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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/23/2025 has been entered.
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 4.9mm. 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 value. 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.
Response to Arguments
Claim Objections
Applicant’s amendments to the claims overcome all previous claim objections; thus, all previous claim objections are hereby withdrawn.
35 USC 112(b)
Applicant’s amendments to the claims overcome all previous 35 USC 112(b) rejections; thus, all previous 35 USC 112(b) rejections are hereby withdrawn.
35 USC 102
Applicant’s arguments with respect to claim 43 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
35 USC 103
Applicant's arguments filed 09/23/2025 have been fully considered but they are not persuasive.
Argument #1:
Claim 43 has been amended to recite an embodiment that has unexpected results. Specifically, bristles having a solid cross section with a diameter of 6 mil and a wiper orifice of 4.9mm has an unexpected value for volume (see Applicant’s Figure 8A) and for separation (see Applicant’s Figure 8F).
Neither Gueret ‘926 nor Gueret ‘299 disclose or recognize that maximizing volume to separation could or should be affected by the bristle diameter and the wiper orifice size. Accordingly, claim 43 could not have been arrived at even considering the disclosures of Gueret ‘926 and Gueret ‘299.
Response #1:
Gueret ‘926 teaches all of the claimed limitations of independent claim 43 except for teaching the diameter of the wiper orifice; however, Gueret ‘926 explicitly discloses that the size of the wiper orifice may be selected based on a size of the stem diameter (refer to Gueret ‘926 Paragraph [0114]).
Gueret ‘299 also explicitly states that the size of the wiper orifice is selected based on a size of the stem (refer to Gueret ‘299 Paragraph [0101]) and further goes on to recite that the wiper orifice may be 2.5mm to 5.5mm (refer to Gueret ‘299 Paragraph [0019]). Thus, the combination teaches all the claimed limitations and one of ordinary skill would be inclined to look to Gueret ‘299 to modify the teachings of Gueret ‘926 since Gueret ‘299 is selecting a wiper diameter for the exact same reasons as Gueret ‘926, i.e. for accommodating the stem.
Additionally, applicant’s arguments that the claimed features describe an embodiment that has unexpected results are not found to be persuasive. Regarding applicant’s Figure 8A, the volume of a brush comprising solid bristles having the claimed 6mil diameter and a 4.9mm wiper diameter provides the greatest volume at 89.9; however, this value does not appear to be unexpected. Rather, the heat map of Figure 8A appears to depict a trend/pattern of data that indicates that the volume increases under certain increases in the bristle diameter and the wiper size. Further, based on the data provided in Figure 8A, the value at which the volume is greatest (89.9) appears to occur over a range of values, i.e. the legend to the right of the heat map in Figure 8A denotes the volume value of 89.9 being present over several data points as indicated by the circle having the hatch marks matching 89.9. For example, a bristle diameter of approximately 5mil and a wiper diameter of 5.3mm also gives a volume of 89.9. Similarly, a bristle diameter of approximately 5.25mil and a wiper diameter of approximately 5.1mm also gives a volume of 89.9. Thus, different combinations of bristle diameters and wiper diameters result in a volume value of 89.9, thereby demonstrating that the claimed values of a bristle diameter of 6mil and wiper diameter of 4.9mm do not provide an embodiment having an unexpected result but rather provide an expected result, that follows a pattern as indicated in applicant’s Figure 8A.
Similarly, Figure 8F shows that a 6mil diameter solid bristle combined with a wiper orifice of 4.9 provides a separation of 21.2 yet a range of combinations of bristle diameters and wiper diameters also provide a separation of 21.2 as indicated by the band of data points identified by the portion of the heat map comprising the 21.2 hatch mark.
Further, in Figure 8F, the ratio of volume to separation is 4.24 and this value is achieved by a 6mil diameter bristle and a 4.9mm diameter wiper orifice; however, according to the heat map in Applicant’s Figure 8G, that same ratio of 4.24 can be achieved by a hollow bristle of 4mm diameter and a wiper orifice diameter of about 5.1mm. In other words, the heat maps do not appear to provide adequate evidence that the claimed values provide unexpected results since the same result (volume to separation ratio of 4.24) can be achieved by varying different parameters of the brush and package. Even within the solid bristle heat maps, it appears that a bristle diameter of 5mil and a wiper diameter of 5.1mm provides a volume of 89.9 (see annotated Figure 8A, below wherein the intersection of a line at the 5mil bristle and a line at the 5.1mm diameter wiper orifice has a volume of 89.9) and wherein the same bristle diameter of 5mil and wiper diameter of 5.1mm provides a separation of 21.2 (see annotated Figure 8E below wherein the intersection of a line at the 5mil bristle and a line at the 5.1mm diameter wiper orifice has a separation of 21.1), in which case, the ratio of volume to separation of a brush having a bristle diameter of 5mil and a wiper orifice diameter of 6.1mm is equal to 89.9/21.2 = 4.24, i.e. the same as the claimed embodiment. Thus, it is apparent, from applicant’s provided data, that different combinations of bristle diameters and wiper orifice diameters result in the same ratio of volume to separation as the claimed invention, further supporting the argument that the particular claimed combination (6mil diameter bristle and 4.9mm diameter wiper orifice) does not provide unexpected results.
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Conclusion
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.
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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/SARAH WOODHOUSE/Examiner, Art Unit 3772