DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to Application filed January 28, 2024, in which claim(s) 1-10 is/are presented for examination.
Election/Restrictions
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.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 September 3, 2025.
Status of Claims
Claim(s) 10 is/are pending of which Claim(s) 10 is/are presented in independent form (see 112b note below).
Information Disclosure Statement
The information disclosure statement filed January 28, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
NPL has not been considered since copies were not properly filed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The steps a)-d) for the method of claim 10 are lack written description because it is not clear at least A) “how or who” is replacing conventional cotton towels with a silicone cover, B) how the use of chemical solutions are eliminated, C) how water is actually reduced, or D) how waste is minimized by reuse. All of these steps appear to rely on intended use or expected outcomes and lack actual method steps which are related to performing any real or measurable step to result in the expected outcome. The specification fails to definitively outline or sufficiently describe the steps claimed in the method (see also 2163.03, V).
Additionally, “easy-to-clean nature” has not been defined in the specification, therefore, there “easy-to-clean nature” also lacks written description.
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 10 is 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. As discussed in the restriction requirement dated August 26, 2025, Examiner is considering Claim 10 to be an independent method claim. As it is currently is in a dependent form which lacks definiteness due to the hybrid method and device language (see MPEP 2173.05(p) for additional information). Examiner will consider the claim to read as follows for purposes of examination:
Claim 10. A method for reducing the environmental impact of the beauty industry, comprising: a) replacing conventional cotton towels with silicone covers; b) eliminating the use of chemical solutions for towel sanitization; c) reducing water consumption and electricity usage by utilizing the easy-to-clean nature of the silicone covers; d) minimizing waste generation by reusing the silicone covers instead of discarding stained towels into landfills.
Based on the above rewritten Claim 10, the following issues regarding indefiniteness are as follows:
The steps a)-d) for the method of claim 10 are indefinite because it is not clear at least A) “how or who” is replacing conventional cotton towels with a silicone cover, B) how the use of chemical solutions are eliminated, C) how water is actually reduced, or D) how waste is minimized by reuse. All of these steps appear to rely on intended use or expected outcomes and lack actual method steps which are related to performing any real or measurable step to result in the expected outcome.
Additionally, “easy-to-clean nature” has not been defined in the specification, therefore, there is not clear what the metes and bounds of “easy-to-clean nature” includes or excludes.
For purposes of examination, examiner is considering any silicone cover to be capable of being used as desired by a user and therefore, meeting the claimed method of use.
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGuire et al. (hereinafter McGuire) (USPN 9532620).
Regarding Claim 10, McGuire discloses a method of using (col. 6, line 59-col. 7, line 14) a silicone cover (Figs. 1-8; 40, col. 4, lines 55-57) capable for reducing the environmental impact of the beauty industry (as McGuire notes “drying in col. 6, line 66, under BRI it is understood that this means it is capable of being reused if so desired). Regarding the remaining “steps” a method of a) replacing conventional cotton towels with silicone covers; b) eliminating the use of chemical solutions for towel sanitization; c) reducing water consumption and electricity usage by utilizing the easy-to-clean nature of the silicone covers; d) minimizing waste generation by reusing the silicone covers instead of discarding stained towels into landfills -these are all considered to be met by intended use/expected outcomes at discussed above and without further claimed specificity, McGuire’s silicone cover is fully capable of being used in the claimed manner.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the invention of McGuire in the claimed method through normal and usual use by a consumer. Specifically normal and usual use includes a) using the silicone cover, b) choosing to use water to clean the towel, c) using less water than another to clean the towel, and d) drying the towel and reusing the towel a second time. See also MPEP 2112.02.
Alternatively, Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lafond (USPUB 20140250559).
Regarding Claim 10, Lafond discloses a method of using (summary of the invention) a silicone cover (Figs. 2A and 2B; Para. 0014). Regarding the remaining “steps” a method of a) replacing conventional cotton towels with silicone covers; b) eliminating the use of chemical solutions for towel sanitization; c) reducing water consumption and electricity usage by utilizing the easy-to-clean nature of the silicone covers; d) minimizing waste generation by reusing the silicone covers instead of discarding stained towels into landfills/reducing the environmental impact of the beauty industry. -these are all considered to be met by intended use/expected outcomes at discussed above and without further claimed specificity, Lafond’s silicone cover is fully capable of being used in the claimed manner.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the invention of Lafond in the claimed method through normal and usual use by a consumer. Specifically normal and usual use includes a) using the silicone cover, b) choosing to use water to clean the cover, c) using less water than another to clean the cover, and d) reusing the cover a second time. See also MPEP 2112.02.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See any related prior art listed on the 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA K KINSAUL whose telephone number is (571)270-1926. The examiner can normally be reached Monday-Friday 8:30am-5pm.
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, Edward Lefkowitz can be reached at 571-272-2180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANNA K KINSAUL/ Supervisory Patent Examiner, Art Unit 3731