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 .
Priority
This application repeats a substantial portion of prior Application No. 16741721, filed 1/13/2020, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it properly constitutes a continuation-in-part of the prior application. Applicant’s claim to the benefit of the filing date of the prior application under 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. is acknowledged.
Election/Restrictions
Applicant’s election of Species IV in the reply filed on 7/19/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
While applicant asserts claims 1-20 read on the elected species, the office respectfully disagrees. Claims 2, 4, 6, 8, 10, 12, 14, 16, and 18 each depends from a claim that already requires “the first side portion makeup surface is a convex face” and then these claims go on to require “said first side portion makeup surface is a curvy convex surface”. As best understood, this combination of features is not present in the elected species, the elected species does not have a combination of a convex face and this face also have another curvy convex surface as required by these claims.
Claims 2, 4, 6, 8, 10, 12, 14, 16, and 18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 7/19/25.
Drawings
Figures 5B-C, 10A-1-10L-4 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.
The drawings are objected to because Figures 10A-1-10L-4 are titled improperly because the titles of each figure should be clear and concise and read "Fig 1A" or "Figure 1A" without brackets or additional subtitles. Each view requires a clear figure title and the view numbers must be larger than the numbers used for reference characters (see 37 CFR 1.84(u)). In the instant case, the hyphen and additional numbering constitutes and additional subtitle. This can be overcome by renumbering these Figures 10M, 10N, 10P, etc.
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, 3, 5, 7, 9, 11, 13, 15, 17, and 19-20 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(s) 1, 9, and 17: each of these claims recites in the first lines “adapted for applying a cosmetic material on skin surfaces of face, lip, and eye shadow of a user and eyebrows and hairs at hairline of the user, comprising”; however, this language is confusing because the lips are a skin surface of the face so is it a lip applicator specifically or is this just an example? Eye shadow is a makeup product and not a skin surface at all, so is applicant attempting to claim applying eye shadow with this language? Also in combination with the preceding words it is unclear if applicant is claiming applying eyeshadow to the lips. Furthermore the language “and eyebrows and hairs at hairline of the user” is unclear because eyebrows are not a skin surface but are hairs. Is this claiming that the device can be used to apply cosmetic to hair or that the device can be used to apply hairs to the skin? The metes and bounds of the claims are unclear. For examination purposes, the claim will be treated as reciting “adapted for applying a cosmetic material on a skin or hair surface of a user, comprising”. Each of these claims also recites “an ellipse shape”; however, the elected embodiment does not have an ellipse shape because the definition of an ellipse isa plane curve surrounding two focal points such that for all points on the curve the sum of the distances to the two foci is constant. Applicant does not disclose the body having an ellipse shape. As best understood, applicant discloses an “approximately” or “somewhat” ellipse shape, but the foci are not equal so it is not an ellipse. For examination purposes, the claim will be treated as reciting “substantially ellipse shape”. Each of these claims is also confusing because the last three clauses of each one appears to recite limitations already required by the claim with different wording. “said end portion makeup surface is a curved surface” is already stated two clauses up with “said end portion makeup surface has a curved shape”; making it unclear how many curves this surface must have to meet the claims. The language “said first side portion makeup surface having a curvature adapted…” this is unclear because the claims already require the first side portion surface to be convex, which by definition is curved so how many curvatures are being claimed? This same issue arises with “said third side portion makeup surface having a shape adapted for” because is this the same “concave shape” already required by the claim or some different shape? Clarification or correction is requested.
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Claims 3, 11, and 19: each of these claims depends from a claim that already requires “said third side portion makeup surface…is a concave face”; these claims then each requires “wherein said third side portion makeup surface is a concave surface extended along a longitudinal direction of said applicator body and recessedly formed in said applicator body”. It is unclear how many “concave surfaces” are being claimed because these claims do not clearly refer back to “the concave face” of their independent claim so are these the same or different? Furthermore, what does the language “and recessedly formed in said applicator body” mean? This language is confusing and does not appear to make sense. For examination purposes, the claim will be treated as reciting “where the concave face of the third side portion makeup surface extends along a longitudinal direction of the applicator body”. Clarification or correction is requested.
