DETAILED ACTION
1. The Amendment filed 12/16/2025 has been entered. Claims 1-21 in the application remain pending. Claims 1, 8 & 10 were amended. Claims 13-20 remain withdrawn from consideration.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. 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
4. The claim rejections under AIA 35 U.S.C. 112(b), of claims 1-12 & 21 are withdrawn per Applicant’s arguments being persuasive.
Claim Rejections - 35 USC § 103
5. Claims 1, 6, 11, 12, and 21 are rejected under 35 U.S.C. 103 as being
unpatentable over Thomason (US 20100122745, already of record) in view of
Rushing (USP 5833364).
Regarding claims 1, 6, and 21, Thomason teaches a system for spray tan customization using a multi-part solution, the system comprising:
a fluid container 120a (first reservoir) capable of staging a first solution, the container 120a (first reservoir) being provided with a first pump 130a (para 0024, 0041; see for example Fig. 3);
a fluid container 120b (second reservoir) capable of staging a second solution, the container 120b (second reservoir) being provided with a second pump 130a (para 0024, 0041; see for example Fig. 3);
a mixing chamber 136 (third reservoir) configured to receive the first and second solutions (para 0028; see for example Fig. 3); and,
a controller 146 including a memory and processor (see para 0033) configured to initiate a mix sequence for the first and second solutions based on user preferences
(see para 0038) by activating first and second pumps 130a,b to dispense first and second solutions to mixing chamber 136 (third reservoir) (para 0033, 0038; see for example Fig. 3); wherein the controller 146 is configured to control the operation of the system, specifically, the controller 146 is configured to operate the pumps 130a,b, the solution valves 132a,b, the air compressor 142, and the air valve 144 and suitable controllers can include a processor, a microprocessor, a control circuit, a PLC, or any other appropriate control device (para 0033).
The limitations "a first solution comprising dihydroxyacetone (DHA), wherein the first solution contains no activating amino acids" and "a second solution comprising activating components including amino acids, wherein the second solution contains no dihydroxyacetone (DHA)" do not further structurally limit or modify the apparatus as claimed since the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself (see MPEP 2115).
The particular claimed compositions do not require modification of the fluid containers 120a,b, or prior art apparatus as a whole, to be especially adapted to hold and deliver the claimed compositions. There is no evidence that the fluid containers 120a,b would be unable to hold various compositions, including the claimed compositions (see para 0017). Thus, there is no structural difference between the fluid containers 120a,b or electronic controller in the apparatus of Thomason and the claimed invention (see MPEP 2114).
Thomason does not explicitly teach a solenoid switch with the controller being configured to cause the switch to trigger water flow into the mixing chamber 136 (third reservoir).
However, Rushing teaches a solenoid switch 22E connected to mixing chamber 16 (analogous to "third reservoir"), the solenoid switch 22E being controlled by a microprocessor 14 (controller) to trigger water flow into the mixing chamber 16, for the
benefit of rinsing the mixing chamber 16 after use (col. 7, lines 23-48; col. 10, lines 66- 67 through col. 11, lines 1-9; see for example Fig. 3) or adding water to chemical subcomponents (col. 7, lines 49-65). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to connect a solenoid switch to mixing chamber 136 (third reservoir) to trigger water flow into the mixing chamber 136 (third reservoir) in the apparatus of Thomason, as taught by Rushing, for the benefit of rinsing the mixing chamber or adding water to chemical subcomponents wherein configuring with the controller to cause the switch to trigger water flow into the mixing chamber 136 (third reservoir) would be within the purview of the ordinary artisan and involve only routine skill in the art as Thomason teaches wherein the controller 146 is configured to control the operation of the system, specifically, the controller 146 is configured to operate the pumps 130a,b, the solution valves 132a,b, the air compressor 142, and the air valve 144 and suitable controllers can include a processor, a microprocessor, a control circuit, a PLC, or any other appropriate control device (para 0033).
Regarding claim 11, Thomason further teaches that the mixed contents of the mixing chamber 136 (third reservoir) are provided to a spray tan booth (not shown; see para 0052).
Regarding claim 12, Thomason further teaches that the mixed contents of the mixing chamber 136 (third reservoir) are provided to a spray gun (para 0052).
6. Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Thomason (US 20100122745, already of record) in view of Rushing (USP 5833364) as applied to claim 1 above.
