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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 3/23/26 is acknowledged.
Claim(s) 14-18 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of curling eyelashes, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/23/26.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 12/23/24 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “air propulsion unit”, “heating element” of claim 1; “oval shape disposed normal to the cylinder” of claim 2 (the applicator interface is concave so it is by definition not “normal to the cylinder”); “oval-shaped applicator interface” of claim 3 (the only shape illustrated by applicant is a flattened ellipse not an oval (see Fig 3A) the term oval is improper and contradicts the meaning of the shape); “cartridge” of claim 5; “microfluid dispensing unit” of claim 6; “circuitry to read the tag and recognize a temperature parameter of the thermos-reactive formula”; “temperature regulation unit” of claim 8; “thermoelectric module” of claim 11; “air blower or compressed air cartridge” of claim 12; “soft pad placed perpendicular to the applicator interface” of claim 13 (currently these elements are not perpendicular, see Figs 1 & 3); must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Applicant presents a single cross-sectional view of the device and that view shows hatching and an entirely hollow inside of the device. It does not show a fan, or any type of compressed air cartridge nor is it clear how one would be incorporated; it does not illustrate a heater or where this heater would be located nor any kind of circuitry or sensors capable of reading any sort of tag nor is a tag or any type of cartridge illustrated, no temperature sensors are discussed or illustrated so no temperature regulation unit is illustrated nor is any thermoelectric cooler illustrated to make clear how a TEC would be able to heat and cool the applicator interface as illustrated and presented.
Sheets 1-5 of the figures are objected to because the drawing sheets are numbered improperly. See 37 C.F.R. 1.84(t), which requires the drawing sheet numbering must be larger than the numbers used as reference characters to avoid confusion.
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 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(s) 5-12 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 5-7: each recites “a thermo-reactive formula”; however, applicant’s disclosure does not specify what “formulas” or compositions this language is meant to include or exclude making it impossible for one of ordinary skill in the art to make or use the invention because what is “a thermo-reactive formula” when not a single example is provided. Applicant discusses that the claimed device performs better than “traditional mascara” [0003 & 0007 & 0014], but then fails to ever disclose what this “formula” is or includes thereby precluding one ordinary skill in the art from making the invention. This is an enablement rejection.
Claim 7: recites “ the cartridge comprises a tag, and the device includes circuitry to read the tag and recognize a temperature parameter for the thermo-reactive formula”; however, no cartridge is illustrated nor any “tag” nor any circuitry or sensors, etc. to explain what structure this language is actually requiring or how anything is “read” or “recognized” nor what “a temperature parameter” is. Is this a melting point, or a freezing point, or a room temperature viscosity, none of the above, all of above? How does the device “read and recognize” this “tag” without any sensors? The disclosure precludes one of ordinary skill in the art from making the invention as claimed. This is an enablement rejection.
Claim 8: this claim recites “further comprising a temperature regulation unit that heats air to the temperature parameter that activates the thermo-reactive formula”; however, none of these things are defined or described in a way that would enable one of ordinary skill in the art to make and/or use the invention as claimed. The only sensor discussed is a temperature sensor, but this claim depends from claim 7, which requires that the device “reads and recognizes the temperature parameter” based on the formula in the cartridge with “circuitry” without explaining or claiming any type of processor or computer or sensors capable of achieving any of this. The invention as currently claimed is not sufficiently illustrated and described in such a way as to enable one of ordinary skill in the art to make and/or use the invention. This is an enablement rejection.
Claim 9: recites “the air propulsion unit delivers cooled air to the vents”; however, no cooling device is recited in any of the claims only a “heating element”. One of ordinary skill in the art would not know how to deliver cool air in a device lacking any type of heat sink or cooler of some kind, as claimed. This is an enablement rejection.
Claim 10: this claim recites “to turn off the heating element after elapse of a pre-programmed amount of time”; however, “pre-programmed” into what? No CPU or processor or sensor is claimed and according to applicant’s disclosure “circuitry” should include CD-ROMs [0053]. The figures and the disclosure fail to enable one of ordinary skill in the art to make the invention having a CD-ROM that “turns off the heating element after elapse of a pre-programmed amount of time”. This is an enablement rejection.
Claim 11: recites “the heating element is a thermoelectric module that heats and cools the air from the air propulsion unit”; however, there are no figures illustrating the “heating element” nor any type of heat sink or any kind of heat transfer elements nor would one of ordinary skill in the art understand how a TEC is being used to simultaneously heat and cool the air as applicant appears to claim. This is an enablement rejection.
