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 Group I, claims 1-11, in the reply filed on 04 December 2025 is acknowledged.
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 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 limitations use 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 limitations are: “a main body providing…”, “a parts supply unit providing…”, “a cosmetic material supply unit that can…”, “a transfer unit that can…”, and “a control unit that can…” in claim 1; “a first mixing unit that mixes…” and “a second mixing unit that mixes…” in claim 2; “a pressure adjustment unit that can…” and “a supply amount adjustment unit that adjusts…” in claim 3; “a first parts supply unit…” and “a second parts supply unit…” in claim 4; “an impregnation member that…”, “a base container accommodation part…”, “an impregnation member accommodation part…” and “a first mixing vessel accommodation part…” in claim 5; “a first transfer unit that can assemble…” and “a second transfer unit that can assemble…” in claim 7; “a first assembly unit that provides…”, “a second assembly unit that provides…”, “a base container transfer unit that” and “a hygroscopic mechanism that can…” in claim 8; “a mixing vessel transfer unit that...” in claim 9; and “a vibrating device that can…” in claim 10.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-11 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 is rendered indefinite by the phrases “a components consisting a plurality of cosmetic containers” and “the components consisting the cosmetic container” which are ungrammatical. The verb “consisting” is an intransitive verb and cannot have a direct object. It is unclear if the components are contents of the containers or elements of the containers themselves. Dependent claims 2-11 fall with claim 1. Similarly, in claim 5, “the components consisting the compact-type container” is ungrammatical.
Claim 1 is further indefinite because no structure is associated by this instant specification with the function of the means-plus-function recitation “a control unit that can control the movement of the transfer unit in order to simultaneously assemble a plurality of cosmetic containers from the mixing vessel and the components”. Dependent claims 2-11 fall with claim 1.
In claim 3, there is lack of antecedent basis for “the pathway”.
Further regarding claims 5 and 6, as held in Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955) and Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986), addition of the word “type” to an otherwise definite term renders the term indefinite.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
While, as discussed above, it is unclear what is being claimed, the claims have been considered with regard to the description requirement to the extent possible.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. While, as discussed above, it is unclear what is being claimed, the claims have been considered with respect to the description requirement to the extent possible. The specification fails to associate a structure with the function of the means-plus-function recitation the function of the means-plus-function recitation “a control unit that can control the movement of the transfer unit in order to simultaneously assemble a plurality of cosmetic containers from the mixing vessel and the components”, recited in independent claim 1, and therefore the claims do not meet the description requirement. Dependent claims 2-11 fall with claim 1.
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 (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 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.
While, as discussed above, it is unclear what is being claimed, the claims have been considered with regard to the prior art to the extent possible.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bartholomew (US 2006/0124196).
Regarding claim 1, Bartholomew discloses an apparatus comprising a main body (14) providing a space; a parts supply unit (for example “second carrier 110”); a material supply unit (for example “first carrier 104”); a transfer unit (106); and a control unit (see [0022] “one or more programmable robot arms”; [0047] “computer controlled robot arm”; [0091] “one or more arms …the robot arm may be configured to perform a plurality of functions simultaneously”).
Regarding claim 2, plural mixing units are disclosed (see [0067] “one or more translatable agitating members”).
Regarding claim 3, the material supply unit includes first and second material supply units (see plural instances of 428 in Figs. 8A and 8B and plural instance of 604 in Fig. 13B); wherein the supply units include a plurality of cartridge (plural instances of 18, 420 or 602); a discharge nozzle (19) connected to one side of the cartridges, a pressure adjustment unit (607); and a supply amount adjustment unit that opens and closes a pathway at the discharge nozzle (434).
Regarding claim 4, the cosmetic container is/are not a required element of the claimed apparatus. First and second supply units are disclosed (see the plural instances of 110 in Fig. 3A and plural instances of 110’ in Fig. 4A).
Regarding claim 5, the “first cosmetic container” is not a required element of the claimed apparatus. The first parts supply unit includes three accommodation parts (see the accommodation parts of 110 in Fig. 3A and of 110’ in Fig. 4A).
Regarding claim 6, the “second cosmetic container” is not a required element of the claimed apparatus. The second parts supply unit includes two seating parts (see the seating parts of 110 in Fig. 3A and of 110’ in Fig. 4A).
Regarding claim 7, first and second transfer units are disclosed (see [0026] “a plurality of robot arms”).
Regarding claim 8, an assembly unit includes first and second assembly units (instances of 420) providing space are disclosed, a base transfer unit (416) and a hygroscopic mechanism that can apply pressure (607).
Regarding claim 9 a transfer unit is placed on the lower side of the material supply unit (see Fig. 3C).
Regarding claim 10, a vibrating device is disclosed (see [0065] and [0074]).
Regarding claim 11, the material supply unit includes a plurality of cartridges (18) that can store the materials, and between the plurality of cartridges, a space (see Fig. 2) for introducing a transfer unit that allows the entrance of the transfer unit gripping the mixing vessel is formed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
While, as discussed above, it is unclear what is being claimed, the claims have been considered with regard to
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,296,310. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the pending claims are recited or suggested by the issued claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774