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 .
Priority
Acknowledgement is made of applicant’s claim for priority under 35 U.S.C. 119 (e) with reference to Provisional Application Number: 63/273771 filed on 10/29/21.
Election/Restrictions
Applicant’s election without traverse of Invention I, Species I in the reply filed on 9/12/25 is acknowledged.
Claim(s) 3 and 16-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/12/25.
Specification
The disclosure is objected to because of the following informalities:
The disclosure repeatedly recites “as is depicted by element” throughout the disclosure; however, the appropriate way to denote reference characters in a disclosure is with the reference character following the name of element. For example, instead of reciting “for instance as is depicted here at element 302, a twisting pump or plunger”, it should read “a twisting pump/plunger 302”.
Appropriate correction is required.
Drawings
Figure 1 is objected to because the disclosure states that “102” identifies a “right lateral wall” and “103” identifies a “left lateral wall”; however, the lines for these brackets appear to point to the same singular wall making it unclear what walls these are supposed to delineate. It is respectfully suggested, applicant use arrows instead of brackets to identify the walls to resolve this issue.
Figures 1-7 are objected to for failing to comply with 37 C.F.R. 1.84(p)(4), which requires the same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts. In this case, reference character 101, 201, 201A, 201B, 304, 404, 559, 630, 652 are all used to identify the “sliding door”; 301, 401, 507, 601, 626, 726, 701 are all used to identify the “pump cap”; 302, 402, 502, 627, 702, 727 are all used to identify the “pump”; 307, 506, 602, 651, 728, 751 are all used to identify the “applicator cap”; 205, 305, 405, 505, 733, 706, 758 are all used to identify the “cosmetic material transfer compartment/storage compartment”; 302, 402, 502, 727 have all been used to identify the “pump actuator”; 303, 403, 707, “applicator storage recess”; 555, 757, 705, 731 all identify the “valve”; 306, 406, 629, 703 have all been used to identify the “applicator”. The different figures do not illustrate any “variants” of the device, but instead simply show different views of the same device. So the same reference numbers need to be used consistently throughout the figures to refer to the same elements.
Figures 7A-7B are objected to for failing to comply with 37 C.F.R. 1.84(p)(5), which requires reference characters not mentioned in the description not appear in the drawings and reference characters mentioned in the description must appear in the drawings. In this case, reference character 704, Fig 7A; 730, Fig 7B are missing from the disclosure.
Figures 7A and 7C are objected to because all the dashed lines make the figure hard to understand.
Figures 2 and 4-5 are objected to for containing extraneous matter in the form of text.
Figure 4A is objected to because it is unclear what “407A” is supposed to be identifying in the figure.
Figure 4b is objected to because it is unclear what “407B” is supposed to be identifying in the figure.
Figure 6B is objected to for using the same number “626” to identify two different structures in the figure.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “container in the reservoir” of claim 9, “posterior end of the body which is wider than an anterior end of the body” of claim 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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) 1-2 and 4-15 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 1: line 3 recites “a storage recess formed into the body”, it is unclear what this should mean. For examination purposes, the claim will be treated as reciting “a storage recess formed in the body”. Line 6, 13, and 14-15 each recites “the first compartment of the storage recess”; however, line 4 recites “a first compartment forming a cosmetic storage recess” so lines 6, 13, and 14-15 should all refer back to “the cosmetic storage recess” to be consistent. This same issue appears in line 5 with “a second compartment forming an applicator storage recess” and then in lines 20, 21, and 23-25 the claim recites “the second compartment of the storage recess” when it should recite “the applicator storage recess” for consistency. Lines 23-25 are confusing for repeating limitations that are already recited in the preceding lines. For examination purposes, the claim will be treated as omitting “to be stored within the applicator storage recess and sealed within the cosmetic applicator kit by the application cap and wherein the cosmetic applicator is further configured”. Lines 27-30 repeat limitations already presented in lines 9-12 of claim 1, making it unclear what structure this is supposed to add to the claim. For examination purposes, the claim will be treated as omitting these lines because the limitations are already present in lines 9-12. Line 33-34 recites “cosmetic material from the cosmetic storage reservoir to the applicator brush head via the valve”; however, the valve does not transfer the cosmetic to the brush, the valve simply transfers cosmetic from the reservoir to the cosmetic material transfer compartment and insertion of the brush into the compartment applies cosmetic to the brush. This functional language is unclear because it is unclear if applicant is trying to claim some particular type of valve or valve feature that would result in the valve itself applying cosmetic to the brush. For examination purposes, the claim will be treated as omitting “via the valve”.
