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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “flexing mechanism” in claim 52.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the corresponding structure of the “flexing mechanism” appears to be a reduction in diameter of the stem, as described on Page 15 of applicant’s specification and as depicted in Figure 9 of applicant’s disclosure.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 43-48, and 50-52 are rejected under 35 U.S.C. 103 as being unpatentable over Gueret ‘926 (US2004/0240926) in view of Gueret ‘299 (US2010/0294299).
Regarding claim 43, Gueret ‘926 discloses a package (1, best shown in Figure 1) comprising:
a mascara brush (5) including bristles (11 and/or 12), wherein the bristles have a solid round (refer to Figures 10, 38, 40, 43, and 47-48; additionally refer to Paragraph [0023]) or solid oval (refer to Figure 43) cross section with a diameter of 6 mil (“the bristles may have a diameter from about 5/100 millimeters to about 40/100 millimeters”, refer to Paragraph [0025], which equates to ~1.97mil~15.75 mil, which overlaps and fully encompasses the claimed value of 6 mil); a twisted wire core (10) holding the bristles (“The…bristles…are held…by being clamped between twisted strands of the core”, refer to Paragraph [0117]; additionally refer to Figure 2), the twisted wire core includes from 11 to 13 bristles per turn (“the brush may include from about five bristles per turn of the twisted core to about 80 bristles per turn of the twisted core”, refer to Paragraph [0020], wherein the range of 5 to 80 overlaps and fully encompasses the claimed range); and the brush has an average brush diameter between 7.4mm to 8.2mm (“the length of the bristles from the core to their free ends may, for example, range from about 1 millimeter to about 7 millimeters”, refer to Paragraph [0026], and “the envelope surface may define a cross-section that is…circular”, refer to Paragraph [0028], and “the core may be centered in a cross-section”, refer to Paragraph [0028] and “the envelope surface may be…substantially constant”, refer to Paragraph [0030]; thus, providing a brush having an envelope surface having a substantially circular cross-section with bristle lengths from about 1mm to about 7mm provides a brush having an average diameter of anywhere from about 2mm to about 14mm, which overlaps and fully encompasses the claimed range);
a stem (4, Figure 1) connected to one end (a top end, refer to Figure 1) of the mascara brush;
a cap (6, Figure 1) connected to a second end (top end of the stem, refer to Figure 1) of the stem;
a container (2, Figure 1) including mascara (P, Figure 1; additionally refer to Paragraph [0113]); and
a wiper (8, Figure 1) in an interior of the container (“fixed inside the neck 7”, refer to Paragraph [0114] and Figure 1). Additionally refer to Figures 1-49.
Gueret ‘926 does not disclose wherein the wiper has an orifice size of between 4.75mm and 5.1mm. Rather, Gueret ‘926 is silent to the specific size of the wiper orifice but does however disclose that diameter of the wiper orifice may be “substantially equal to that of the stem” (refer to Paragraph [0114]).
Gueret ‘299 discloses a similar package (10, Figure 1) containing a cosmetic material (P, Figure 1), comprising a brush (8) with twisted wire core (40), disposed within a container (2), wherein the container further comprises a wiper (20) with an orifice of circular section and, similar to Gueret ‘926, has “a diameter that corresponds substantially to the diameter of the stem” (refer to Paragraph [0004]) with the diameter of the orifice having a diameter in the range of 2.5mm to 5.5mm (refer to Paragraph [0019]), which overlaps and fully encompasses the claimed range of 4.75mm to 5.1mm. Gueret ‘299’s wiper is sized to be “adapted to the diameter of the stem” (refer to Paragraph [0101]) such that the cosmetic material is smoothed about the brush (refer to Paragraph [0005]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gueret ‘926’s package such that the wiper has an orifice sized to be within the claimed range, as taught by Gueret ‘299, since such a modification provides the advantage of smoothing the cosmetic material about a length of the brush.
Regarding claim 44, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the bristles include rounded ends (the bristles may optionally be “subjected to treatment seeking to impart special properties to the free ends of the bristles…for example, in order to form a ball-shaped portion 61”; refer to Gueret ‘926 Paragraph [0138] and Gueret ‘926 Figure 45).
Regarding claim 45, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses the package of claim 43, wherein the bristles include straight ends (refer to Gueret ‘926 Figures 47-48 which are described as “exemplary” bristles, refer to Paragraph [0137]).
Regarding claim 46, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the bristles include crimps along the length of the bristle (Merriam-Webster defines crimp as “to cause to become wavy, bent, or pinched”; referring to Gueret ‘926 Figures 2, 5-9, and 12 are exemplary bristles of the mascara brush and are depicted as having waves/bends/crimps).
Regarding claim 47, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the wire has a diameter of 0.5 mm to 0.9 mm (“the diameter of the metal strands may range from about 0.3 millimeters to about 0.9 millimeters”, refer to Paragraph [0142]).
Regarding claim 48, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the brush
has an envelope shape that may be selected from a number of configurations (refer to Gueret ‘926, Paragraph [0129]), including an envelope shape selected from a cylindrical portion with a frustoconical portion (refer to Figures 18, 21, and 37), two frustoconical portions (refer to Figure 34), a single frustoconical portion (refer to Figures 18, 21, 37), a single cylindrical portion (refer to Figure 37), an ovoid (refer to Figure 26), and a cylindrical portion with helical cuts. Additionally refer to Paragraph [0028].
