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 .
Response to Arguments
Applicant’s arguments, see Remarks filed on 03/24/2026, have been considered persuasive. The Examiner withdraws the rejections presented in the previous Office Action, in light of Applicant’s arguments and clarifications. However, upon careful consideration the Examiner finds that the claims are not patentable over the prior art of record.
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 and 3-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a flexible membrane separate from the hub assembly and the two or more branches, wherein the flexible membrane comprises a stem connectable with the central opening in the hub assembly”; it is unclear how the flexible membrane can be separate from the hub assembly and the two or more branches and at the same time comprises a stem connectable with the central opening in the hub assembly; these limitations appear to contradict themselves.
Claim 10 recites “wherein the first and second materials are thermoplastics”; however, claim 9 from which claim 10 depends, recites “wherein the membrane is formed from a first material and wherein the branches are formed from a second material different than the first material”; it appears that claim 10 contradicts the limitations of claim 9.
Claims 3-9 and 11-18 are rejected by virtue of their dependency on claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4 and 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosario-Melendez (US 20180027943 A1) in view of Bickford (US 20120199158 A1).
Rosario-Melendez discloses an applicator for cosmetics (Figures 18-19 and Abstract) comprising: a hub assembly (30) comprising a central opening (75) and two or more branches (48) extending from the hub (30) in a distal direction, and wherein the branches define a cavity (40) between the branches (48); and a flexible membrane (17, note that the membrane is flexible since it is made of a flexible material, i.e. thermoplastic material [0106]) separate from the hub assembly and the two or more branches, wherein the flexible membrane (17) comprises a stem (30b) connectable with the central opening (75) in the hub assembly (30), such that at least a portion of the flexible membrane (17) is disposed in the cavity (40) between the branches (48) (See Figures 18-19 and [0179]), wherein the flexible membrane is shorter than the two or more branches (Figure 19). However, Rosario-Melendez fails to disclose “wherein the branches each comprise respective free ends at distal ends of the branches, wherein the respective free ends define a distal gap” and “such that a distal end portion of the flexible membrane extends up to but not into the distal gap, allowing the flexible membrane to flex relative to the branches”.
Bickford discloses an applicator for cosmetics (Abstract and Figure 6) comprising: a hub assembly (54) and two or more branches (30 and 40) extending from the hub (54) in a distal direction, wherein the branches each comprise respective free ends at distal ends of the branches (free ends described in claim 13; see Figure 6), wherein the respective free ends define a distal gap (as Shown in Figure 6), and wherein the branches define a cavity between the branches (space between the branches); (see Figures 6A-B and [0026]). Bickford further discloses and a flexible membrane (60) separate from the two or more branches (Figure 6). Therefore it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Rosario-Melendez’s branches to make them comprising respective free ends defining a distal gap, as taught by Bickford, since such modification would make the applicator more adapted to flex to permit the applicator to pass through the wiper of a container ([0026]).
The Examiner notes that the applicator created by the combination above, has all the necessary structures to be configured such that a distal end portion of the flexible membrane extends up to but not into the distal gap (since the membrane is shorter than the branches, as taught by Rosario-Melendez), allowing the flexible membrane to flex relative to the branches.
Regarding claim 3, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein proximal ends of the two or more branches (48) connect with the hub (30) and define a first width, wherein the two or more branches define a second width at a middle portion of the branches, and wherein the two or more branches define a third width at the distal ends of the branches and wherein the second width is larger than the first and second widths (Annotated Figure 18, below).
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Regarding claim 4, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses further comprising a container including a wiping orifice with an opening larger than the first width and smaller than the second width, wherein, when the applicator is drawn through the wiping orifice (since the applicator is intended to be used with these claimed elements, see [0157]), the two or more branches are deflected so that the free ends contact one another (the device as combined above has flexible branches that have all the necessary structures to be configured to be capable of deflecting so that the free ends contact one another).
Regarding claim 7, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein the proximal end of the membrane defines a first width, wherein a middle portion of membrane defines a second width, wherein the distal end of the membrane defines a third width, and wherein the second width is different than the first and third widths (Annotated Figure 19 below).
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Regarding claim 8, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein the proximal end of the membrane defines a first thickness, wherein a middle portion of membrane defines a second thickness, wherein the distal end of the membrane defines a third thickness, and wherein the second thickness is different than the first and third thicknesses (Annotated Figure 18 below).
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Regarding claim 9, Rosario-Melendez and Bickford, as combined above, fail to disclose “wherein the membrane is formed from a first material and wherein the branches are formed from a second material different than the first material”.
Bickford discloses wherein the membrane is formed from a first material and wherein the branches are formed from a second material different than the first material (since the applicator could be made from different suitable materials, e.g. polymer or rubber, including thermoplastic, etc. made by co-injection molding [0029]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Rosario-Melendez/Bickford’s applicator to make the membrane of a different material than the branches, for instance in a co-injection molding process, since such modification would allow suitable materials to have sufficient outward bias to return to the expanded configuration and sufficient inward flexibility to be drawn through a relatively smaller wiper opening for multiple cycles typical during the useful life of the cosmetic applicator (Bickford: [0029]).
Regarding claim 10, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Bickford discloses wherein the branches, the hub, and the membrane are formed by co-injection molding ([0029]).