Claim 5: recites “the one way valve” without antecedent basis. The language “mitigates risk” is also unclear because it is unclear what structure if any this language should add to the claim. The series of functional recitations in this claim after “one way valve” appear to be simply statements of what a one-way valve already does so the language is confusing and unnecessary. For examination purposes, the claim will be treated as reciting “wherein the valve is a one way valve”. Clarification or correction is requested.
Claim 6: this claim recites “comprising an orifice affixed to the cosmetic material transfer compartment which at least partially seals the cosmetic material transfer compartment and permits insertion and removal”; however, the term “orifice” by definition is “an opening” and an opening is not “affixed” to something because it is by definition an absence of material. Additionally, an “opening” cannot “seal” anything as an opening is an absence of material which by definition does not seal things. It is unclear what exactly applicant is trying to claim. For examination purposes, the claim will be treated as reciting “comprising an orifice which permits insertion and removal”. Clarification or correction is requested.
Claims 7, 9, 12-13, and 15: each of these claims appears to attempt to add method steps into device claims, which is improper for attempting to cross statutory categories. Attempting to incorporate methods of use and/or methods of manufacturing within the device claims is improper and makes the metes and bounds of these claims unclear because it is unclear what additional structure, if any, these functional and method limitations are supposed to add to the device.
Claim 7: recites “the applicator brush head is to receive the cosmetic material to be applied comprises”, but this language does not make sense or appear to be in proper idiomatic English. Also, as discussed above, this claim appears to add a series of method of use steps rather than any structural limitations, which is improper. This claim also recites “a recipient”, but claim 1 already recites “a recipient” (line 8) and “the recipient” (line 18), so is this the same or a different recipient. Clarification or correction is requested.
Claim 8: recites “the leftmost lateral side of the applicator kit”; however, no sides of the kit are set forth. Instead, claim 1 sets forth “a body”, but this claim does not recite a side of the body making the metes and bounds of the claim unclear. Additionally, this claim recites “right and left lateral walls of the body” in line 6-7 so is this the “leftmost lateral side” in line 2 or another side? The last lines of this claim also recite “wherein the side door spans lateral to the applicator storage recess”; however, the term “spans lateral” does not make sense. This claim recites “the reservoir portion” without antecedent basis. Clarification or correction is requested.
Claim 9: this claim recites a series of different manufacturing options; however, it is unclear what structure these method steps are supposed to require that add limitations to the kit of claim 1 because it appears every option would result in the same end product. Clarification or correction is requested.
Claim 10: this claim recites “wherein the actuator creates a channel”; however, this language does not make sense. While applicant can claim the presence of a channel or an actuator positioned inside of a channel, an actuator cannot “create” a channel or another structure. This language is confusing. This claim also recites “wherein the actuator is comprised of a one-way valve”; however, it appears this is the “valve” already required by claim 1 and not a separate different one way valve. This makes the metes and bounds of the claims unclear; applicant is respectfully reminded to use one term consistently throughout the claims to refer to a single feature. This claim recites “the receiving compartment” without antecedent basis. Clarification or correction is requested.
Claim 11: recites “a free-standing design” and “an ergonomically contoured design”; however, it is unclear what actual structure these limitations are supposed to require. Anything that sits on a surface can be considered a “free-standing design” and any curve could be considered an “ergonomic contour” so what structure should this language include and exclude? Furthermore, the claim recites “a liquid compatible cosmetic storage reservoir”, “a semi-liquid compatible cosmetic storage reservoir”, “a malleable semi-solid compatible cosmetic storage reservoir”, “a medicinal compound compatible cosmetic storage reservoir”, “a therapeutic preparation compatible cosmetic storage reservoir”; however, how many reservoirs is applicant attempting to claim? There is no support for the device to have five or more different reservoirs as this wording appears to attempt to set forth. Furthermore, claim 1 already requires a reservoir so are any of these the same reservoir in claim 1 or is claim 11 requiring these reservoirs in addition to the reservoir of claim 1? For examination purposes, the claim will be treated as reciting “wherein the cosmetic material stored in the cosmetic storage reservoir is a liquid, a semi-liquid, a semi-solid, a medicinal, or a therapeutic compound”. Clarification or correction is requested.