Regarding claim 50, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the brush has a cross-sectional shape of a circle (“the envelope surface may define a cross-section that is…circular”, refer to Paragraph [0028]).
Regarding claim 51, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. Gueret ‘926 further discloses wherein the brush has an envelope that may be selected from a number of polygonal shapes including triangular, square, pentagonal, heptagonal, or octagonal (refer to Gueret ‘926, Paragraph [0129] and Figures 22-25, 29-33), wherein the envelope shape defines the cross-section of the brush and polygonal shapes by definition include straight sides. Thus, the combination discloses that the brush has a cross-sectional shape including straight sides.
Regarding claim 52, the combination of Gueret ‘926 and Gueret ‘299 disclose the package of claim 43, as applied above. The combination does not thus far disclose wherein the brush further comprises a flexing mechanism or a comb.
Per the 112(f) interpretation applied above, the limitation “flexing mechanism” is interpreted as a reduction in diameter of the stem, or equivalents thereof.
Gueret ‘299 discloses a stem (5) comprising an end piece (180 + 181, refer to Figures 16-17; additionally refer to Paragraph [0140]), wherein the end piece has an area of reduced diameter (181, see Figures 16-17), wherein the area of reduced diameter is depicted as permitting the stem to flex (see Figures 16-17) in order to leave an “amount of angular clearance while the brush is being removed from the container or during application” (refer to Paragraph [0140]). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the package of the combination of Gueret ‘926 and Gueret ‘299 such that the brush further comprises a flexing mechanism, as taught by Gueret ‘299, since such a modification provides the advantage of providing an amount of angular clearance while the brush is being removed from the container or during application.
Affidavit
The declaration under 37 CFR 1.132 filed 06/16/2026 is insufficient to overcome the rejection of claims 43-48, and 50-52 based upon 35 USC 103 as set forth in the last Office action because:
Applicant argues (see item 8 in the declaration) that the claimed ranges provide an unexpected result; that bristles are available in full integer increments and in that regard, referring to the heat maps provided in Figure 8A through 8J, while it appears that there are values in-between these full integer increments, only the zones near the integers are viable for commercial products. Referring to Applicant’s Figure 8A, below, where a horizontal line has been appended thereto to show the bristle diameter of 5mm, there are several wiper sides ranging from approximately 4.75mm – 5.3mm that coincide with a bristle having a diameter of 5 mil (an integer); thus, it still appears that other values than those claimed would provide the desired volume value of 89.9. Since these are values different than those claimed, it still does not appear that the claimed values provide unexpected results.
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Applicant argues (see item 19 of the declaration) that the specific combination of claimed parameters are specifically chosen due to being an optimization and that combinations of parameters other than that claimed provide an “inferior” system. Thus, it appears that applicant is essentially performing routine optimization of known parameters in order to achieve a desired product result which is within the level of one of ordinary skill in the art and further, would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention given the cited prior art provided herein.
Response to Arguments
35 USC 103
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive.
Argument #1:
The examiner’s conclusion that “different combinations of bristle diameters and wiper orifice diameters result in the same ratio of volume to separation as the claimed invention…the particular claimed combination (6mil diameter bristle and 4.9mm diameter wiper orifice) does not provide unexpected results” fails to account for practical benefits provided by the claimed embodiment that are not present in the alternate embodiments. Because the claimed embodiment results in the absence of a property which the claimed invention would have expected to possess, Applicant respectfully asserts that the result is unexpected. The combination cited by the examiner “a bristle diameter of 5mil and a wiper diameter of 5.1mm” is not a preferable combination due to its susceptibility of “the Christmas tree effect”.
Response #1:
Applicant’s specification focuses on a value described as a ratio of volume to separation; the specification and test results/heat map provided do not mention the Christmas tree effect; therefore it appears that applicant is arguing features which are not claimed.
Argument #2:
Bristle diameter may limit the range of usable wiper sizes. There is an aesthetic range of factors that consumers prefer, meaning that, while a volume to separation ratio may e identical according to their respective heat chart(s), different bristle diameters have a finite range of usable wiper sizes that produce additional subjective benefits that are only discernable during product testing with consumers.
Response #2:
It appears that applicant is arguing a matter of design choice/a feature that is merely preferable to consumers which does not constitute an unexpected result. Further, there is no evidence of record that the particular claimed parameters are directly responsible for a focus group participant’s satisfaction with a finished product.
Argument #3:
Applicant may present a wider range of wiper sizes that result in the same volume to separation ratio for consumer feedback at the product testing stage, which is a notable benefit given the number of variables that must be considered for a wide and diverse client base. Because the claimed embodiment results in a superior range of wiper sizes resulting in an ideal volume to separation ratio, applicant respectfully asserts that the result is unexpected.
Response #3:
Applicant appears to be describing a design optimization rather than an unexpected result. Merely providing a design that offers more options to a client base does not provide an unexpected result but rather is a matter of design choice, based upon a user’s preference.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH WOODHOUSE whose telephone number is (571)272-5635. The examiner can normally be reached Monday - Friday: 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EDELMIRA BOSQUES can be reached on 571-270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH WOODHOUSE/Examiner, Art Unit 3772
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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