DETAILED ACTION
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's election with traverse of Group I in the reply filed on 3/17/2025 is acknowledged. The traversal is on the ground(s) that claim 1 does not include a technical feature that makes a contribution over the prior art. This is not found persuasive because per rejection below claim 1 does not include a technical feature that makes a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/17/2021.
Claim Rejections - 35 USC § 112
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 1-16 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.
Claim 1, line 12, “the relief” lacks a prior antecedent.
Claim 3, line 3, “the relief” lacks a prior antecedent.
Claim 6, line 3, “the relief of the second surface” lacks a prior antecedent.
Claim 15, line 3, “said layer” lacks a prior antecedent.
The term “preferably” in claim 16 is a relative term which renders the claim indefinite. The term “preferable” 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.
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: “a means for attaching” in claim 16.
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 § 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.
Claim(s) 1-4, 7-10, and 12-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2005297410A.
JP ‘410 discloses system for taking up and applying a cosmetic composition, notably a makeup composition, onto a surface of the skin or the lips to be treated, having a predefined shape, the system including at least one support (31) having a receiving surface (1) which can take at least one incurved application configuration roughly matching the profile of the surface to be treated (Figure 1; paragraph 6), and a deformable application member (2) mounted on the receiving surface of the support, having a first take-up and application surface (outer surface) (Figure 1) and a second surface, opposite the first, which serves for attaching to the receiving surface of the support, the application member having, between the first and second surfaces, an adaptation layer of variable thickness (paragraph 8; “the printed body 2 may be directly engraved on the plate body 1 or may be formed by pasting the engraved body on a sperate rubber material” the result of either engraving embossing leave distinguished patterns with varying thickness), the shape of which is chosen so that the relief of the first surface of the application member, when the support is in the application configuration, corresponds more finely to that of the surface to be treated than that of the receiving surface of the support (see Figures 1-5). Claim 2, the cosmetic composition is in the form of a transferable printed film (paragraph 11; “it is preferable to use a printed material”). Claim 3, the receiving surface of the support is capable of taking two different configurations, said incurved application configuration roughly matching the profile of the surface to be treated and a configuration for taking up the cosmetic composition (see Figures 1-5). Claim 4, the adaptation layer of the application member is configured so that the relief of the second surface of the application member, when the support is in the take-up configuration, adapts to the relief of a surface including the cosmetic composition to take it up, notably a printing support, so that gentle crushing of the adaptation layer suffice to place said first surface of the application member in contact with the cosmetic composition and to take it up (Figures 1-5; paragraphs 11). Claim 7, in the take-up configuration (Figure 1), the receiving surface of the support forms a developable surface (see Figure 1). Claim 8, in the take-up configuration, the receiving surface of the support is substantially flat (see Figure 1). Claim 9, in the application configuration, the receiving surface of the support has a concave or convex shape (see Figures 2 and 3; paragraph 6). Claim 10, the application configuration and during application to the surface to be treated, the first of the application member has a shape that is adapted to said surface to be treated (paragraph 6). Claim 12, the support(s) are made of a deformable material, notably an elastically or plastically deformable material, in particular rubber, plastic or metal foil which is thin enough to be flexible (paragraph 11). Claim 12, the support is connected to at least two elements (3, 3’) that are movable relative to each other, such that a relative movement of these two elements brings about a mechanical stress on the support and causes the latter to deform between a configuration for taking up cosmetic composition and the application configuration (see Figures 1-3; paragraph 10). Claim 14, the adaptation layer of variable thickness is made of a deformable, notably elastomeric, material or includes a foam (paragraph 11). Claim 15, the thickness of the adaptation layer corresponds, at each point of said layer, to the separation between the surface to be treated and the receiving surface of the support in the application configuration (see Figures 1-3; paragraph 11). Claim 16, the adaptation layer to the receiving surface of the support, notably a light adhesive (see Figure 1).
Claim(s) 1 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gueret (US 6,076,534).
Gueret discloses system for taking up and applying a cosmetic composition, notably a makeup composition, onto a surface of the skin or the lips to be treated, having a predefined shape, the system including at least one support (108) having a receiving surface which can take at least one incurved application configuration roughly matching the profile of the surface to be treated (Figure 6), and a deformable application member (102) mounted on the receiving surface of the support, having a first take-up and application surface (outer surface) (Figure 6) and a second surface, opposite the first, which serves for attaching to the receiving surface of the support, the application member having, between the first and second surfaces, an adaptation layer of variable thickness (see Figure 6), the shape of which is chosen so that the relief of the first surface of the application member, when the support is in the application configuration, corresponds more finely to that of the surface to be treated than that of the receiving surface of the support (see Figure 6). Claim 11, the support is made of an undeformable material (col. 3, lines 60-62).
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) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over by JP 2005297410A.
JP ‘410 discloses the claimed invention except for a second interchangeable support. It would have been obvious to one having ordinary skill in the art before the effective filing date to provide a kit with multiple supports, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. In this instance case, to allow for multiple stamping products to be sold in a kit.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
8/5/2025