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 .
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.
Joint Inventors
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 29th, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
Claim 10 of this application is patentably indistinct from claim 1 of Application No. 18/649,034. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Application No. 18/649,034. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 is anticipated by claim 1. The only variance in these claims is the inclusion of functional language for the “second micro-robot” in claim 10 including the limitation of “configured to apply eyelashes”. Claim 10 further depends upon a base claim directed to “an eyelash dispenser” being an overall system including the two micro-robots with their respective components. Examiner notes because the structure and function of the system comprising the two micro-robots are exactly the same, claim 10 of the instant application is in essence a “species” of the generic invention of claim 1 of U.S. Patent Application No. 18/649,034. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 7, 9 and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Harding et al. (US Patent Pub. No. 2021/0235847 A1), herein “Harding”.
Regarding Claim 1, Harding discloses an eyelash dispenser (See 0006, “[…] a machine and method which aid in the application of eyelash extensions by a robotic mechanism.”) comprising:
one or more micro-robots (See 0087, “[…] provide two robots […]”); and
one or more single eyelashes, eyelash clusters, or a combination thereof, wherein each micro-robot of the one or more micro-robots is configured to carry and apply a single eyelash or an eyelash cluster (See 0087, “[…] provide two robots, one orienting a first set of tweezers for isolating an eyelash and the second robot orienting a second set of tweezers for placing an extension. In the case where the two robots are both six axis arms, the arrangement is roughly analogous to a human doing eyelash extension with each of their two arms controlling a set of tweezers.”).
Regarding Claim 4, Harding further discloses the dispenser of Claim 1, wherein each micro-robot of the one or more micro-robots comprises a plurality of magnets (See 0079, “[…] eyelash isolator mechanism 254 is implemented as a four-bar linkage as shown here, an optical or magnetic encoder can be put on one of the joints of the linkage to detect motion continuously […] a magnetic or inductive proximity sensor can be used to detect the approach of the bars as the mechanism is moved. One skilled in the art of automated equipment design will note that there are many ways in which this can be accomplished.” Examiner notes magnetic encoders contain magnets as the key portion of their sensing elements).
Regarding Claim 7, Harding further discloses the dispenser of Claim 1, wherein the one or more micro-robots further comprise an applicator (See 0074, “[…] robotic mechanism 219 were holding a tool such as a nail polish applicator in tweezers […]”).
Regarding Claim 9, Harding further discloses the dispenser of Claim 7, wherein the applicator is a double pronged applicator (See 0074 as referenced above. See also 0136, “[…] either tweezers or a double probe as described above can be positioned exactly around this single eyelash […]”).
Regarding Claim 12, Harding further discloses the dispenser of Claim 1, wherein the one or more eyelashes or eyelash clusters comprise an eyelash glue (See 0108, “Glue 714 is shown schematically as a drop between each eyelash and extension 715, which is at a proper extension angle […]” See also 0135, “[…] the robot can be configured to glue some extensions specifically in clusters.”).
Allowable Subject Matter
Claims 2-3, 5-6, 8 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The available prior art does not disclose, teach, or suggest in combination the specific structural components comprising the claimed eyelash dispenser. The eyelash dispenser system comprising multiple micro-robotic mechanisms for housing eyelashes in slots, drum pods preloaded with eyelashes, the chemical makeup and arrangement of the magnets disposed on each robot, and the separation arm for further mechanical manipulation of the front micro-robot in particular are novel improvements over other systems for dispensing and applying eyelashes or any other makeup product(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pelrine et al. (US Patent No. 9,647,523 B2), which is directed towards automated robotic placement of extensions and associated robotic end effectors.
Dewey et al. (US Patent No. 12,127,617 B2) which is directed towards eyelash clusters and artificial lash arrangements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryant Tang whose telephone number is (571)270-0145. The examiner can normally be reached M-F 8-5 CST.
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, Thomas Worden can be reached at (571)272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYANT TANG/Examiner, Art Unit 3658
/JASON HOLLOWAY/Primary Examiner, Art Unit 3658
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