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 .
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 11 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. Claim 11 requires the sleeve have an annular shape, where this limitation is not supported by the original disclosure. The original written description does not describe the sleeve 15, which is intended to be assembled to the stem, as being annular nor do the drawings depict the sleeve as annular. As best shown in Figure 2, the sleeve 15 appears to be a solid structure.
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.
Claims 1-6 and 8-15 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.
Claim 1 recites the core being a single branch and having a first segment which surrounds a second segment thereof. It is unclear how the core can be both a single branch and yet also have a portion which surrounds itself. Perhaps the term “branch” is being used in an unconventional manner and Applicant intended to require the core be an integral structure with two segments.
Claim Rejections - 35 USC § 102
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.
Claims 1-5 and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Balestrini et al. (US 20190000212).
Regarding claim 1, Balestrini et al. disclose an applicator end piece (10, Refer to Figures 1-8) for a cosmetic product extending along a longitudinal extension direction, referred to as the main direction (X), and comprising a core (20,15,17) extending from a stationary end (end at/near 17,14) towards a free end (Refer to annotated Figures 1 and 4 below) and forming a cavity (23), the core being a single branch (core is a single piece/branch, Refer to Figure 1 below) a first segment (Refer to annotated Figures 1 and 4 below) of the core surrounding at least one second segment (Refer to annotated Figures 1 and 4 below) of the core, the free end of the core being movable along a path delimited by said first segment (Refer to Figures 2-3 and 5-6).
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Regarding claim 2, Balestrini et al. disclose the first segment comprises a ring serving as a lateral abutment for the free end (Refer to Figures 1-6 and annotated Figures 1 and 4 above).
Regarding claim 3, Balestrini et al. disclose the second segment acts as a cooperative abutment for the free end during movement along said path (Refer to Figures 1-6).
Regarding claim 4, Balestrini et al. disclose the core has at least one return (curved portion at 16) delimiting the cavity (23) (Refer to Figures 1-6).
Regarding claim 5, Balestrini et al. disclose the cavity has a variable volume, a displacement of the free end causing the volume of the cavity to vary (Refer to Figures 1-6).
Regarding claim 8, Balestrini et al. disclose the first segment is located at a level of the stationary end (Refer to Figures 1-6 and annotated Figures 1 and 4 above).
Regarding claim 9, Balestrini et al. disclose the first segment is located at a level of the free end (Refer to Figures 1-6 and annotated Figures 1 and 4 above).
Regarding claim 10, Balestrini et al. disclose the applicator end piece comprises a sleeve (ring portion Refer to annotated Figures 1 and 4 above, or 14 Refer to Figures 1-6) intended to be assembled to a stem, the sleeve is continuous with the stationary end of the core.
Regarding claim 11, Balestrini et al. disclose the sleeve has an annular shape (ring portion as annotated in Figures 1 and 4 above has an annular shape; alternatively, 14 is the same in shape as Applicant’s sleeve 15, Refer to Applicant’s Figure 2.), wherein the first segment comprises a ring (Refer to annotated Figures 1 and 4 above), and the ring is joined to the sleeve.
Regarding claim 12, Balestrini et al. disclose the cavity (23) has a predefined shape (Refer to Figures 1 and 4).
Regarding claim 13, Balestrini et al. disclose the core is at least partly textured (Refer to paragraphs 0128-0129).
Regarding claim 14, Balestrini et al. disclose the applicator end piece is a monolithic part (Refer to Figures 1-8 which depict applicator endpiece as a monolithic part and paragraph 0116 which states the applicator endpiece/tip may be over-molded on or through rod 40, meaning it is a monolithic part). The claimed phrases “obtained without assembly and/or deformation and by additive manufacturing” is being treated as a product by process limitation; that is the applicator endpiece is manufactured without an assembly process and/or without a deformation process and through an additive manufacturing process. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Balestrini et al. disclose the monolithic construction; thus, the structure implied by the steps is provided.
Regarding claim 15, Balestrini et al. disclose an applicator assembly for a cosmetic product, comprising: a container (50) comprising a body (51) forming a reservoir intended to contain the cosmetic product (Refer to Figures 7 and 8), and an applicator end piece (10) for the cosmetic product according to claim 1 (Refer to Figures 1-6, annotated Figures 1and 4 above and rejection of claim 1 above) adapted to be attached to the container, so that the applicator end piece is housed inside the reservoir (Refer to Figure 7).
Claims 1-5 and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pires et al. (US 20170071315).
Regarding claim 1, Pires et al. disclose an applicator end piece (6, 100, 200, 300, 400 Refer to Figures 1-6b) for a cosmetic product extending along a longitudinal extension direction, referred to as the main direction (X), and comprising a core (9,101,201,301,401) extending from a stationary end (10 or 10 and 11, unlabeled in some embodiments but equivalent portion(s) is/are the stationary end) towards a free end (Refer to annotated Figures 2b and 3a below, where similar interpretations are applicable to the embodiments of Figures 4a-6b) and forming a cavity (spaces between segments), the core being a single branch (core is a single piece/branch), a first segment (Refer to annotated Figures 2b and 3a below, where similar interpretations are applicable to the embodiments of Figures 4a-6b) of the core surrounding at least one second segment (Refer to annotated Figures 2b and 3a below, where similar interpretations are applicable to the embodiments of Figures 4a-6b) of the core, the free end of the core being movable along a path delimited by said first segment (movement of free end is delimited by the first segment Refer to Figures 1-6B).
