DETAILED ACTION
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.
Claim(s) 5 is/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 pre-AIA the applicant regards as the invention.
Claim 5: this claim indirectly depends from claim 1 and claim 1 was amended to require “a thickness of the flexible material is 0.6 mm”; however, then claim 5 goes on to require “including a thickness with sufficient strength to allow a user to shape lashes against…the shield”. It is unclear what this language is supposed to imply structurally in the claim. Is applicant claiming some kind of texture or a different thickness than the 0.6mm set forth in claim 1? What thickness does “a thickness with sufficient strength to allow a user to shape lashes” mean? Clarification or correction is requested.
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 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 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haman (US 20120266911) in view of Dunaway (US 20130146076).
Claim 1: Haman discloses a disposable mascara shield (50, Fig 5), since anything can be disposed of when someone chooses to, comprising: a flexible silicone rubber or similar material [0008] including a top flat edged portion (see annotations) and a double rounded bottom portion (see annotations) adjacent the top portion with two curved side edges connecting the top and bottom portions and the side edges form a boundary of the shield (see Fig 5). The two curved edges (see annotations) taper to only narrow from the double rounded portion until the top flat edged portion (see annotations). The double rounded portion forms a concave shape to fit over a user’s eyelid (see Fig 5). The exterior boundary of the shield includes a flat smooth [0008] top surface area (top surface of 54) and a flat smooth bottom surface area (bottom surface of bottom of shield) viewed vertically up.
Haman discloses the invention essentially as claimed except for a specific thickness of the shield being 0.60mm; it is noted that applicant’s own disclosure does not indicate this thickness is required and instead states the thickness can “preferably range from 0.45-0.6 mm” [0017] with no criticality given to this thickness nor the newly claimed specific value of 0.6mm. Dunaway, however, teaches a mascara shield [0008 & 0025] that can have a uniform thickness along its length [0033] or a tapered thickness [0033] with the thickness ranging from 1/64-1/4 inch, or 0.4-6.35mm [0033]. In other words, Dunaway teaches that it is old and well-known to provide mascara/makeup shields with thickness ranging from 0.4-6.35mm, including 0.6mm.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the shield of Haman by providing it with a thickness of 0.4-6.35mm, and specifically a thickness of 0.6mm, in view of Dunaway since Dunaway teaches this to be an obvious matter of design choice known in the art. Alternately, or additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the shield with a 0.6mm thickness, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Claim 4: the double rounded bottom portion is made of the same silicone rubber [0008] as the rest of the shield so it is bendable to adjust to a user’s eyelid.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamilton (GB 2462616) in view of Haman (US 20120266911) and Dunaway (US 20130146076).
Claims 1-2: Hamilton discloses a disposable mascara shield (see Fig 1) comprising a flexible tissue paper material (see abstract) including a top portion (lower half of shield of Fig 1; note “top” is relative to the chosen orientation of the device) and a double rounded bottom portion (top half of shield of Fig 1) adjacent to the top portion, the top portion and the double rounded bottom portion are connected by two curved side edges that taper from the double rounded portion until the flat top edged portion and form a boundary of the shield and the double rounded bottom portion (top half of shield of Fig 1) forms a concave shape to fit over a user’s eyelid (see Fig 1). The top portion includes a flat edge (see Figs 1 & 2) that a user can grasp it if so desired.
Hamilton discloses the invention essentially as claimed except for the two curved edges narrowing only from the double rounded portion to the flat edged portion. Haman, however, teaches a series of different disposable mascara shields (see Figs 4-8) having different shapes including a double rounded portion (see Figs 4-5 & 7-8) connected to a flat edged portion (52, Fig 5) by two curved tapering edges (see Fig 5) and in some embodiments the curved tapering edges only narrow from the flat edged portion to the double rounded portion (see Fig 5), while in other embodiments the curved tapering edges can narrow and then widen when approaching the opposite end of the shield (see Figs 3-4 & 7). Haman also teaches making mascara shields of silicone rubber [0041]. In other words, Haman teaches that it is an obvious matter of design choice to provide the curved edges of a mascara shield to taper and narrow only from one end of the shield to the other or to provide the curved edges of the mascara shield to taper and narrow and then widen again from end to the other. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the mascara shield of Hamilton by providing the curved edges to only cause the shield to narrow from the flat edged portion to the double rounded portion in view of Haman since Haman teaches this an obvious matter of design choice in view of Haman to increase comfort during use.
Modified Hamilton discloses the invention essentially as claimed except for a specific thickness of the shield being 0.60mm; it is noted that applicant’s own disclosure does not indicate this thickness is required and instead states the thickness can “preferably range from 0.45-0.6 mm” [0017]. Dunaway, however, teaches a mascara shield [0008 & 0025] that can have a uniform thickness along its length [0033] or a tapered thickness [0033] with the thickness ranging from 1/64-1/4 inch, or 0.4-6.35mm [0033]. In other words, Dunaway teaches that it is old and well-known to provide mascara/makeup shields with thickness ranging from 0.4-6.35mm.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the shield of modified Hamilton by providing it with a thickness of 0.4-6.35mm, and specifically 0.6mm, in view of Dunaway since Dunaway teaches this to be an obvious matter of design choice known in the art. Alternately, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the shield with a 0.6mm thickness, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Claim 4: Modified Hamilton discloses the invention of claim 1 and Hamilton further discloses the shield is made of tissue (see abstract), which is known to be bendable.
Claim 5: Modified Hamilton discloses the invention of claim 2 and Hamilton further discloses the shield is described as being made of multiple layers of tissue bonded together (see abstract), so it is interpreted to “include a thickness with sufficient strength to allow a user to shape lashes against the shield”.
Response to Arguments
Applicant’s arguments filed 6/20/25 have been considered but are moot because they are all drawn to the newly presented claim limitations, which have been addressed above with a modified ground of rejection.
Conclusion
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.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772