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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/30/2023 was filed after the mailing date of the application on 07/20/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of claims 1-4 and 13-14 in the reply filed on 08/11/2025 is acknowledged.
Claims 5-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/11/2025.
Claim Objections
Claims 1 and 14 are objected to because of the following informalities:
Claim 1: since the makeup palette case is required as part of the claimed invention, it should be set forth as:
“A makeup palette, comprising:
A makeup palette case; at least one removable makeup pan disposed within a recess formed in [[a]]the makeup palette case…”
Claim 14: “the pan” should read “the at least one pan”
Appropriate correction are required.
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.
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:
“an ejection feature ” in claim 1.
Based on a review of the specifications, it appears that “an ejection feature ” refers to “the fulcrum(s)128 and engagement surface(s)132 cooperate to define an ejection feature180” (page 7, first paragraph).
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.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geer (US 4421127 A) in view of Lan (US 20230276920 A1), further in view of Gallagher (US 20180110578 A1).
Note: The broadest reasonable interpretation has been applied to the term fulcrum. According to the Merriam-Webster Dictionary a fulcrum is “the support about which a lever turns”.
Additionally, the broadest reasonable interpretation was applied to the term “twisting”. According to the Merriam-Webster Dictionary to twist is the action of “causing to move or change position with a turning motion”.
Regarding claim 1, Geer discloses a makeup palette (Figure 1), comprising: at least one removable makeup pan (24) disposed within a recess (38) formed in a makeup palette case (14), the makeup palette case including an ejection feature configured to separate the makeup pan from the makeup palette case (since the cosmetic pans are removably received in said recess; col 5, line 61; additionally, the ejection feature further includes an engagement surface (36) disposed within the recess (38), see Figure 3 and col 3, lines 38-43). And a makeup composition (40) disposed within the makeup pan (24).
However, Geer is silent to the materials of the pans and palette. Therefore, it fails to disclose “wherein the makeup pan includes a first material, and the makeup palette case includes a second material. Additionally Geer does not disclose the ejection feature as best understood and interpreted in the 112(f)-claim interpretation presented above (i.e. a fulcrum(s) in combination with the engagement surface(s) cooperating to define an ejection feature).
Lan discloses a cosmetic container having a cover, a base, and a make-up pan (Figure 1, Abstract). Lan discloses that cosmetic containers can include multiple materials, for example, some cosmetic containers can include mixed polymers ([0032]). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Geer’s makeup palette to make it comprising the makeup pan and the makeup palette case made of different materials, e.g. different polymers, as taught by Lan, since such modification would create a palette made of known polymers that are sustainable and are designed for easing effort of recycling ([0032]).
Gallagher discloses a packaging assembly comprising an outer tray (102) and an inner tray (106) housing a delivery system within (Abstract), the outer tray including a recess (132) and an ejection feature configured to separate the inner tray from the outer tray, wherein the ejection feature includes at least one fulcrum (150) disposed within the recess (132) and defining an axis (vertical axis) (Figures 2 and 4, [0026]), wherein a twisting force applied to the makeup palette case rotates the makeup pan relative to the makeup palette case about the axis (since as shown in Figure 4 a twisting force applied to the makeup case rotates the makeup pan relative to the makeup case about the axis; structure of fulcrum would also be such that the case is capable of being rotated as claimed about an axis of the fulcrum ).
Geer and Gallagher are considered to be analogous to the claimed invention because they are in the same field of containers with pan/tray ejection features. Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Geer/Lan’s makeup palette case to add Gallagher’s fulcrum and Gallagher’s tray/pan removable mechanism through the twisting motion, since such modification would add an effective and quick removal mechanism that facilitate replacement of the pans once the cosmetic materials have been consumed.