Regarding claim 11, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Bickford discloses wherein the first and second materials are formed by injection molding ([0029]).
Regarding claim 12, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein the central opening (75) is between proximal ends of the branches (48) (see Figure 18).
Regarding claim 13, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Bickford discloses wherein the branches, the hub, and the membrane are formed by co-injection molding ([0029]).
Regarding claim 14, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses further comprising flocking along at least a portion of one or more of the branches and the membrane (Figure 18 and [0073] and [0183]).
Note regarding claim 15: the claim includes phrase “the flocking is applied to the membrane before the stem is inserted into the central opening” implying a product-by process claim. Therefore, the end product will be given patentable weight. MPEP 2113.
“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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)…”.
“Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)…”.
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)…”.
Regarding claim 15, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses further comprising flocking (Figure 18 and [0073] and [0183]), wherein the flocking is applied to the membrane before the stem is inserted into the central opening.
Regarding claim 16, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein the two or more branches comprise two branches (48, Figure 18).
Regarding claim 17, Rosario-Melendez and Bickford discloses the invention substantially as claimed. Rosario-Melendez discloses wherein at least a portion of the membrane (17) is positioned between the two branches (Figure 19).
Claim(s) 5 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosario-Melendez in view of Bickford, further in view of Sanchez (WO 2016051072 A1); see the translation attached to the Office Action filed on 05/06/2025.
Regarding claim 5, Rosario-Melendez and Bickford discloses comprising a longitudinal axis (e.g. the vertical axis), but fail to disclose “wherein proximal ends of the two or more branches extend from the hub parallel with the longitudinal axis and wherein the two or more branches bend away from the longitudinal axis at a selected angle as the two or more branches extend in the distal direction”.
Sanchez discloses an applicator for cosmetics (Abstract and Figure 1) comprising: a hub assembly (100) comprising two or more branches (13 and 14) extending from the hub in a distal direction, and wherein the branches define a cavity (12) between the branches; and a flexible membrane (16; see that it is a flexible cosmetic applicator in the Abstract), wherein the flexible membrane comprises a stem connectable with the central opening in the hub assembly (Figure 21), such that at least a portion of the flexible membrane is disposed in the cavity between the branches (Figures 1-9 and Abstract). Sanchez discloses comprising a longitudinal axis (e.g. the vertical axis), wherein proximal ends of the two or more branches extend from the hub parallel with the longitudinal axis and wherein the two or more branches bend away from the longitudinal axis at a selected angle as the two or more branches extend in the distal direction (see e.g. Figure 2 or 7). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Rosario-Melendez/Bickford’s branches to make their proximal ends extending from the hub parallel with the longitudinal axis and wherein the two or more branches bend away from the longitudinal axis at a selected angle as the two or more branches extend in the distal direction, as taught by Sanchez, since such modification would be a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed applicator was significant (MPEP 2144); note that Sanchez discloses that the applicator could have different shapes (page 3 and Figures 1-9).
Regarding claim 18, Rosario-Melendez and Bickford fail to disclose “wherein the two branches define a plane and wherein the membrane further comprises a middle portion that extends out of the plane”.
Sanchez discloses wherein the two branches define a plane and wherein the membrane further comprises a middle portion that extends out of the plane (as shown in Figure 1, the branches 13 and 14 are in a common plane above the membrane 16, which lies in a plane below the branches). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Rosario-Melendez/Bickford’s branches and membrane to make the two branches defining a plane and the membrane comprises a middle portion that extends out of the plane, as taught by Sanchez, since such modification would be a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed applicator was significant (MPEP 2144); note that Sanchez discloses that the applicator could have different shapes (page 3 and Figures 1-9).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosario-Melendez in view of Bickford, further in view of Sanchez, further in view of Sanchez (US 20230240429 A1); hereafter Sanchez-429.
Regarding claim 6, Rosario-Melendez, Bickford and Sanchez fail to disclose “wherein the selected angle is between about 0 degrees and about 10.5 degrees”.
Sanchez-429 discloses an applicator for cosmetics (Abstract and Figure 1) comprising: a hub (18); two or more branches (31 and 32) extending from the hub in a distal direction, wherein the branches define a cavity (cavity 33, Figure 1); and a membrane (30) connected with one or more of the hub (18) or the two or more branches and the hub, wherein the membrane extends into the cavity (33), wherein at least a portion of the membrane is disposed between the branches (Figure 1 and [0059]-[0060]). Sanchez-429 discloses the applicator comprising a longitudinal axis (e.g. the vertical axis), wherein proximal ends of the two or more branches extend from the hub parallel with the longitudinal axis and wherein the two or more branches bend away from the longitudinal axis at a selected angle as the two or more branches extend in the distal direction ([0043]); wherein the selected angle is between about 0 degrees and about 10.5 degrees (since the angle could be between 10 and 40 degrees with respect to the longitudinal axis [0044]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Rosario-Melendez/Bickford/Sanchez’s selected angle of the two or more branches extending in the distal direction, to make it of 10 degrees, since such modification would allow a user to easily make use of the edge face of the applicator to spread the product ([0019]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS MIGUEL RUIZ MARTIN whose telephone number is (571)270-0839. The examiner can normally be reached M-F 8 Am - 5 PM (EST).
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, 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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/LUIS RUIZ MARTIN/
Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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