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 subject matter disclosed in prior application no 16676267, filed 11/6/19, because this application names the inventor or at least one joint inventor named in the prior application, it properly constitutes a continuation 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.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 3/20/24 was/were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 7/15/25 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)).
Claim(s) 22-23, 26, and 32-40 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/15/25.
Drawings
Sheet 4 is/are objected to because of the extraneous matter (see annotations).
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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.
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 Objections
Claim(s) 29-30 is/are incomplete because a claim must depend on a preceding claim and in the instant case claim 30 depends on claim 29 and claim 29 is dependent upon itself. So these claims is/are considered incomplete. As such, these claims have not been further treated on the merits thereof. See MPEP 608.01(n).
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) 21, 24-25, and 27-31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21 and 24: recites in the second clause “the carrier-strip including a fluid-activated composition therein or thereon, the fluid-activated composition including at least one active agent configured to aid in retaining a curl or bend in the eyelashes of the user when the at least one active agent contacts the eyelashes”. Applicant’s disclosure is silent as to what chemical compounds the term “active agent configured to aid in retaining a curl or bend in the eyelashes of the user when the at least one active agent contacts the eyelashes” should be interpreted to mean. Is this referring to a surface active agent, a drug, an essential component, all of the above, none of the above? While applicant provides examples of the “fluid-activated composition” [0052], the disclosure does not provide any examples of what the term “active agent” should be interpreted to include or exclude and instead broadly defines it as “the at least one active agent is a non-soluble fixative agent” [0006]. However, the term “non-soluble fixative agent” is also not defined by the disclosure. This makes the metes and bounds of the claim impossible to determine because both the “active agent” and the “non-soluble fixative agent” are undefined. This makes it unclear what compositions must be present in order to meet the claim limitations. Applicant can overcome this by amending the claim to recite “the carrier-strip including a fluid-activated composition therein or thereon” since this is the only composition defined in the disclosure, and for examination purposes this is how the claim will be treated. Clarification or correction is requested.
Claim 27: recites “wherein the carrier strip includes a solution comprising the at least one active agent thereon”; however, at the outset it is unclear how a solution would have an active agent “thereon”. That language is confusing because the solution comprising the active agent means the active agent is part of the solution and is not structurally “on” the solution. Additionally this wording is confusing because it seems this “solution” is part of the “fluid-activated composition” and not a separate thing as applicant appears to claim. For examination purposes, the claim will be treated as reciting “wherein the fluid-activated composition includes a solution comprising the at least one active agent”.
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)(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.
Claim(s) 21, 24-25, 27-28, and 31, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McNamara (US 20130114989-IDS cited reference).
Claims 21 and 24: McNamara discloses an eyelash curling device (110+120) comprising: a mechanical eyelash curler (110) including an upper jaw (111) and a lower jaw (111) configured to move relative to one another (see Figs 5-6), the upper jaw and the lower jaw are configured to transition between a first position in which the upper jaw and the lower jaw are located a distance from each other (see Fig 5) and a second position in which the upper and lower jaws are in contact with each other (see Fig 6), the second position configured to assist in curling or bending eyelashes (see Fig 6). A carrier strip (112) is coupled to the upper jaw, the carrier strip including a mascara or an adhesive [0020] and which can be liquid or solid [0021] and which the office interprets as “a fluid activated composition” therein/thereon. The composition is interpreted to include “at least one solution comprising at least one active agent configured to aid in retaining a curl or bend in the eyelashes of the user when the at least one active agent contacts the eyelashes” since mascara helps eyelashes hold a curl and includes a series of different “agents” and since applicant does not define these compositions in the specification. The mascara composition is configured to contact and transfer to the eyelashes when the curler is in the second position (see Fig 6). The at least one active agent can include adhesive [0020], which is a “fixative” agent and as best understood is a “non-soluble fixative agent that assists in exuding the composition from the carrier strip”.
Claim 25: McNamara discloses the carrier strip can be formed of an absorbent material [0032] which by definition means it is “configured to release a portion of the composition in response to pressure applied thereto by the upper jaw and the lower jaw in the second position (see Figs 1-6).
Claim 27: the device also comprises a substantially airtight compartment (121) [0037] for enclosing the carrier strip with the carrier strip including the composition thereon [0026].
Claim 28: the device further comprises a base strip of adhesive [0035] coupling the carrier strip to the upper jaw [0035] and this adhesive strip constitutes “a base strip” that is adhesively coupled to the carrier strip.
Claim 31: the carrier strip can be made of foam, rubber, or sponge [0032] which are flexible materials and the carrier strip is coated with the composition including the “active agent” [0026 & 0032].
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.
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/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772