Claim 9: this claim recites “a makeup applicator set comprising: at least one makeup applicator which comprises a supporting element; and a makeup applicator head…comprising: a connection member; and an applicator body”; however, it would appear that the makeup applicator head is part of the makeup applicator and they are not separate different structures. The claim is structured in a confusing way because it is unclear if applicant is claiming a makeup applicator different and separate from the makeup applicator head and then also claiming a separate applicator body. The alignment of the indentations is confusing too because as best understood, the connection member and the applicator body are part of “the makeup applicator head”, but they are indented as though they are part of the set and not the applicator head. There is also no structural relationship set forth between these components which is confusing because it would appear the connection member would need to be joined to the support member to form the makeup applicator. For examination purposes, the claim will be treated as reciting:
“9. A makeup applicator set comprising:
at least one makeup applicator comprising a supporting element joined to a makeup applicator head;
the makeup applicator head…comprising:
a connection member, and
an applicator body…”Clarification or correction is requested.
Claim 17: in line 1 recites “a makeup solid brush head”; at the outset it is unclear what “makeup solid brush head” means. Is this claiming a brush or a solid component? Furthermore, this language is confusing because applicant’s entire disclosure focuses on how the device is not a brush as it does not have any bristles and does not deform in use [0014 & 0088 & 0095 & 0098 & 0108 & 0156]. Furthermore the claim itself also requires “an exterior surface made of a rigid material” and the device is required to be used on the skin of a person (see last clauses of claim and first lines of claim 17). To the office’s knowledge a brush must have some kind of bristles or teeth to qualify as a brush so applicant appears to be using the term “brush” against its ordinary meaning without clearly redefining the term in the disclosure, making the claim unclear. Additionally, if the device is supposed to be a bristled brush, then it is unclear how the exterior could be made of a “rigid material”, but is also for contacting skin to apply makeup without causing an injury to that skin. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. The term is indefinite because the specification does not clearly redefine the term “brush”. The metes and bounds of the claim are unclear. For examination purposes, the claim will be treated as reciting “A makeup applicator head”. Clarification or correction is requested.
Double Patenting
Applicant is advised that should claim(s) 1, 3, and 5 is/are be found allowable, claim(s) 17 and 19-20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In the instant case, the only difference between claims 1 and 17 is in line 1. Claim 1 recites “A makeup applicator head” while claim 17 recites “A makeup solid brush head”; as discussed above in reference to claim 17, applicant does not have support to claim “a brush” as this is contrary to applicant’s disclosure. Claims 1 and 17 as best understood each recites a “makeup applicator” and everything that can be gripped in the three dimensional world is “solid” because it is not a gas or a liquid, so the claims are duplicates in their current state. Applicant can amend one of the claims to set forth additional structure in order to overcome this issue.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5, 7, 9, 11, 13, 15, 17, and 19-20, as best understood, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pires (US 10575621).
Claims 1, 3, 5, 7, 9, 11, 13, 15, 17, and 19-20: Pires discloses a makeup applicator set (1, Fig 1) comprising: at least one makeup applicator (100) comprising a supporting element (20) joined to a connection member (10b) of a makeup applicator head (10). The makeup applicator head is for applying cosmetic to hair or skin of a user (Col 1, 55-66) and the makeup applicator head comprises: the connection member (10b) and an applicator body (see Figs 1-3) having an approximately or substantially “ellipse” shape (see Fig 3A) in as much as applicant discloses an “ellipse shape” because Pires discloses a truncated tapered leaf like shape similar to applicant’s illustration, so as best understood the applicator body of Pires is also “ellipse” shaped in as much as applicant’s device is. An exterior surface of the applicator body can be made of injection molded plastics (Col 6, 60-Col 7, 10), which according to applicant’s disclosure constitutes a “rigid material” [0088], a free end (14), a connection end (13) coupled to the connection member (see Fig 3) and at least one curved end portion makeup surface (tip of 14, see Figs 3-5) located at the free end of the applicator body. A pair of side portion makeup surfaces are located/formed at left and right peripheral side edges of the applicator body (see Fig 3A & 3B) and joined to these two side portion makeup surfaces are a front first side portion makeup face that is convex (11b) and an opposite rear third side portion makeup face that is concave (11a) or recessed (see Fig 3B). The two opposing elongated right and left edge side portions (second and fourth side portions) oppose each other and each has an elongate narrow shape (see Fig 3B) compared to a width of the applicator body such that the first and third surfaces are larger than the second and fourth side portions (see Figs 1-4). A cross-sectional area of the applicator body gradually increases then decreases from the connection end (13) towards the free end (14) and the end portion makeup surface has a curved shape (see Fig 5). The second side portion and fourth side portion surfaces extend between the free end and the connection end of the applicator body and can be used to apply makeup if desired (see Figs 1-5). Any surface of the applicator can be used to apply makeup to different surfaces of a user.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772