Claim 12: this claim recites “wherein the air propulsion unit comprises an air blower or a compressed air cartridge”; however, applicant does not illustrate either of these components within the device or as a part of the device and there is no clear place where a “compressed air cartridge” would work with the device either thereby precluding one of ordinary skill in the art from making and/or using the invention. This is an enablement rejection.
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) 1-13 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 pre-AIA the applicant regards as the invention.
Claim 1: this claim lacks any structural relationship between the “air propulsion unit” and the “applicator interface or the device” and between the “heating element” and “the applicator interface or the device”. The way the claim is currently written there is no clear applicator structure being claimed (for example “a handle with an applicator interface at one end of the handle; an air propulsion unit housed within the handle”) instead the claim is presented essentially as a list only joined with functional language, which makes the metes and bounds of the claim unclear.
Claims 2-3: each claim recites “an oval shape”; however, the definition of an oval is a curved shape with no straight sides. Applicant’s “applicator interface” is explicitly illustrated in Fig 3A and all of the Figures as having one flat side, which by definition is not an “oval shape”. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. The term “oval-shaped” is used by the claim to mean “flattened ellipse,” while the accepted meaning is “an egg shape with no flat sides.” The term is indefinite because the specification does not clearly redefine the term. For examination purposes, the claim will be treated as reciting “a flattened elliptical shape”. Clarification or correction is requested.
Claim 4: this claim recites “a profile of the rib includes a concave curve”; however, “a profile of the rib” is unclear. First, “the rib” does not clearly refer back to “the plurality of ribs” set forth in claim 1. Second, it appears the ribs are concave so it is unclear what the language “profile” is supposed to require or what limitations that is supposed to add. For examination purposes, the claim will be treated as reciting “wherein each rib of the plurality of ribs has a concave shape”. Clarification or correction is requested.
Claim 5: recites “a thermo-reactive formula”; however, applicant’s disclosure does not specify what “formulas” or compositions this language is meant to include or exclude making the metes and bounds of the claims unclear. This claim also requires a “cartridge”; however, no cartridge is illustrated nor anywhere for a cartridge to be received making the metes and bounds of the claimed subject matter unclear. For examination purposes, the claim will be treated as reciting “mascara”. Clarification or correction is requested.
Claim 6: recites “a microfluid dispensing unit”; however, it is unclear what structure this is supposed to mean or imply because no dispensing unit is illustrated or described in applicant’s disclosure making it unclear what the metes and bounds of this claim language are. Furthermore, what is the limitation “microfluid” supposed to add to the claim? For examination purposes, the claim will be treated as reciting “a pump”; however, it is noted this change does not fix the drawing issues. Applicant still fails to illustrate any interior components of the device despite providing a cross-sectional view (there is no heater, no air propulsion unit, no cartridge, no tag, circuitry, heat sink, battery, or power cord illustrated making it impossible to determine what structure is implied by the language or how the device would work). Clarification or correction is requested.
Claim 8: this claim recites “further comprising a temperature regulation unit that heats air to the temperature parameter that activates the thermo-reactive formula”; however, no “temperature regulation unit” or “formula” is illustrated or clearly defined by applicant’s disclosure. As discussed above, applicant briefly states in [0003 & 0007 & 0014] that the “formula” is an improvement on “traditional mascara”, but no formula is provided or described making the metes and bounds of these limitations impossible to determine. Additionally, this language is confusing because claim 1 requires the heating element heats the air and then this claim requires the temperature regulation unit heat the air; so how many heaters is applicant claiming? Clarification or correction is requested.
Claim 9: recites “the air propulsion unit delivers cooled air to the vents”; however, no cooling device is recited in any of the claims only a “heating element”. It is unclear how this “unit” delivers “cooled air” without claiming some sort of cooler. The metes and bounds of the claims are unclear because does applicant think this functional language is requiring a cooling unit or is applicant trying to claim some kind of chemical reaction inside of the device causing this? Clarification or correction is requested.
Claim 10: this claim recites “to turn off the heating element after elapse of a pre-programmed amount of time”; however, “pre-programmed” into what? No CPU or processor or sensor is claimed and “circuitry” does not clearly require nor define the necessary components to achieve the claimed function. When looking to applicant’s disclosure, applicant asserts that “circuitry” should include CD-ROMs” [0053]; however, it is unclear how this would “turn off” a heating element after a pre-programmed amount of time. The metes and bounds of the claims are unclear because the definition of “circuitry” is confusing. Applicant can overcome this by claiming the actual structure required to perform the function, rather than broadly using the term “circuitry”. Clarification or correction is requested.
