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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/29/2026 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Fig. 6B, now added, presents new matter issues such as with labeling 230-1 previously not presented during prosecution.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed 1/29/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Amendments regarding Fig. 6B presents new matter issues.
Applicant is required to cancel the new matter in the reply to this Office Action.
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) 1-3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torii (US 20100186766 A1) in view of Miyame (JP 6768310 B2, see machine translated ver).
Re. Claim 1, Torii discloses a mascara (Fig. 1-12C; Abstract), comprising:
a first brush (4) formed extending in one direction (Fig. 1); and
a second brush (3) formed extending in the opposite direction (Fig. 1),
wherein the materials of the first brush and the second brush are formed differently (Par. 44 and 50),
a base (2) to which the second brush is coupled (Fig. 1),
wherein the first brush comprises a plurality of first hairs (4a),
wherein the second brush comprises a plurality of second hairs (3a), a second hair coupling member holding the plurality of second hairs (3b; Fig. 1),
wherein the base includes an insertion opening (2a/2d) having a first end (2c; Fig. 1 where the ends are each end of the through hole made by the insertion opening) and a second end (2d; Fig. 1 where the ends are each end of the through hole made by the insertion opening), the second end being of smaller width than the first end (Fig. 3),
wherein the second brush is inserted into the insertion opening such that the coupling member is retained within the insertion opening by the second end while the plurality of second hairs extend out through the second end (Fig. 2 shows that coupling member is not extending out of the base but rather retained in the base. Rather, what extends out is the hairs which as a result is because the second end width must be smaller than the width of the first end. This can also be exemplified in Fig. 9a),
wherein the first brush (4) is formed by injection molding onto the base (2) such that a portion of material of the first brush fills a remaining space of the insertion opening (2a/2d) and surrounds the coupling member (3b) of the second brush (It should be noted that the limitation is a product by process claim limitation where because the limitation is met structurally, the burden is shifted to the applicant to show an unobvious difference. See MPEP 2113; It should be noted that the first brush does include a molded part which the hairs 4a connects and extends into and “fill” a remaining space of the insertion opening around the second brush in Fig. 1. It is found to surround the surface of the coupling member of the second brush that faces the first brush as shown in Fig. 3.).
However, Torii is silent to a fixing clip securing the plurality of second hairs within the coupling member.
Miyame discloses a mascara in the same field of endeavor and further discloses a brush (10; Fig. 3B) comprising hairs (11), a second hair coupling member (13) and a fixing clip (12) to secure the plurality of second hairs within the coupling member (Fig. 3B).
It would have been obvious to someone skilled in the art before the effective filing date to modify the second brush of Torii to have a fixing clip securing the plurality of second hairs within the coupling member as taught by Miyame to allow further securement of the hairs to the brush.
Re. Claim 2, Torii and Miyame discloses the mascara according to claim 1 wherein Torii further discloses the material of the brushes (Par. 44 and 50). It is found that Torii discloses the second brush having a softer material than the first brush (Par. 44 and 50). Further, it is disclosed that the mascara is not limited to the arrangement and embodiments discussed as disclosed in Par. 79. In addition, Torii does not disclose that the materials of each of the brushes are limited to the ones disclosed in Par. 44 and 50.
As such, it would have been obvious to someone skilled in the art to try to have the mascara of Torii and Miyame to have the first brush be a softer than the material of the second brush by having the first brush be comprised of the material taught by the second brush and vice versa.
Re. Claim 3, Torii and Miyame discloses the mascara according to claim 2, wherein Torii further discloses the material of the first brush includes an elastomer, and the material of the second brush includes polybutylene terephthalate (PBT) (Par. 44 and 50 whereas expressed earlier, the first brush would be made of the material of the second brush and vice versa. It is disclosed that the first brush was intended to be made of PBT in Par. 44 while the second brush was intended to be made of elastomer in Par. 50. With the modification made in claim 2, it would allow the first brush to be made of an elastomer and the second brush a PBT).
As such, it would have been obvious to someone skilled in the art to try to have the mascara of Torii and Miyame to have the plurality of second hairs are made of a material harder than that of the plurality of first hairs by having the first brush be comprised of the material taught by the second brush and vice versa.
Re. Claim 7, Torii and Miyame discloses the mascara according to claim 4, wherein Torii discloses an injection support (2f) is provided at the bottom portion of the base (Fig. 9a).