Claim 12: recites “wherein the cosmetic material to be applied is manufactured for single use”; however, this language is confusing and unclear because what structure does this imply? Furthermore, all the language that follows this phrase appears to be a method of assembling or manufacturing, which is inappropriate and does not add any structural requirements to the claim. The claims are device claims, and cannot cross statutory categories as this is inappropriate. Clarification or correction is requested.
Claim 13: recites “wherein the cosmetic applicator kit is manufactured with the first compartment configured as a cosmetic storage recess capable of holding a plurality of cosmetic storage reservoirs”. It is unclear what “manufactured” is supposed to mean in this context. This claim is also unclear because it recites “a cosmetic storage recess”, but claim 1 already sets forth “a cosmetic storage recess” so are these the same or different? Additionally “a plurality of cosmetic storage reservoirs” is unclear because claim 1 already sets forth “a cosmetic storage reservoir” so is this requiring a plurality in addition to the one in claim 1 or is the one in claim 1 part of the plurality? For examination purposes, the claim will be treated as reciting “wherein the cosmetic storage recess is capable of holding a plurality of the cosmetic storage reservoirs”. Clarification or correction is requested.
Claim 15: recites “an end user” in the last lines, but claim 1 requires “a recipient” so are these the same or different? It is also unclear what structure is required by “configurable to be accessible…for cleaning after use” is supposed to require or mean. Clarification or correction is requested.
Claim Rejections - 35 USC § 102
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 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) 1-2, 6-9, 11-15, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Landsman (US 4056110).
Claims 1 and 12: Landsman discloses a cosmetic applicator kit (see Fig 1) comprising: a body including a storage recess (interior of 15) formed in the body and having a first compartment forming a cosmetic storage recess housing a cosmetic storage reservoir (10) of cosmetic paste (Col 1, 1-15) and a second compartment forming an applicator storage recess and housing a cosmetic applicator (see annotations). The cosmetic applicator comprising an applicator brush head (28) extending from an applicator body (see annotations) and including an applicator cap and the applicator brush head receives the cosmetic paste material (see Fig 2). A series of actuators including at least one having a top portion above the cosmetic storage reservoir (see annotations) and the top portion of the actuator helps initiate transport of the cosmetic material from the cosmetic storage reservoir through a valve (see annotations) and into a cosmetic material transfer compartment (see annotations); and an actuator cap (see annotations) positioned over a topmost end of the cosmetic storage recess to seal the cosmetic storage reservoir within the cosmetic storage recess (see annotations). The applicator cap is configured to be positioned over a topmost end of the storage recess to seal the cosmetic applicator within the applicator storage recess (see annotations) and the cosmetic applicator is configured to be removed from the applicator storage recess via opening of the applicator cap when in use (see annotations). The cosmetic material transfer compartment receives the applicator brush head, and in this compartment, the cosmetic material is transferred from the cosmetic storage reservoir to the applicator brush head (see annotations). A side door is adjacent the cosmetic material transfer compartment (see annotations) and this door opens to provide access to the cosmetic material transfer compartment and closes to seal the cosmetic material transfer compartment (see annotations).
Claim 2: The actuator (30) comprises a plunger (40+22) activated via a twist motion (to 30) to induce a mechanical pushing force to the reservoir to press the cosmetic material out of the reservoir and into the transfer compartment through the valve (see annotations & Figs 1-8).
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Claim 6: the cosmetic material transfer compartment includes an orifice or opening and permits insertion and removal of the brush head from the transfer compartment (see Fig 2 & annotations).
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Claim 7: the device can be used as described in the outlined method steps because the claims are drawn to a device and not a method of using and the device is capable of being used as described because the caps can be removed or opened, the applicator can be removed from its recess and carry the cosmetic and the cosmetic can be transferred to a person’s teeth which is part of their body.