Claim 11: recites “the heating element is a thermoelectric module that heats and cools the air from the air propulsion unit”; however, this language is unclear because it appears applicant is claiming the TEC heats and cools the air at the same time which is not how a TEC works. Reversing current in a TEC changes its function from heating to cooling, so this is confusing. Furthermore, no heater is illustrated nor any heat sink(s) making it unclear how this TEC heats or cools the air as claimed. Clarification or correction is requested.
Claim 13: this claim recites “the soft pad is placed perpendicular to the applicator interface; however, the applicator interface is concave, not flat and the pad (112, Fig 1) is angled downwardly (see Figs 1 & 3B), so the soft pad is not perpendicular to the applicator interface. The term “perpendicular” is indefinite because it has a known accepted meaning of forming a 90 degree angle with something; the specification does not clearly redefine the term. For examination purposes, the claim will be treated as reciting “the soft pad is angled relative to the applicator interface”. Clarification or correction is requested.
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) 1, 5, 7, 9-10, and 12, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chae-Jung (WO 2021015361).
Claims 1 and 12: Chae-Jung discloses an eyelash device comprising: an applicator interface including a concave molding surface (see Fig 3); a plurality of ribs (230) extending across/along the concave molding surface (see Fig 3); a plurality of vents (215) between the adjacent ribs (see Fig 4) and a heating element (130) [0073-0074] that heats air prior to exiting the vents by an air propulsion unit in the form of a motorized fan/blower (120+121) that delivers the air to the vents (see Figs 3-4).
Claim 5: the term “thermo-reactive formula” is undefined by the claims. The device includes a battery (150) which is a known cartridge containing thermally sensitive chemicals and electrical components. So as best understood and under broadest reasonable interpretation this constitutes the device including a cartridge with a thermos-reactive formula.
Claims 7-8: the disclosure fails to illustrate a “tag” or the “temperature parameter” or the “thermo-reactive formula”. The device includes circuitry that controls the temperature of the air moving through the device and retains the temperature at a level that does not cause the battery to explode [0073-0074]. So given how broad the claim language is, this constitutes ‘the battery cartridge including a “tag”’ and it includes circuitry that is capable of controlling the temperature of the device based on pre-programmed parameters [0073-0074] so the circuitry is capable of being programmed as described and the device has all the actual structure claimed.
Claims 9-10: The temperature control unit is described as turning the heater on and off in order to maintain the temperature of the air at about 50oC, which the office interprets as the device is capable of delivering cooled air to the vents because the device is not described as turning off entirely, simply as turning off the heater to lower the temperature of the output air to stay within the prescribe threshold. This also means the circuitry turns off the heating element after this “pre-programmed amount of time” to reach 50oC.
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.
Claim(s) 1-10 and 12, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20070286831) in view of Young (CN 213188518).
Claims 1, 5-6, and 12: Kamada discloses an eyelash device (100+20) comprising: an applicator interface (30) including a concave central trough forming a “concave molding surface”; a plurality of ribs (32) extending across/around/surrounding the trough/concave molding surface; a cartridge (100) including a “microfluid dispensing unit” (100; see Fig 6-7) that dispenses a thermo-reactive mascara formula (60) to the applicator interface (see Figs 6-7 & 19-22); a heating element (40) is housed in the concave trough and the heating element heats and melts the thermo-reactive formula [0005 & 0050]. Kamada discloses the invention essentially as claimed except for an air propulsion unit/fan that delivers air to vents between adjacent ribs.
Young, however, teaches a heated eyelash applicator that includes an applicator interface (see Fig 4) including a plurality of ribs (402 & 403) extending across the applicator surface (see Fig 4). The device includes two distinct heaters (300 & 600); one for heating the applicator interface directly for direction application to the lashes (600) and the second heater (300) is for heating the air inside the device that is pushed through the device interior by a fan (500) in order to provide heated air to a series of vents (440) located between the ribs (403 & 402). Young explicitly teaches providing heated eyelash applicators with two heaters with one of the heaters including a fan and the other heater being a conductive heater only in order to allow a user to both curl and dry their eyelashes with a single device. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the heated eyelash applicator of Kamada to include a second heater with a fan and the vents between the ribs as prescribed by Young in order to allow a user to dry their lashes with the device after applying mascara thereto.
