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
Applicant's arguments filed 3/25/2026 have been fully considered but they are not persuasive. In regards to claims 9-12, hindsight is not relied on because commercially available and publicly available products made by Bayer, DuPont, and SK are disclosed. Specifically, polyurethane 1070A made by Bayer, elastomer 06751 made by DuPont, elastomer G130D made by SK, and thermoplastic G140D made by SK are commercially available compositions that read on the claim language. MPEP 2143 rationales A and C support such a modification because using pre-existing mass-manufactured materials is an obvious rationale of using a known technique/material to improve similar devices. Using well-known and publicly available thermoplastic elastomers would lead to predictable results because those elastomers are readily available for use and would reasonably be appropriate for these applicators. In regards to claims 1-8 and 13-18, the amendment to independent claim 1 brought upon a new rejection based on Park (US 20200069033 A1) in view of Gauttier et al. (US 20200237074 A1), and in further view of Gueret (US 5899622 A).
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8, 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 20200069033 A1) in view of Gauttier et al. (US 20200237074 A1), and in further view of Gueret (US 5899622 A).
Regarding claim 1, Park discloses an applicator (10, fig. 1), configured to apply a cosmetic, a skin care product and/or a medicine to a hairless skin (para. [0071]), and comprising a mounting portion and an application portion (50, para. [0040]) fixedly connected to the mounting portion (38, para. [0047]), wherein at least two flocks (66) are provided on the application portion (34, para. [0040]); the mounting portion (38), the application portion (50) and the at least two flocks (66) are made of a thermoplastic material (para. [0046]).
However, Park fails to disclose wherein the flocks are an integrally injection-molded piece made of a thermoplastic material; and a shore hardness of the thermoplastic material is greater than 65 A.
Gauttier teaches a similar device in the same field of endeavor wherein the flocks are an integrally injection-molded piece made of a thermoplastic material (para. [0037]); and a shore hardness of the thermoplastic material is greater than 65 A (para. [0037, 0054, 0107]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the applicator of Park and used the thermoplastic of Gauttier. Both Park and Gauttier teach thermoplastic applicators configured to touch delicate parts of the skin or face, but Park is silent to the specific hardness of the thermoplastic used. Using the thermoplastic as taught in Gauttier with the applicator of Park would have been obvious and yielded predictable results namely, a firm enough applicator to withstand the injection-moulding process but soft enough to be appropriate for applying product to the eyes, cheeks, or lips (para. [0037, 0102]).
However, the combination fails to disclose wherein the application portion includes a first surface and a second surface opposite each other, wherein both the first surface and the second surface are provided with the at least two flocks, and wherein each of the first surface and the second surface is a planar surface, a convex surface, or a concave surface.
Gueret teaches a similar device in the same field of endeavor wherein the application portion (130) includes a first surface and a second surface opposite each other (fig. 2A, column 4 lines 17-28), wherein both the first surface and the second surface are provided with the at least two flocks (fig. 2A, column 4 lines 17-28), and wherein each of the first surface and the second surface is a planar surface (fig. 2A), a convex surface, or a concave surface.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shape of Park and Gauttier to resemble a two-sided shape as shown in Gueret because they all are executing the same function—applying a cosmetic to the skin (para. [0071] in Park, para. [0005-0006] of Gauttier, and column 1 lines 8-13 in Gueret). All of these references encompass many different uses that may have different shapes based on the intended use but are furthermore made of similar materials (thermoplastic-); therefore, relying on the shape of the applicator of Gueret for the shape of the same type of applicator of Park is well-within a realm of predictable results namely, a flexible applicator to apply a product to the skin.
Regarding claim 2, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. However, Park fails to disclose wherein the shore hardness of the thermoplastic material is 70 A to 95 A.
Gauttier teaches wherein the shore hardness of the thermoplastic material is 5 A to 70 A (para. [0037, 0054, 0107]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shore hardness of Gauttier from between 5 A to 70 A to between 70 A to 95 A since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” See MPEP 2144.05. See In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range). Applicant appears to have placed no criticality on the claimed range (see para. [0035, 0036] of specifications indicating the shore hardness is optionally within the claimed range).
Regarding claim 3, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. However, Park fails to disclose wherein the shore hardness of the thermoplastic material is 70 A, 72 A, 75 A, 80 A, 85 A, 87 A or 90 A.
Gauttier teaches wherein the shore hardness of the thermoplastic material is 70 A, 72 A, 75 A, 80 A, 85 A, 87 A or 90 A (para. [0037, 0054, 0107]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the applicator of Park and used the thermoplastic of Gauttier. Both Park and Gauttier teach thermoplastic applicators configured to touch delicate parts of the skin or face, but Park is silent to the specific hardness of the thermoplastic used. Using the thermoplastic as taught in Gauttier with the applicator of Park would have been obvious and yielded predictable results namely, a firm enough applicator to withstand the injection-moulding process but soft enough to be appropriate for applying product to the eyes, cheeks, or lips (para. [0037, 0102]).
