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 .
Status of Claims
This Office Action is in response to the application filed on April 29, 2024. Claims 1-20 are pending. Claims 1 and 13 are independent.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/29/2024 and 04/01/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0042], line 3, “FIGS. 3A-3D” should read “FIGS. 3E-3F”
In paragraph [0046], line 4, “200A” should read “200B”
In paragraph [0046], line 8, “220A” should read “200A”
In paragraph [0046], line 10, “220A” should read “200A”
In paragraph [0046], line 11, “220A” should read “200A”
In paragraph [0050], line 2, “1E-1F” should read “3E-3F”
In paragraph [0050], line 5, “1F” should read “3F”
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 6-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 13-19 of U.S. Patent No.12697733 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in the above indicated claims of the instant application are anticipated by the respective claimed limitations in the above indicated claims of U.S. Patent No. US 12697733 B2. See the claim anticipation mapping below with all matching elements of the claim limitations appear in bold while non-matching elements of the claim limitations are not bolded.
Instant Application 18/648,972
Claims 1-2, 6-16 and 18-20
U.S. Patent No. US 12697733 B2
Claims 1, 3 and 13-19
Independent Claims:
1. A system for applying eyelashes, the system comprising:
1. A system for applying eyelashes, the system comprising:
a flexible printed circuit board (PCB) substrate;
13. The system of claim 1, wherein the system further comprises:
a flexible printed circuit board (PCB) substrate;
a motor base located under the flexible PCB substrate; and
13. …
a motor base located under the flexible PCB substrate; and
plurality of linear actuators coupled to the motor base, wherein the plurality of linear actuators is configured to adjust the flexible PCB substrate.
13. …
one or more linear actuators coupled to the motor base, wherein the one or more linear actuators are configured to adjust the flexible PCB.
13. A method of applying an eyelash, the method comprising:
1. A system for applying eyelashes, the system comprising:
positioning one or more micro-robots onto a flexible printed circuit board (PCB) substrate;
13. The system of claim 1, wherein the system further comprises:
a flexible printed circuit board (PCB) substrate;
…
14. The system of claim 13, wherein the flexible PCB is configured to adjust a pitch, a yaw, a roll, or a combination thereof of the first micro-robot, the second micro-robot, or both.
16. A method of applying eyelashes, the method comprising:
…
positioning the first microrobot and the second micro-robot to apply the eyelash;
adjusting a pitch, yaw, roll, or a combination thereof of the one or more micro-robots with plurality of linear actuators under the flexible PCB substrate; and
13. The system of claim 1, wherein the system further comprises:
…
one or more linear actuators coupled to the motor base, wherein the one or more linear actuators are configured to adjust the flexible PCB.
14. The system of claim 13, wherein the flexible PCB is configured to adjust a pitch, a yaw, a roll, or a combination thereof of the first micro-robot, the second micro-robot, or both.
applying the eyelash with the one or more micro-robots.
16. A method of applying eyelashes, the method comprising:
…
positioning the first microrobot and the second micro-robot to apply the eyelash;
Dependent Claims:
2. The system of Claim 1, wherein the system further comprises:
one or more micro-robots, wherein each micro-robot of the one or more micro-robots comprises a plurality of magnets.
1. A system for applying eyelashes, the system comprising:
a first micro-robot, comprising:
a first plurality of magnets,
…
a second micro-robot, comprising:
a second plurality of magnets,
6. The system of Claim 2, wherein the flexible PCB substrate is configured to adjust a pitch, a yaw, a roll, or a combination thereof of the one or more micro-robots.
14. The system of claim 13, wherein the flexible PCB is configured to adjust a pitch, a yaw, a roll, or a combination thereof of the first micro-robot, the second micro-robot, or both.
7. The system of Claim 2, wherein the one or more micro-robots are configured to apply an eyelash onto a user.
16. A method of applying eyelashes, the method comprising:
…
positioning the first microrobot and the second micro-robot to apply the eyelash;
8. The system of Claim 2, wherein the system further comprises one or more cameras configured to capture image data of a user, the one or more micro-robots, the flexible PCB substrate, or a combination thereof.