Claim 2: the office notes that while applicant claims an “oval shape” no ovals are illustrated or disclosed by applicant. Instead, it appears applicant is attempting to describe a flattened ellipse as an oval, which is improper as this is contrary to the dictionary definition of an oval. However, Kamada discloses the handle and the applicator interface each having a cross-sectional shape of a flattened ellipse (see Figs 1 & 7). Since the proposed modification does not change the handle shape, this means modified Kamada discloses the invention essentially as claimed except for the handle having a cylinder shape that transitions to this flattened ellipse (as best understood this is what applicant means by “oval”) shape and the applicator interface forming the oval-shape. However, since it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See MPEP 2144.04(IV)(B). It appears that the disclosed device would perform equally well shaped as disclosed by Kamada. There is no reason for the specific cylindrical handle shape transitioning to an elliptical shape instead of being flattened elliptical its entire length as illustrated by Kamada. The proposed modification to provide the handle as a cylinder shape that transitions into the disclosed flattened elliptical shape would result in the flattened elliptical cross-section shape of the applicator interface extending normal to the cylindrical handle.
Claim 3: modified Kamada discloses the invention of claim 2 as outlined above and Kamada discloses the ribs extend across the length and width dimensions of the oval-shaped applicator interface (see Figs 1-3). So modified Kamada discloses these limitations.
Claim 4: modified Kamada discloses the invention essentially as claimed except for one of the ribs of the plurality of ribs being concave. However, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the device of modified Kamada by providing the ribs with a curved shape or concave, since it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See MPEP 2144.04(IV)(B). It appears that the disclosed device would perform equally well shaped as disclosed by Kamada.
Claims 7-10: the heater is described as “controlled” to heat the applicator interface to a temperature of 50-100oC [0054], which the office interprets as the device includes circuitry to recognize a temperature parameter of the thermo-reactive formula since it recognizes the melting point of the formula and this temperature parameter being a pre-prescribed “tag” that the circuitry was pre-programmed to accommodate since the cartridge is “tagged” or allocated for a particular applicator when packaged together. In order to maintain the interface at the prescribed temperature as disclosed, the circuit must be capable of turning off the heating element and thereby allowing the unit to blow cool air and warm air to regulate the temperature of the interface as described.
Claim(s) 4, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20070286831) in view of Young (CN 213188518) as applied to claim 1 above and further in view of Gueret (US 7497218).
Claim 4: modified Kamada discloses the invention essentially as claimed except for one of the ribs of the plurality of ribs being concave. Gueret, however, teaches a heated mascara applicator (1) including aa heated (4) applicator interface (see Figs 1-3) that carries a series of ribs (6) extending from the applicator interface around the heated portion (4, see Figs 1-4) and Gueret discloses that these ribs can extend straight (see Figs 4 & 9-10) or the ribs can be curved (see Figs 11-12) such that they include/form a “concave curve” with their bottom surface (see Figs 11-12). In other words, Gueret teaches it is an obvious matter of design choice to provide ribs on a heated mascara applicator to be straight or include a concave curvature depending on preference. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the applicator of modified Kamada by providing the ribs with a curvature in view of Gueret since Gueret teaches this to be an obvious matter of design choice known in the art.
Claim(s) 11, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20070286831) in view of Young (CN 213188518) as applied to claim 1 above and further in view of Spier (US 3382876).
Claim 11: modified Kamada discloses the invention essentially as claimed except for the heater including a thermoelectric module (which are known to be capable of heating or cooling) instead of the solid bar wrapped in a heater coil. Spier, however, teaches a heated eyelash curler and explicitly teaches that heaters comprising a solid bar with a coiled heated wire are known equivalents to thermoelectric modules (Col 3, 10-30). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the eyelash applicator of modified Kamada by providing the heater as a thermoelectric module in view of Spier since Spier teaches this to be an old and well known equivalent heater for use in eyelash curlers at least since 1966.
Claim(s) 13, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamada (US 20070286831) in view of Young (CN 213188518) as applied to claim 1 above and further in view of Duncan (US 20090003917).
Claim 13: modified Kamada discloses the invention essentially as claimed except for a pad on the handle of the device, which would constitute the pad being “adjacent” to the applicator interface and angled relative to the applicator interface. (It is noted that applicant’s own pad is in fact not perpendicular to the applicator interface as applicant attempts to claim; see 112 rejections above). Duncan, however, teaches providing hand tools with a neoprene foam pad (105) in order to provide a comfortable ergonomic grip to the tool during use [0023]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing (or the time of invention if Pre-AIA ) to modify the modified applicator of Kamada by providing the handle of modified Kamada with a neoprene pad grip in view of Duncan in order to make the tool more comfortable to grip during use. By providing the neoprene grip taught by Duncan, this would result in the pad being angled relative to the applicator interface because the pad surrounds the handle so it is 0-360o relative to the applicator interface depending on where on the grip one measures, thereby meeting the claim limitations.
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
Prosecution Insights