Regarding claim 4, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. Park further discloses wherein a first end (A, annotated fig. 4) of each of the at least two flocks (66) is fixedly connected to the application portion (50), and a second end (B, annotated fig. 4) of each of the at least two flocks (66) is a free end (annotated fig. 4); the second end (B) of each of the at least two flocks (66) extends toward an outer side (bristles project outwardly away from the core, para. [0040, 0043]) of the application portion (50); each of the at least two flocks (66) has an average diameter of 0.06 mm to 0.2 mm (para. [0048]); and each of the at least two flocks (66) has a length L of 0.6 mm to 2 mm (para. [0047]).
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Regarding claim 5, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. Park further discloses wherein a distance H between two adjacent flocks (66) of the at least two flocks is identical (gap G in fig. 5, para. [0052-0053]).
Regarding claim 6, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. Park further discloses wherein a distance H between two adjacent flocks (66) of the at least two flocks is 0.1 mm to 0.6 mm (gap G in fig. 5, para. [0052-0053]).
Regarding claim 7, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. Park further discloses wherein a density of the at least two flocks (66) on the application portion is 2 pieces/mm2 to 30 pieces/mm2 (para. [0054]).
Regarding claim 8, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 1. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 13, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 2. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 14, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 3. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 15, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 4. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 16, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 5. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 17, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 6. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Regarding claim 18, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 7. Park discloses wherein each of the at least two flocks is spatially shaped as a designated cone (see fig. 12, these flocks operationally are equivalent to the straight cylindrical flocks in fig. 4); the designated cone is a circular cone or a truncated cone (see fig. 12).
However, Park fails to disclose that the designated cone has a conicity of 1:15 to 1:20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the flocks of Park to have a conicity of 1:15 to 1:20 since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Park would not operate differently with the claimed conicity. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the flocks optionally are circular or truncated cones with the claimed conicity range (para. [0014]).
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 20200069033 A1) in view of Gauttier et al. (US 20200237074 A1), Gueret (US 5899622 A) and in further view of applicant’s admitted prior art (specification of application no. 18/422,023).
Regarding claim 9, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 8. However, the combination fails to disclose wherein the thermoplastic material comprises the following components in parts by weight: 20-40 parts of polyurethane (PU), 20-30 parts of a polyester fiber, 20-30 parts of a filler, 15-25 parts of a plasticizer, 0-5 parts of a colorant, 0-1 parts of an ultraviolet stabilizer, and 0-1 parts of an antioxidant.
The applicant’s specification teaches the use of a commercially available thermoplastic polyurethane 1070A produced by Bayer (embodiment 1, para. [0047, 0054, 0061]).
The substitution of one known element (generic thermoplastic shown in Park) for another known element (commercially available Bayer thermoplastic as shown in applicant’s specification) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the thermoplastics would have yielded predictable results, namely, a stiff yet pliable thermoplastic used for applying a material to the skin. MPEP 2143 A and B.
Regarding claim 10, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 8. However, the combination fails to disclose wherein the thermoplastic material comprises the following components in parts by weight: 15-30 parts of a styrene-ethylene-butylene-styrene block copolymer (SEBS), 20-40 parts of a paraffin oil, 15-30 parts of polypropylene, 15-30 parts of calcium carbonate, and 0-3 parts of an auxiliary material.
The applicant’s specification teaches the use of a commercially available thermoplastic elastomer 06751 produced by DuPont (embodiment 2, para. [0055, 0061, 0062]).
The substitution of one known element (generic thermoplastic shown in Park) for another known element (commercially available DuPont thermoplastic as shown in applicant’s specification) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the thermoplastics would have yielded predictable results, namely, a stiff yet pliable thermoplastic used for applying a material to the skin. MPEP 2143 A and B.
Regarding claim 11, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 8. However, the combination fails to disclose wherein the thermoplastic material comprises the following components in parts by weight: 95-99.5 parts of 1,4-Benzenedicarboxylic acid dimethyl ester polymer with 1,4-butanediol and α-hydro-ω-hydroxypoly(oxy-1,4-butanediyl), and 0.5-2 parts of an adhesive.
The applicant’s specification teaches the use of a commercially available thermoplastic polyester elastomer G130D produced by SK (embodiment 5, para. [0056, 0061, 0063]).
The substitution of one known element (generic thermoplastic shown in Park) for another known element (commercially available SK thermoplastic as shown in applicant’s specification) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the thermoplastics would have yielded predictable results, namely, a stiff yet pliable thermoplastic used for applying a material to the skin. MPEP 2143 A and B.
Regarding claim 12, the combination of Park, Gauttier, and Gueret discloses the applicator of claim 8. However, the combination fails to disclose wherein the thermoplastic material comprises the following components in parts by weight: 95-99.8 parts of a polymer of diphenyl isophthalate, 1,4-butanediol, terephthalic acid and poly(1,4-butanediol), and 0.1-2 parts of an adhesive.
The applicant’s specification teaches the use of a commercially available thermoplastic G140D produced by SK (embodiment 6, para. [0057, 0061, 0066]).
The substitution of one known element (generic thermoplastic shown in Park) for another known element (commercially available DuPont thermoplastic as shown in applicant’s specification) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the thermoplastics would have yielded predictable results, namely, a stiff yet pliable thermoplastic used for applying a material to the skin. MPEP 2143 A and B.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ERIN A KIM whose telephone number is (703)756-4738. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Eisenberg can be reached at (571) 270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN A KIM/Examiner, Art Unit 3781
/SUSAN S SU/Primary Examiner, Art Unit 3781 13 April 2026
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