon Berhault.
In response to applicant's arguments against the MacKey reference individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
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/BRADLEY S OLIVER/Examiner, Art Unit 3754