Regarding claims 9 and 10, Thomason further teaches using "more than two fluid containers" (i.e., a fourth reservoir) (para 0041).
Thomason further teaches a high-pressure pump for each fluid container 120a,b
(para 0041).
Thomason does not explicitly teach "more than two fluid containers" (i.e., fourth reservoir) including a third pump.
However, Thomason further teaches each fluid container 120 includes a pump and a flow path, for the benefit of pumping and controlling fluid flow to permit mixing in mixing chamber 136 (third reservoir) (para 0024, 0028; see for example Fig. 3). The duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04). Thomason further teaches controller 146 configured to operate (i.e., activates) each pump, for the benefit of obtaining a desired fluid ratio (para 0048-0050).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine a pump and flow path with each of the more than two containers (i.e., fourth reservoir) in the apparatus of Thomason; and modify controller 146 to operate each pump in the system, for the benefit of pumping and controlling fluid flow to permit mixing in mixing chamber 136 (third reservoir), and achieve specified fluid ratios.
As mentioned above, the limitation "including moisturizer" does not further structurally limit the apparatus as claimed since the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself (see MPEP 2115). The "more than two fluid containers" would be capable of holding various compositions, including the claimed compositions, since there is no structural difference between the fluid containers in the apparatus of Thomason and the claimed
invention (see para 0017). See MPEP 2114.
7. Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over
Thomason (US 20100122745, already of record) in view of Rushing (USP 5833364)
as applied to claim 1 above, and in further view of Falcoff (USP 4403866, already
of record).
Regarding claims 2 and 3, Thomason further teaches the mixing chamber 136 (third reservoir) mixes contents contained therein (para 0028).
Thomason does not explicitly teach that the controller 146 is configured to activate a mixing element to mix the first and second solutions (i.e., contents) in the mixing chamber 136 (third reservoir).
However, Falcoff teaches a computer 1 (controller) configured to activate variable speed mixer 14 (mixing element) to mix first and second solutions in the mixing vessel 13 (third reservoir), for the benefit of providing for sufficient and thorough mixing (col. 3, lines 55-65; see for example Fig. 1). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine a mixing element with the mixing chamber 136 (third reservoir) to be activated by controller 146 in Thomason, as taught by Falcoff, for the benefit of providing for sufficient and thorough mixing.
8. Claims 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Thomason (US 20100122745, already of record) in view of Rushing (USP 5833364) as applied to claim 1 above, and in further view of Proharam (USP 10306879, already of record).
Regarding claims 4 and 5, as mentioned above, Thomason teaches a mixing chamber 136 (third reservoir) configured to receive the first and second solutions (para 0028; see for example Fig. 3).
Thomason does not explicitly teach a fourth reservoir.
However, Proharam teaches a buffer tank 29 (fourth reservoir) to collect additional ingredients (col. 8, lines 13-21; col. 13, lines 16-24; see for example Fig. 2), the buffer tank 29 (fourth reservoir) provided with a third pump 32 (col. 8, lines 33-36; see for example Fig. 2), and a check valve 38 disposed between the third pump 32 and mixer 44 (or 45) (third reservoir), for the benefit of mixing premixture batches and controlling flow rate of the premixtures (col. 8, lines 33-65; see for example Fig. 2). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention combine to a fourth reservoir with a third pump, and arrange a check valve between the third pump and the chamber 136 (third reservoir) in Thomason, as taught by Proharam, for the benefit of mixing premixture batches and controlling flow rate of the premixtures.
Regarding claim 7, as mentioned above, Thomason teaches that the second pump 130a is controlled by controller 146 (para 0033; see for example Fig. 3).
As mentioned above, Thomason teaches a mixing chamber 136 (third reservoir) configured to receive the first and second solutions (para 0028; see for example Fig. 3). Thomason does not explicitly teach dispensing the second solution of container 120b (second reservoir) to the mixing chamber 136 (third reservoir) through the fourth reservoir.
However, Proharam further teaches dispensing the second solution of tank 11 (second reservoir) to the mixer 44 (or 45) (third reservoir) through the buffer tank 20 (fourth reservoir), for the benefit of mixing premixture batches and controlling flow rate of the premixtures (col. 8, lines 33-65; see for example Fig. 2). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to dispense the second solution of container 120b to the mixing chamber 136 (third reservoir) through a fourth reservoir, as taught by Proharam, for the benefit of mixing premixture batches and controlling flow rate of the premixtures.
9. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over
Thomason (US 20100122745, already of record) in view of Rushing (USP 5833364) and Proharam (USP 10306879, already of record) as applied to claim 4 above, and in further view of Wire (US 20040099183, already of record).
Regarding claim 8, as mentioned above, Thomason teaches an electronic controller 146 configured to operate pumps 130a,b (para 0033; see for example Fig. 3). Proharam of the previous art combination further teaches that the regulators and valves are connected to a control console 70 (controller) (col. 9, lines 5-11; col. 15, lines 54-59 through col. 16, lines 1-2).
The previous art combination above does not explicitly teach the controller connected (capable of activating) the third pump with an electronic controller to dispense contents of the fourth reservoir to the mixing chamber 136 (third reservoir) based on user preferences.
However, Wire teaches a vessel 22 (first reservoir), vessel 32 (second reservoir), final mix vessel 50 (third reservoir), and premix vessel 37 (fourth reservoir), wherein a pump 44 (analogous to "third pump") is activated by a control unit 80 (controller) to dispense contents of the premix vessel 37 (fourth reservoir) to the final mix vessel 50 (third reservoir) based on predetermined times (i.e., user preferences) (para 0033-0035, 0039; see for example Fig. 2), for the benefit of controlling dwell times or volume of mixed components. Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the controller 146 to activate the third pump to dispense contents of the fourth reservoir to mixing chamber 136 (third reservoir) based on user preferences in the apparatus of the previous art combination above, as taught by Wire, for the benefit of controlling dwell times or volume of mixed components.
Response to Arguments
10. Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Claims 1, 6, 11, 12, and 21 were rejected as being obvious in view of Thomason and Rushing. However, for the reasons set forth in greater detail below, the claims are not rendered obvious by the suggested combination.
In this regard, as previously argued, claim 1 recites a spray tan customization system using a multi-part solution and further recites that the first solution contains no activating amino acids and that the second solution contains no dihydroxyacetone (DHA). Moreover, the claim recites that the controller is configured to perform, as claimed, to achieve a customized tanning result based on user preferences wherein the dihydroxyacetone (DHA) is activated when the first and second solutions are mixed. Further, claim 1 also recites a switch connected to the third reservoir, the switch being controlled by the controller, the controller being configured to cause the switch to trigger water flow into the third reservoir to purge the third reservoir.
The cited art has not been established by the Examiner to teach the claimed features. In this regard, the Examiner has not established that the cited art shows a system that functions to mix parts of a multipart solution to achieve a customized tanning result, as disclosed and claimed. The Examiner has only shown that Thomason uses complete solutions (or, in some cases, diluting agents or water) in the containers. Also, the Examiner does not recognize structural differences in the claimed features compared to the cited art and dismisses the contents of the reservoirs and the configuration of the controller. However, the applicant submits the controller, at the very least, is structurally distinctive from the Examiner's citations because it is configured to initiate a mix sequence for the first solution staged in the first reservoir and the second solution staged in the second reservoir based on user preferences for a spray tan session, activate the first pump to dispense the first solution from the first reservoir to the third reservoir based on the user preferences, and activate the second pump to dispense the second solution from the second reservoir to the third reservoir based on the user preferences, wherein the first solution and the second solution are mixed in the third reservoir such that the dihydroxyacetone (DHA) is activated by the activating components to achieve a customized tanning result based on the user preferences. For at least this reason, the claims are distinguishable.
Also, the Examiner cites Rushing for a disclosure of a switch. However, even if Thomason and Rushing could be combined (which is not conceded), Rushing is not cited to cure the above noted deficiencies. Therefore, the suggested combination lacks claimed elements.
Claim 21 is submitted to be patentable for reasons similar to those above.
(b) Claims 2 and 3 were rejected as being obvious over Thomason in view of Rushing and Falcoff. Falcoff relates to making paints and the Examiner has not fairly established that it could be fairly combined or is analogous art for a combination.
(c) Claims 4, 5, and 7 were rejected as being obvious over Thomason in view of Rushing and Proharam. Proharam relates to an agricultural application and the Examiner has not fairly established that it could be fairly combined or is analogous art for a combination.
(d) Claim 8 was rejected as being obvious over Thomason in view of Rushing and Proharam, further in view of Wire. Wire relates to applications to a metallic surface and the Examiner has not fairly established that it could be combined or is analogous art for a combination.