Claim 8: the cosmetic storage reservoir is located on a leftmost lateral side of the kit; the applicator storage recess is located to the right of the reservoir; the cosmetic material transfer compartment is located below the cosmetic reservoir within the cosmetic storage recess and it is below the applicator storage recess; right and left lateral edges of the side door rest in channels within right and left lateral walls of the body (see annotations) and the side door moves up and down into the channels and the side door spans laterally across a width of the applicator storage recess and the cosmetic material transfer compartment (see annotations).
Claim 9: Regarding the “wherein the cosmetic storage reservoir is manufactured…”, the applicant is advised that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In this case, the cited limitations failed to distinguish the claimed structure from the patented apparatus of Landsman. See MPEP § 2113. The end product is the same, a kit with a reservoir of cosmetic therein, which is disclosed by Landsman.
Claim 11: the kit is a “free-standing design” configured to permit the kit to stand upon an end of the body (bottom in Figure 2) and this end is wider than another (sides of Figure 2).
Claim 13: the cosmetic storage recess can hold additional reservoirs since this depends on the size of the reservoir, so it is “capable” of holding a plurality of reservoirs since the reservoir can be replaced.
Claim 14: the components are formed separately and joined together to form the kit (see Figs 1-2).
Claim 15: nothing precludes the device from being cleaned if a user so desired so as best understood Landsman discloses these limitations.
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, 4-5, and 10, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Thiebaut (US 6694987) in view of Gueret (US 6634821).
Claims 1, 4-5, and 10: Thiebaut discloses a cosmetic applicator kit (see Fig 2A) comprising a body including a compartment forming an applicator storage recess (11) and a cosmetic applicator is received in the applicator storage recess (see Fig 2A). The applicator includes an applicator brush head (24) extending from an applicator body (25) carried by applicator cap (23+20) with the applicator cap configured to be positioned over a topmost end of the applicator storage recess to seal the applicator within the applicator storage recess (see Fig 2A). The applicator can be removed from the applicator storage recess via the applicator cap (see Fig 1) and coated in cosmetic using a cosmetic material transfer compartment (4) located below the applicator storage recess (see Figs 1-2). The cosmetic material transfer compartment receives the applicator brush head to transfer a portion of the cosmetic material to the applicator brush head. A side door (9) is located adjacent to the cosmetic material transfer compartment (see Fig 1) and the side door opens to provide access to the cosmetic material transfer compartment and to close the transfer compartment sealing the cosmetic material inside (see Figs 1-2).
Thiebaut discloses the invention essentially as claimed except for a cosmetic storage reservoir having a pump and valve and positioned within a cosmetic storage recess of the body for supplying additional cosmetic to the cosmetic material transfer compartment as needed.
Gueret, however, teaches a cosmetic applicator kit (see Fig 2) including an applicator joined to an applicator cap (38). The applicator and its cap are removably joined to a cosmetic material transfer compartment (39) and the transfer compartment sits below a cosmetic storage recess (bottom interior of 34). The cosmetic storage recess carries a sealed reservoir (20) of the cosmetic material (P) and a dispensing end of the reservoir carries a pump and a one-way valve combination (28 & 29) which constitute an actuator, as well, as a cap or cover over the actuator (center horizontal wall of 34) such that the cosmetic material travels from the reservoir through the valve and into the cosmetic material transfer compartment. Gueret teaches this arrangement is useful for protecting the cosmetic contents between uses (Col 1, 30-50). 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 kit of Thiebaut by providing it with a cosmetic storage recess carrying a reservoir of the cosmetic and the pump and valve combination as taught by Gueret in order to provide a sealed supply of the cosmetic material thereby protecting the cosmetic between uses.
The proposed modification is to provide an additional recess/compartment in the body (2) adjacent to the cosmetic material transfer compartment for supplying the cosmetic material transfer compartment with cosmetic. So this would result in an actuator with the actuator cap and the one way valve and pump combination of Gueret located in the body.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Gill whose telephone number is (571)270-1797. The examiner can normally be reached on Monday-Friday 10:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, can be reached on 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772