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 .
Election/Restrictions
Applicant’s election without traverse of Species I in the reply filed on 9/12/25 is acknowledged.
Claim(s) 2-3 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/12/25.
Drawings
The drawings were received on 10/11/22 and are objected to.
Figures 1-2, 4-6, and 8 is/are objected to under 37 CFR 1.84 (m) because the figures contain shading, which fails to aid in understanding the invention and/or reduces legibility. Shading may be used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object; flat parts may also be lightly shaded, but such shading is preferred in the case of parts shown in perspective, not for cross sections. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color. In the instant case, these figures all contain vertical lines, but are not cross-sectional views. These type of lines are generally used to indicate a mirrored surface, but there is no mirror disclosed making it unclear what applicant is trying to illustrate (see annotations).
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Figures 1-8 are objected to for containing extraneous matter in the form of a customer number and what appears to be a docket number at the top of each page of the figures, which is improper (see annotations). This text should be removed.
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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 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: the language “may be” is unclear because is the claim requiring the limitations that follow this phrase or not? This claim recites “said fluid” without antecedent basis. This claim also recites “a viscous cosmetic” in the first line and the last line so are these the same or different? For examination purposes, the claim will be treated as reciting “a fluid” and “the viscous cosmetic”. The last clause of this claim recites “wherein an anhydrous pigment tablet placed in said vessel may be mixed with said fluid, which is dispensed into said vessel from said container through said valve, to make a viscous cosmetic to be applied with said cosmetic applicator”; however, this appears to be claiming a method of use or an intended use of the device rather than any actual structure which is confusing and unclear because does the container or vessel need some particular structure to accomplish this function? 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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roh (US 20190082810).
Regarding the claimed limitation “wherein an anhydrous pigment tablet placed in said vessel may be mixed with said fluid, which is dispensed into said vessel from said container through said valve, to make a viscous cosmetic to be applied with said cosmetic applicator” as recited in the last lines of claim 1, the applicant is advised that a recitation of the intended use of an 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. In this case, the patented structure of Roh was considered capable of performing the cited intended use.
Claim 1: Roh discloses an apparatus that can be used “for mixing and dispensing a viscous cosmetic”, the apparatus comprising: a container (46) having a valve (see annotations), the container is fixed to a cosmetic applicator (38); and a vessel (4) removably engaged with the container (see Figs 1-4); and if a person wanted to put an anhydrous pigment tablet in said vessel, it could be mixed with said fluid, and dispensed into said vessel from said container through said valve, if so desired or it can be dispensed through another valve (62), to make a viscous cosmetic to be applied with the cosmetic applicator (see Figs 1-4).
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