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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “in particular makeup” in line 2 wherein it should be revised to be removed as it is found to be a broad range in a narrow range that falls within the broad range in the same claim. This is because applicant earlier claims “picking up and applying a cosmetic composition in the form of a transferable print” which is encapsulates the scope of it being used “in particular makeup”.
Appropriate correction is required.
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 1-2, 11, and 13-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Claim 1 is 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.
Claim 1 recites “flat in the first configuration” in line 8 where it is found that there is no support of it being fully flat based on the specification. Further, the figures show that the first configuration that is considered flat, are found to be substantially flat. It should be noted that Fig. 4 shows a flatter configuration, it is unclear if it is fully flat and not substantially flat based on the view of the drawing. With the specification, it is found to be described as “substantially flat” or “virtually flat” indicative that there is no support of it being fully flat. Further, though Fig. 1 presents a flatter configuration through the dotted line, it is found that the description of Fig. 1 states that the surface is “substantially flat” (see Pg. 19, lines 29-30).
Claims 2, 11 and 13-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph as being dependent off of claim 1.
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 1-2, 11 and 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim 1 is 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.
Claim 1 recites “to an actuating element that is movable relative to the support” in line 14 wherein it is unclear if the actuating element is one of the two movable elements OR if it is a separate structure that is also found to be movable. On Pg. 7, lines 23-30 of the specification recites that the movable elements can be fixed relative to the support, in particular fixed at its center. Further, it is shown in the drawings that the actuating element is found fixed at the center of the support (see Fig. 4 as an example). In addition, the actuating element is disclosed to be movable relative to the support- indicative that it is a movable element. For examination purposes, the actuating element will be interpreted as being one of the movable elements.
Claim 1 recites “the actuating element is rotatable about a geometric axis” in lines 15-16 wherein it is unclear if the actuating element is one of the two movable elements OR if it is a separate structure that is also found to be movable. On Pg. 7, lines 23-30 of the specification recites that the movable elements can be fixed relative to the support, in particular fixed at its center. Further, it is shown in the drawings that the actuating element is found fixed at the center of the support (see Fig. 4 as an example). In addition, the actuating element is disclosed to be movable relative to the support- indicative that it is a movable element. For examination purposes, the actuating element will be interpreted as being one of the movable elements.
Claim 1 recites “the actuating element” in line 25 wherein it is unclear if the actuating element is one of the two movable elements OR if it is a separate structure that is also found to be movable. On Pg. 7, lines 23-30 of the specification recites that the movable elements can be fixed relative to the support, in particular fixed at its center. Further, it is shown in the drawings that the actuating element is found fixed at the center of the support (see Fig. 4 as an example). In addition, the actuating element is disclosed to be movable relative to the support- indicative that it is a movable element. For examination purposes, the actuating element will be interpreted as being one of the movable elements.
Claim 1 recites “an actuating element in the form of a push button” in lines 27-28 wherein it is unclear if the actuating element is one of the two movable elements OR if it is a separate structure that is also found to be movable. For examination purposes, the actuating element will be interpreted as being one of the movable elements.
Claim 1 recites “a gripping part” in lines 29-30 wherein it is unclear if the gripping part is part of the actuating element, or a separate element from the actuating element. Further, it is unclear if the gripping part is part of the two movable elements. On Pg. 7, lines 23-30 of the specification recites that the movable elements can be fixed relative to the support, in particular fixed at its center. Further, it is shown in the drawings that the actuating element is found fixed at the center of the support (see Fig. 4 as an example). In addition, the actuating element is disclosed to be movable relative to the support- indicative that it is a movable element. It is also disclosed in pg. 7, line 31 that the actuating element can be at least partially define a gripping surface of the device. Because it is determined that the actuating element can make the gripping part and that the actuating element is intended to be a movable element, the gripping part is part of the actuating element where one of the movable elements can be the actuating element. For examination purposes, the gripping part is part of the actuating element.
Claims 2, 11 and 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for being dependent off of claim 1.
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) 1 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Habatjou (US 7467905 B2) in view of Gueret (US 4446880 A) and Chevalier (US 20150351514 A1).