(e) Accordingly, independent claims 1 and 21 are submitted to be allowable. Likewise, all dependent claims are submitted to be allowable. Thus, all rejections should be removed.
11. In response to applicant’s arguments, please consider the following comments.
(a) As already discussed above in detail in regards to claim 1, the limitations "a first solution comprising dihydroxyacetone (DHA), wherein the first solution contains no activating amino acids" and "a second solution comprising activating components including amino acids, wherein the second solution contains no dihydroxyacetone (DHA)" do not further structurally limit or modify the apparatus as claimed since the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself (see MPEP 2115).
The particular claimed compositions do not require modification of the fluid containers 120a,b, or prior art apparatus as a whole, to be especially adapted to hold and deliver the claimed compositions. There is no evidence that the fluid containers 120a,b would be unable to hold various compositions, including the claimed compositions (see para 0017). Thus, there is no structural difference between the fluid containers 120a,b or electronic controller in the apparatus of Thomason and the claimed invention (see MPEP 2114).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP 2114.
Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
In this case, the "configured to" language related to the controller imparts limitations on the relationship between the controller and components controlled by the controller. However, the "configured to" language does not modify neither the electrical
configuration of the controller nor the components controlled by the controller merely based on compositions in the containers. There is no evidence that the fluid containers 120a,b would be unable to hold various compositions, including the claimed compositions, to create a desired solution mixture (see para 0017, 0038).
Since there is no evidence of a mechanical or structural difference between the apparatus of Thomason and the claimed invention, the invention of independent clam 1 is patentably indistinguishable from the apparatus of Thomason except for the claimed switch connected to the third reservoir with the controller being configured to cause the switch to trigger water flow. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc) (See MPEP 2145). In this case, the burden shifts to the applicant to come forward with particular reasoning and/or specific explanation as to why there is a mechanical or structural difference between the claimed invention and the modified (in view of Rushing ) apparatus of Thomason.
(b) Examiner respectfully contends Thomason, Rushing and Falcoff are in the same field of endeavor and solve the same problem (liquid coating and coating application) as already discussed above in detail in regards to claims 2 and 3.
Further, see MPEP 2143. In Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building foundation using a screw anchor attached to the foundation by a metal bracket. One prior art reference taught a screw anchor with a concrete bracket, and a second prior art reference disclosed a pier anchor with a metal bracket. The court found motivation to combine the references to arrive at the claimed invention in the “nature of the problem to be solved” because each reference was directed "to precisely the same problem of underpinning slumping foundations." Id. at 1276, 69 USPQ2d at 1690. The court also rejected the notion that “an express written motivation to combine must appear in prior art references….” Id. at 1276, 69 USPQ2d at 1690.
(c) Examiner respectfully contends Thomason, Rushing and Proharam are in the same field of endeavor and solve the same problem (liquid coating and coating application) as already discussed above in detail in regards to claims 4, 5 and 7.
Further, see MPEP 2143. In Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building foundation using a screw anchor attached to the foundation by a metal bracket. One prior art reference taught a screw anchor with a concrete bracket, and a second prior art reference disclosed a pier anchor with a metal bracket. The court found motivation to combine the references to arrive at the claimed invention in the “nature of the problem to be solved” because each reference was directed "to precisely the same problem of underpinning slumping foundations." Id. at 1276, 69 USPQ2d at 1690. The court also rejected the notion that “an express written motivation to combine must appear in prior art references….” Id. at 1276, 69 USPQ2d at 1690.
(d) Examiner respectfully contends Thomason, Rushing. Proharam and Wire are in the same field of endeavor and solve the same problem (liquid coating and coating application) as already discussed above in detail in regards to claim 8.
Further, see MPEP 2143. In Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building foundation using a screw anchor attached to the foundation by a metal bracket. One prior art reference taught a screw anchor with a concrete bracket, and a second prior art reference disclosed a pier anchor with a metal bracket. The court found motivation to combine the references to arrive at the claimed invention in the “nature of the problem to be solved” because each reference was directed "to precisely the same problem of underpinning slumping foundations." Id. at 1276, 69 USPQ2d at 1690. The court also rejected the notion that “an express written motivation to combine must appear in prior art references….” Id. at 1276, 69 USPQ2d at 1690.
(e) In view of the foregoing, Examiner respectfully contends the limitations of claims 1 and 21 are indeed satisfied. Claims 2-12 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
12. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights