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
In response to the applicants’ arguments, previous drawing and claim objections of record have been withdrawn
In response to the applicant regarding the 112f interpretation of the “dispensing device,” “receiving area,” “motion generation device,” and the “mobile user device.” The examiner disagrees. See MPEP § 2181, subsection I, regarding the three-prong test.
Regarding the “dispensing device,” “device” is a generic placeholder, modified by the functional language of “dispensing” and “configured to dispense” and is not modified by sufficient structure, material, or acts, that perform the dispensing.
Regarding the “receiving area,” “area” is a generic placeholder, modified by the functional language of “receiving” is not modified by sufficient structure, material, or acts, that perform the receiving.
Regarding the “motion generation device,” “device” is a generic placeholder, modified by the functional language of “motion generation” and “configured to control motion” and is not modified by sufficient structure, material, or acts, that perform the motion control.
Regarding the “mobile user device,” “device” is a generic placeholder, modified by the functional language of “configured to transmit” and is not modified by sufficient structure, material, or acts, that perform the transmitting.
In response to the applicant regarding the 112b rejections. Applicants’ arguments are considered and the rejections of record are withdrawn.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The applicant argues that Pang and Waldo is non-analogous art, however it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the field of the inventor’s endeavor is a system comprising a device for dispensing material and a motion stabilizer. The particular problem the inventor is concerned with is applying cosmetic material and stabilizing motion. Pang teaches an invention in a field of endeavor of a motion stabilization (abstract) related to the particular problem of stabilizing motion ([0001]). Waldo teaches an invention in the field of endeavor for dispensing cosmetic material (abstract) related to a particular problem of applying a cosmetic composition ([0057]).
In response to applicant's argument that Pang and Waldo fail to show certain features of the invention, (i.e., “wherein when the motion stabilizer is within proximity of the dispensing device, at least one of the dispensing device and the motion stabilizer are configured to perform a predetermined operation”). The examiner disagrees, the combination of Pang and Waldo teaches this feature. Pang teaches wherein the motion stabilizer is in communication with an external device via a wireless signal (fig 7a-7c, [0048]). Waldo teaches wherein a dispensing device is capable of performing a predetermined operation based on a wireless proximity trigger (([0038]), for example radio frequency waves can trigger formulation). Therefore, by modifying the external device by applying the teachings of an external dispensing device the modified invention is capable of this limitation.
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:
“Dispensing device” in claims 1,-3, 8, and 9-11.
“Receiving area” in claims 1, 5, 6, 8, 9, and 12
“Motion generation device” in claims 1 and 8-9
“Mobile user device” in claim 2 and 10
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.
“Dispensing device” is described as having a lid and optionally a detachable compact in [0210]
“Receiving area” is described in relation to the dispensing device in [0210]
“Motion generation device” is described as being in the receiver in [0004]
“Mobile user device” is described as receiving and transmitting [0005]
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 § 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 8 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.
Regarding claim 8, the claim recites “when…” and leaves the limitation incomplete, therefore the claim is indefinite.
Dependent claims are likewise rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10-12 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 10-12 depend upon themselves.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pang (US 20200085168 A1) in view of Waldo (US 20200215568 A1).
Regarding claim 1, Pang teaches a system (abstract) comprising: a motion stabilizer (fig 2 device) coupled to a cosmetic applicator (applicator 106, fig 2) via an adapter (adapter 105, fig 2), wherein the motion stabilizer includes a receiver (receiver portion 102, fig 1) configured to be coupled with the adapter (see fig 2); at least one sensor ([0004]) configured to detect a movement caused by a user ([0004]); circuitry ([0004]) configured to determine a compensation movement to offset the detected movement ([0004]); and at least one motion generation device ([0004]) embedded in the receiver ([0004]) configured to control a motion of the cosmetic applicator according to the determined compensation movement ([0004]). Pang teaches wherein the motion stabilizer is in communication with an additional external device (fig 7a-7c).
Pang fails to teach wherein the external device is a dispensing device. Waldo teaches a skin care system (abstract) wherein a dispensing device (abstract) is configured to dispense a specified amount of a cosmetic material ([0021]) from at least one cartridge ([0007]) into a receiving area (see fig 1b, arrow 140 points to area where product is received) wherein when a device (single use pod, [0038]) is within a proximity of the dispensing device ([0038]), at least one of the dispensing device and the motion stabilizer are configured to perform a predetermined operation ([0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Regarding claim 2, Pang fails to teach the details of a dispensing device. Waldo teaches a skin care system (abstract) wherein a mobile user device ([0038], smartphone) that is configured to communicate with the dispensing device and the motion stabilizer ([0038]), wherein the motion stabilizer notifies the mobile user device when the motion stabilizer is within a proximity of the dispensing device ([0038], notifies the device by scanning with the camera), and in response to a notification, the mobile user device is configured to transmit at least one instruction to the dispensing device ([0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Regarding claims 3, Pang fails to teach the details of a dispensing device. Waldo teaches a skin care system (abstract) wherein the at least one instruction is an instruction to open a lid on the dispensing device ([0044], pod triggers product to be dispensed and dispensing triggers sliding door lid to be opened).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Regarding claim 5, Pang fails to teach the details of a dispensing device. Waldo teaches a skin care system (abstract) wherein the at least one instruction further comprises an instruction to dispense a specified amount of a cosmetic material from at least one cartridge into a receiving area ([0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Regarding claim 6, Pang teaches the details of the motion stabilizing device and also teaches wherein the predetermined motion is to mix the cosmetic material ([0052-0053], can store any protocols related to the appliance (this includes mixing)). Pang fails to teach the details of a dispensing device. Waldo teaches the details of a dispensing device in proximity with a device triggering a predetermined operation and wherein the cosmetic material is dispensed in a receiving area (discussed above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Regarding claim 8, Pang a method implemented by a system (abstract) that includes a motion stabilizer (fig 2 device) coupled to a cosmetic applicator (applicator 106, fig 2) via an adapter (adapter 105, fig 2), wherein the motion stabilizer includes a receiver (receiver portion 102, fig 1) configured to be coupled with the adapter (see fig 2); at least one sensor ([0004]) configured to detect a movement caused by a user ([0004]); circuitry ([0004]) configured to determine a compensation movement to offset the detected movement ([0004]); and at least one motion generation device ([0004]) embedded in the receiver ([0004]) configured to control a motion of the cosmetic applicator according to the determined compensation movement ([0004]). Pang teaches wherein the motion stabilizer is in communication with an additional external device (fig 7a-7c).
Pang fails to teach wherein the external device is a dispensing device. Waldo teaches a skin care system (abstract) wherein a dispensing device (abstract) is configured to dispense a specified amount of a cosmetic material ([0021]) from at least one cartridge ([0007]) into a receiving area (see fig 1b, arrow 140 points to area where product is received) wherein when a device (single use pod, [0038]) is within a proximity of the dispensing device ([0038]), at least one of the dispensing device and the motion stabilizer are configured to perform a predetermined operation ([0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught by Pang by including the dispense as taught by Waldo, in order “to provide personalized skin care composition based on personal and environmental factors” ([0001]).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art does not teach a motion stabilizer that when in a proximity of a cosmetic dispenser controls the motion of a cosmetic applicator, wherein the cosmetic applicator is configured to separate into two portions when a predetermined motion to mix the cosmetic material that is dispensed into the receiving area is performed.
Claim 9 is allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art does not teach a motion stabilizer that when in a proximity of a cosmetic dispenser the brush is configured to separate into two portions and perform a predetermined motion to mix the cosmetic material.
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 HANNA LOUISE PASQUALINI whose telephone number is (703)756-1984. The examiner can normally be reached Telework 8:30PM-4:30PM EST M-F (occasionally off Fridays).
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, Thomas Barrett can be reached at (571) 272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H.L.P./Examiner, Art Unit 3774
/THOMAS C BARRETT/SPE, Art Unit 3799
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