15. The system of claim 1, wherein the system further comprises:
one or more cameras to monitor the first micro-robot, the second micro-robot, or both; and
a processor, wherein the processor is configured to receive image data from the one or more cameras,
9. The system of Claim 8, wherein the one or more cameras is communicatively coupled with a processor, and wherein the processor is configured to determine a desired height of the plurality of linear actuators, a desired position of the one or more micro-robots, or both.
15. The system of claim 1, wherein the system further comprises:
…
a processor, wherein the processor is configured to receive image data from the one or more cameras, and adjust a position of the first micro-robot, the second micro-robot, or both based on the image data.
10. The system of Claim 2, wherein the one or more micro-robots further comprise an applicator.
1. A system for applying eyelashes, the system comprising:
a first micro-robot, comprising:
…
a wire comb, wherein the
wire comb includes an attachment
end;
…
a second micro-robot, comprising:
a tube configured to accept the
wire comb, and
a gripper configured to secure
and release an eyelash.
11. The system of Claim 10, wherein the applicator is disposed at an angle.
3. The system of claim 1, wherein the attachment end is disposed at substantially a 45-degree angle from the wire comb.
12. The system of Claim 11, wherein the flexible PCB substrate is further configured to adjust an angle of attack of the applicator.
14. The system of claim 13, wherein the flexible PCB is configured to adjust a pitch, a yaw, a roll, or a combination thereof of the first micro-robot, the second micro-robot, or both.
14. The method of Claim 13, wherein the method further comprises:
monitoring the one or more micro-robots with a camera system;
transmitting image data of the one or more micro-robots to a processor; and
adjusting a height of at least one linear actuator of the plurality of linear actuators.
17. The method of claim 16, wherein the method further comprises:
monitoring the first micro-robot, the second micro-robot, or both;
transmitting image data to the processor; and
adjusting a position of the first micro-robot, the second micro-robot, or both based on the image data.,
15. The method of Claim 13, wherein the method further comprises:
adjusting an angle of attack of an applicator of the one or more micro-robots with the plurality of linear actuators.
3. The system of claim 1, wherein the attachment end is disposed at substantially a 45-degree angle from the wire comb.
16. The method of Claim 13, wherein the method further comprises:
positioning a first micro-robot to apply a first eyelash; and
positioning a second micro-robot to apply a second eyelash.
16. A method of applying eyelashes, the method comprising:
…
positioning the first microrobot and the second micro-robot to apply the eyelash;
18. The method of Claim 13, wherein the method further comprises:
adjusting a position of the one or more micro-robots.
17. The method of claim 16, wherein the method further comprises:
…
adjusting a position of the first micro-robot, the second micro-robot, or both based on the image data.
19. The method of Claim 13, wherein positioning the one or more micro-robots comprises sliding the one or more micro-robots over the flexible PCB substrate.
18. The method of claim 16, wherein positioning the one or more micro-robots comprises sliding the one or more micro-robots over the PCB.
20. The method of Claim 13, wherein positioning the one or more micro-robots comprises levitating the one or more micro-robots over the flexible PCB substrate.
19. The method of claim 16, wherein positioning the one or more micro-robots comprises levitating the one or more micro-robots over the PCB.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to a system and method of applying eyelashes with micro-robots using linear actuators and flexible printed circuit board (PCB) substrate. The difference between the claims at issue is that in US 12697733 B2 the micro-robots are limited to a first and second micro-robot, while the instant application more broadly claims a plurality of micro-robots as well as an applicator, rather than and applicator comprising a wire comb, grippers, and an attachment end, therefore anticipates the broader claims of the instant application. As such a double patenting rejection is warranted here.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the attached form PTO-892.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER NING whose telephone number is (408) 918-7664. The examiner can normally be reached Monday - Thursday and alternate Fridays, 7:30-4:30 PT.
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, Peter D. Nolan can be reached at (571) 270-7016. 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.
/P.Y.N./Examiner, Art Unit 3661
September 25, 2026
/PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661
Prosecution Insights