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Regarding claim 2, Pires et al. disclose the first segment comprises a ring serving as a lateral abutment for the free end (Refer to Figures 1-6b, the first segment forms a ring. As shown in Applicant’s Figure 2, the first segment 7, ring 25 and 3b all form the same structure; similarly, Pires et al. provides the first segment, ring and first end as a cooperating/same structure.).
Regarding claim 3, Pires et al. disclose the second segment acts as a cooperative abutment for the free end during movement along said path (Refer to Figures 1-6b).
Regarding claim 4, Pires et al. disclose the core has at least one return (bend/curve) delimiting the cavity (Refer to Figures 1a-6b).
Regarding claim 5, Pires et al. disclose the cavity has a variable volume, a displacement of the free end causing the volume of the cavity to vary (Refer to Figures 1-6b, movement of the free end changes (increases or decreases) the volume of the cavity).
Regarding claim 8, Pires et al. disclose the first segment is located at a level of the stationary end (a portion of the first segment is at the stationary end, Refer to annotated Figures above and Figures 1-6b).
Regarding claim 9, Pires et al. disclose the first segment is located at a level of the free end (a portion of the first segment is at the free end, Refer to annotated Figures above and Figures 1-6b).
Regarding claim 10, Pires et al. disclose the applicator end piece comprises a sleeve (unlabeled sleeve portion which is inserted in cavity of 4, best shown in Figure 1) intended to be assembled to a stem, the sleeve is continuous with the stationary end of the core (Refer to Figure 1).
Regarding claim 11, Pires et al. disclose the sleeve has an annular shape (Refer to Figure 1 of Pires and Figure 2 of Applicant’s invention depicting sleeve 15, the sleeves are comparable/similar in shape and both fit into a cylindrical channel of a stem), wherein the first segment comprises a ring (the first segment forms a ring, Refer to annotated Figures above and similar structure of the other embodiments of Figures 4a-6b), and where the ring is joined to the sleeve (the ring/first segment is joined to the sleeve portion which fits in the stem 4).
Regarding claim 12, Pires et al. disclose the cavity has a predefined shape (Refer to Figures 1-6b).
Regarding claim 13, Pires et al. disclose the core is at least partly textured (Refer to paragraphs 0067 and 0068).
Regarding claim 14, Pires et al. disclose the applicator end piece is a monolithic part (Refer to Figures 1-6b). The claimed phrases “obtained without assembly and/or deformation and by additive manufacturing” is being treated as a product by process limitation; that is the applicator endpiece is manufactured without an assembly process and/or without a deformation process and through an additive manufacturing process. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Pires et al. disclose the monolithic construction; thus, the structure implied by the steps is provided. Additionally, Pires et al. disclose the monolithic part is obtained without assembly as it is a single monolithic piece. Pires et al. also teach the applicator end piece can be made in one piece by molding or the like (Refer to applicator 0022, 0028, 0064, 0104) and thereby without deformation.
Regarding claim 15, Balestrini et al. disclose an applicator assembly for a cosmetic product, comprising: a container (2,7) comprising a body (2) forming a reservoir intended to contain the cosmetic product (Refer to paragraph 0096), and an applicator end piece (6,100,200,300,400) for the cosmetic product according to claim 1 (Refer to Figures 1-6b, annotated Figures above and rejection of claim 1 above) adapted to be attached to the container, so that the applicator end piece is housed inside the reservoir (Refer to Figure 1).
Response to Arguments
Applicant's arguments filed 04/07/2026 have been fully considered but they are not persuasive.
Argument: The only part of Balestrini that can properly be considered as a core is portion 15, not applicator part 20 as outlined in the rejection. No part of element 15 is moveable along a path delimited by a first segment of the core, where the first segment of the core surrounds at least one second segment of the core.
Response: It is unreasonable to say only portion 15 is the core as the same interpretation is not applicable to Applicant’s invention. As shown in Figure 2 the core 3 includes various segments not just the centrally extending portion. The rejection of record applies a similar interpretation to Balestrini where the segments forming the applicator (segments 20,15,17) are referred to as the core. It is unclear how Applicant can assert that the free end of the core of Balestrini is not movebale along a path delimited by the first segment which surrounds the second segment, when the same structure is provided in Balestrini as in Applicant’s invention. Figure 2 of Applicant’s invention and annotated Figure 1 of Balestrini are provided side-by-side below for comparison and to highlight the same structures. Applicant’s invention provides a first segment 7 and free end 3b which refer to the same structure. The first segment 7 is formed as a ring 25 and surrounds the second segment 9. Similarly, Balestrini provides a first segment or ring which defines a first end and this first segment or ring surrounds the second segment. It is limited in movement the same way Applicant’s invention is limited.
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Argument: Balestrini does not provide a single branch as required by the amended claim language.
Response: It is unclear how Applicant’s invention can be considered a single branch, yet Balestrini’s invention cannot be considered a single branch. Applicant appears to be applying different interpretations of the word branch to each invention, where a broader interpretation is applied to Applicant’s invention and a narrow interpretation is applied to the prior art. Applicant’s invention has different segments separated by spaces and a portion encircling or surrounding another portion and this is considered a single branch by Applicant. In this light, Balestrini also provides a single branch.
Applicant’s claims are very broad and read on many different shapes. It is suggested Applicant amend the claims to explain how various portions of the core extend, bend, etc. to describe the shape depicted in Figures 1, 2 and 10.
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 TATIANA L NOBREGA whose telephone number is (571)270-7228. The examiner can normally be reached M-F 8am-4pm.
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/TATIANA L NOBREGA/Primary Examiner, Art Unit 3799
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