The Examiner notes that the device created by the combined teachings of Geer, Lan and Gallagher, as a whole, discloses an ejection feature configured to separate the makeup pan from the makeup palette case (since Geer discloses the engagement surface (36) disposed within the recess (38), see Figure 3 and col 3, lines 38-43 and Gallagher discloses at least one fulcrum (150) disposed within the recess (132) and defining an axis (vertical axis) (Figures 2 and 4, [0026]; therefore, together these components would cooperate to define an ejection feature).
Regarding claim 2, Geer, Lan and Gallagher discloses the invention substantially as claimed. Gallagher discloses wherein the ejection feature includes at least one fulcrum (150) disposed within the recess (132) and defining an axis (vertical axis) (Figures 2 and 4, [0026]), wherein a twisting force applied to the makeup palette case rotates the makeup pan relative to the makeup palette case about the axis (since as shown in Figure 4 a twisting force applied to the makeup case rotates the makeup pan relative to the makeup case about the axis; structure of fulcrum would also be such that the case is capable of being rotated as claimed about an axis of the fulcrum).
Regarding claim 3, Geer, Lan and Gallagher, as combined above, disclose the invention substantially as claimed. Geer discloses wherein the ejection feature further includes an engagement surface (36) disposed within the recess (38) (see Figure 3 and col 3, lines 38-43), and the engagement surface engages the makeup pan (24) to rotate the pan about the axis when the twisting force is applied. The Examiner notes that the makeup palette disclosed by Geer allows for said twisting force applied to the makeup palette case to rotate the makeup pan relative to the engagement surface about the axis, since Geer palette is made of thermoplastic materials (col 4, line 60), which is a flexible material that would allow this ejecting mechanism to take place; said mechanism is interpreted to be analogous as the motion that takes place when ice is ejected from an ice making tray.
Regarding claim 4, Geer, Lan and Gallagher, as combined above, fail to disclose “wherein the recess includes one or more retention features engaging the pan in an interference fit to retain the pan within the makeup palette case”.
However, Gallagher further discloses wherein the recess (132) includes one or more retention features (protrusions/corrugations 148) engaging the inner tray (see [0027] where it is disclosed that the inner tray’s structural dimensions are adjacent and lie withing the structures of the outer tray). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Geer/Lan/Gallagher’s makeup palette in order to add one or more retention features, as disclosed by Gallagher, since such modification would allow a more secure attachment of the pan in the recesses.
The Examiner notes that even though Geer, Lan and Gallagher, as combined above, does not specifically disclose “or more retention features engaging the pan in an interference fit to retain the pan within the makeup palette case”, it would have been obvious to one of ordinary skills in the art to add this interference fit feature to the engaging mechanism, since this constitutes applying a known technique to a known device ready for improvement to yield predictable results, as evidenced by the interference fit used in Gallagher’s packaging assembly to retain the delivery system 108 in the inner tray, which provides a variable interference fit for holding the delivery system 108 [0020].
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geer in view of Lan, as applied to claim 1 above, further in view of Huang (US 11174086 B2).
Regarding claims 13 and 14, Geer and Lan fail to disclose wherein the makeup palette case is formed from at least one of the group consisting of paper, pulp, fiber, and cellulose and wherein the pan is formed from a metal.
Huang discloses a cosmetic case comprising at least one removable makeup pan (20) disposed within a recess (22) formed in a makeup palette case (Figure 8), wherein the makeup palette case is formed from at least one of the group consisting of paper, pulp, fiber, and cellulose (Abstract, and claim 1). And wherein the pan is formed from a metal (col 3, lines 10-20). Therefore, it would have been obvious to one of ordinary skills in the art, before the effective filing date of the application, to modify Geer/Lan’s makeup palette in order to makeup palette case of paper and the pan formed from a metal, since such modification would be a simple substitution of one known element for another to obtain predictable results, such as making the device of alternative recyclable materials for environmental protection purposes (col 3, lines 19-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS MIGUEL RUIZ MARTIN whose telephone number is (571)270-0839. The examiner can normally be reached M-F 8 Am - 5 PM (EST).
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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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/LUIS RUIZ MARTIN/
Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772