(As best understood) Re. Claim 1, Habatjou discloses a device (Fig. 1-5) for picking up and applying a cosmetic composition in the form of a transferable print, in particular makeup (Col. 5, lines 13-14 and wherein it is fully capable of picking up/applying makeup in the form of a transferable print), the device having
A flexible support (12; Col. 7, lines 13-18) defining an application surface (the surface of the support is the application surface) intended to receive the cosmetic composition (Col. 5, lines 13-14), and
At least two elements (26/25/13/20/3) that are movable with respect to one another and are connected to the support (Fig. 1; Col. 6, 47-59), such that a relative movement of these at least two elements bring about a mechanical stress on the support (Col. 6, 47-63) and causes the latter to deform between a first configuration for picking up the cosmetic composition and a second configuration for application (Col. 2, lines 11-17),
The application surface being substantially flat in a first configuration of the support (Fig. 3 shows the first configuration of the elements that could deform which the support is found to be on; Fig. 1) and having in a second configuration of the support a morphological shape, suitable for the application of cosmetic composition to an eyelid (Fig. 5 shows the second configuration of the movable elements which shows it would deform to make the support convex; Col. 6, lines 47-59), the application surface having in the second configuration of the support a shape that is convex towards the outside (Fig. 5 shows the second configuration of the movable elements which shows it would deform to make the support convex),
Wherein one of said two movable elements has two mechanical connections (15/16) that connect the support by two respective contact points (Fig. 2 wherein the contact points are where the support contacts the mechanical connection at each end) to an actuating element (26/25/13) that is movable relative to the support and configured to be actuated by the user in order to change the configuration of the support (Col. 7, lines 20-23),
The connections are rigid (Elements 16/16 are found to be end pieces and as such would need to be more rigid compared to the support as the support is intend to bend and each connection would need to be more rigid to ensure the support bends) and connect the actuating element to the support (Fig. 2), the device being configured such that a movement of said actuating element acts on the connections and the support (Fig. 2-5; Col. 7, lines 20-23).
However, Habatjou is silent to the application surface being flat and the device further comprising an actuating element in the form of a push button, which the user presses in order to deform the support, this push button being movable relative to the body of the device defining a gripping part, the connections being hinged to said body and moved by the movement of the push button.
Gueret discloses a makeup brush in the same field of endeavor and further discloses a support (13) comprising an application surface (surface of the support) that is flat (Fig. 1 where it is flat and comprises uniformed bristle height) where the height is adapted to suit the wishes of the user or the properties of a make-up product to be applied (Abstract).
It would have been obvious to someone skilled in the art before the effective filing date to have the application surface of Habatjou to be flat as taught by Gueret to suit the wishes of the user or the properties of a make-up product to be applied.
Chevalier discloses a cosmetic applicator in the same field of endeavor and further discloses an actuating device (54) in the form of a push button (Par. [0102]) which the user presses, the push button being movable relative to the body of the device defining a gripping part (Par. [0125] wherein the gripping part is the surface of the push button which the user would grip on) wherein a connection (46A) being moved by the movement of the push button (Fig. 1-2).
It would have been obvious to someone skilled in the art before the effective filing date to have the actuating element of Mooney and Gueret to be a push button as taught by Chevalier as it is found to be a design choice as to how the applicator is actuating wherein by providing a push button, it allows for easy application of such actuator. As such, the combination of Mooney, Gueret and Chevalier would provide the teaching that the actuating element in the form of a push button which the user presses in order to deform the support, this push button being movable relative to the body of the device defining a gripping part, the connections being hinged to said body and moved by the movement of the push button.
(As best understood) Re. Claim 11, Mooney, Gueret and Chevalier discloses the device according to claim 1, wherein Chevalier further discloses the body of the device is provided with fins (41) for holding the device when the user presses the push button (Par. [0062]).
It would have been obvious to someone skilled in the art before the effective filing date to have the body of the device of Mooney, Gueret and Chevalier to have fins as taught by Chevalier to aid the user in holding the device more securely.
Response to Arguments
Argument #1: Applicant argues that the 112a is found to be clarified by Fig. 1, 4, and 7-8 as they provide support for the configuration of the application surface being flat.
Response #1: Applicant’s argument is found to not be persuasive. It is found that Fig. 4 and 7-8 is unclear if it is fully flat and not substantially flat based on the view of the drawing. Further, with regards to Fig. 1 and 7, though it is found to present a flatter configuration, the disclosure specifically states that the first configuration would have the application surface being substantially flat (Pg. 19, lines 28-29 and Pg. 21, lines 29-30.
Argument #2: Applicant argues that Habajou, Gueret, and Chevalier does not provide teaching of the application on the eyelids through transferable prints and have a flat application surface in the meaning of the invention which is to pick-up the application from a flat transfer surface.
Response #2: Applicant’s argument is found to not be persuasive. It is found that the limitation regarding the usage to pick up the composition in the form of a transferable print is found to be functionally claimed where the structure has been met and is fully capable of completing such function. Further, it is found that Habatjou provides a substantially flat application surface similarly presented with applicant’s invention and as shown in Fig. 1 and 3)
Argument #3: Applicant argues that the actuating element is indeed one of the movable elements as shown as reference label 7 of the figures. Further, applicant points out that the actuating element is in the form of a push button which the user presses in order to deform the support. The push button as such may be removable relative to the body of the device and defines a gripping part. The gripping part is thus part of the push button.
Response #3: Applicant’s argument is found to not be persuasive as it is found that as currently claimed, it is unclear that the actuating element is one of the movable elements. It is found that the actuating element can be considered a separate element that is movable or one of the movable elements as currently claimed. To overcome the rejection, providing clarification that the actuating element is one of the movable elements. By doing so, it would provide a clear understanding that one of the movable elements comprises the actuating element. Further, it would overcome the 112b issue that is presented with the push button and gripping part as well with the clarification.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See Form PTO-892.
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.
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/HOLLY T. TO/Examiner, Art Unit 3772
/THOMAS C BARRETT/SPE, Art Unit 3799