Re. Claim 8, Torii and Miyame discloses the mascara according to claim 7, wherein but is silent to Torii further discloses the first brush comprises an injection counterpart portion at a lower part of the first brush, the injection counterpart portion being shaped to surround the injection support of the base. Rather, Torii presents the second brush comprises an injection counterpart portion (3c) at a lower part of the second brush (Fig. 9B), the injection counterpart portion being shaped to surround the injection support of the base (Fig. 9B).
It would have been obvious to someone skilled in the art before the effective filing date to have the first brush of Torii and Miyame to comprise an injection counterpart portion at a lower part of the first brush, the injection counterpart portion being shaped to surround the injection support of the base as taught by Torii due to a design choice as to the means of further securement between the two elements.
Re. Claim 9, Torii and Miyame discloses the mascara according claim 1, wherein Torii further discloses an average diameter of each first hair of the plurality of first hairs is larger than an average diameter of each second hair of the plurality of second hairs (See Fig. 1-2 that shows the hairs diameter are larger for the first hair compared to the second hair). Torii further discloses the material of the brushes (Par. 44 and 50). It is found that Torii discloses the second brush having a softer material than the first brush (Par. 44 and 50). Further, it is disclosed that the mascara is not limited to the arrangement and embodiments discussed as disclosed in Par. 79. In addition, Torii does not disclose that the materials of each of the brushes are limited to the ones disclosed in Par. 44 and 50.
As such, it would have been obvious to someone skilled in the art to try to have the mascara of Torii and Miyame to have the plurality of second hairs are made of a material harder than that of the plurality of first hairs by having the first brush be comprised of the material taught by the second brush and vice versa.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torii (US 20100186766 A1) in view of Miyame (JP 6768310 B2, see machine translated ver) and Pires (US 20170164718 A1).
(first interpretation) Re. Claim 10, Torii and Miyame discloses the mascara according to claim 1, but are silent to further comprising a third brush extending in an upper direction which is a direction different from the first and second brushes, wherein the first brush and the third brush are integrally injection-molded.
Pires discloses a mascara in the same field of endeavor and further discloses a first brush (34a), a second brush (34b) and a third brush (see Fig. 2A where it is the tip of the mascara brush) extending in an upper direction which is a direction different from the first and second brushes (Fig. 2A), wherein the first brush and the third brush are integrally injection-molded (Claim 17).
It would have been obvious to someone skilled in the art before the effective filing date to have the mascara of Torii and Miyame to have a third brush extending in an upper direction which is a direction different from the first and second brushes, wherein the first brush and the third brush are integrally injection-molded to provide another means to apply cosmetic product.
Response to Arguments
Argument #1: Applicant argues that Torii does not suggest or disclose any integrated coupling structure between the two brushes as now claims. Applicant argues that Torii lacks any teaching of a mechanical retention from the base’s geometry and the interlocking injection-molded material. Applicant argues that Torii does not describe how the second brush is coupled or retained by a coupling member. Applicant argues that Torii does not teach a fixing clip and that Torii does not disclose a first brush’s material filling a cavity to encapsulate or lock the second brush’s coupling member. Further, applicant argues Torii does not disclose using injection-molding material from one brush to secure another.
Response #1: Applicant’s argument is found to not be persuasive. It should be noted that Torii is not relied upon to teach the fixing clip. Rather, Miyame is relied upon in regards to the particular limitation. Regarding the argument of Torii not disclosing the first brush’s material filling a cavity to encapsulate or lock the second brush’s coupling member through injection-molding, it is found to be a product by process step and because the structure has been met, burden is shifted to the applicant to point out an unobvious difference. As such, applicant’s argument is found to not be persuasive.
Argument #2: Applicant argues that Miyame’s clips is merely to hold bristles in their socket and is not a structural feature to lock an entire second brush assembly to the base. Further, applicant argues that Miymae does not suggest the second brush as a whole being secured in a base by a tapered opening and injected material from the first brush.
Response #2: Applicant’s argument is found to not be persuasive as currently claimed, it does not specifically claim the clip to lock to the base, nevertheless the entire second brush to the base. It solely requires a fixing clip to secure the hairs to a coupling member. As currently claimed, there is no limitation regarding the relation between the base and the fixing clip. Similarly, applicant does not claim the limitation regarding the second brush as a whole being secured in a base by a tapered opening and injected material from the first brush. Though applicant claims a fixing clip, an insertion opening with varying sized ends, and the first brush being injection molded, the claim does not teach the overall relation of each structure to one another. As such, because the claims solely states that the clip is used to fix the brush hairs and Miyame teaches such, the limitation is found to be met.
Conclusion
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/HOLLY T. TO/Examiner, Art Unit 3772
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772