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 .
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 60-71 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,974,621. . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Objections
Claims 69-71 are objected to because of the following informalities:
Claim 69 is listed twice.
For examination purposes claims have been renumbered as follows:
Claim 69 is renumbered Claim 70.
Claim 70 is renumbered Claim 71.
Claim 71 is renumbered Claim 72.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a spacer mechanism…configured to be operable in claim 60.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 60-72 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.
In claims 60 and 72 there is an inconsistency in the language of the claim and that of the preamble “a false eyelash applicator” thus making its scope unclear. Claim 60 recites a false eyelash applicator with the eyelashes only functionally recited, thus indicating that the claims are directed to the subcombination, the false eyelash applicator. However, line 29 positively recites “said eyelash band”, thus indicating that the claim is directed to the combination of the applicator and false eyelash. As such it is unclear whether applicant intends the claim to be drawn to the combination or the subcombination. Applicant is hereby required to indicate which, the combination (false eyelash applicator and false eyelash) or subcombination (the false eyelash applicator) claim 60 is intended to be drawn and make the language consistent with this intent. For examination purposes, these claims will be considered as drawn to the combination. Claim 72 positively recites “a false eyelash” thus indicating that the claim is directed to the combination of the applicator and false eyelash. As such it is unclear whether applicant intends the claim to be drawn to the combination or the subcombination. Applicant is hereby required to indicate which, the combination (false eyelash applicator and false eyelash) or subcombination (the false eyelash applicator) claim 60 is intended to be drawn and make the language consistent with this intent.
Claim 60, line 36 states “a gap” it is unclear if this gap is referring back to “the air gap” or if applicant is setting forth a separate and distinct gap. It will be examined as the air gap.
Claim 71, line 1, “said latch mechanism” lacks a prior antecedent.
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.
Claim(s) 60, 61, 63, 67, and 72 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panda (US 3,511,248).
Panda discloses a false eyelash applicator comprising a first clamp member (62) and a second clamp member (64) the first clamp has a first outer side; wherein the second clamp member has a second outer side; wherein at least one of the first outer side and the second outer side has a substantially convex curved shape in a horizontal plane (see Figure 10); and a handle portion (60), integrated with or extending from, the first clamp member (62) and the second clamp member (64), for manipulating the first clamp member and the second clamp member; wherein the first clamp member and the second clamp member are operably coupled together to adjust the first clamp member and the second clamp member between an open configuration (Figure 10), a neutral configuration (Figure 10) and a substantially closed configuration (Figure 6); wherein in the open configuration, the first clamp member (62) and the second clamp member (64) are open and the first outer side is vertically spaced apart from the second outer side (see Figure 10) in regards to the limitation of allowing “to allow a plurality of false lashes distributed along an eyelash band of an inverted false eyelash to be placed between the first outer side and the second outer side” the eyelash is capable of being inverted placed into the applicator; wherein in the closed configuration; the first clamp member (62) and the second clamp member (64) are closed together to allow the false eyelash to be held inverted by the first clamp member and the second clamp member (it is noted that the device is capable of allowing the eyelash to be inverted between the clamps), the first outer side and the second outer side being configured to tightly grip the plurality of false lashes with the eyelash band held on the exterior side of the first outer side and the second outer side such that the false eyelashes extend away from the eyelash band and into the applicator between said first clamp member and the second clamp member; and wherein in the neutral configuration (Figure 10), the first clamp member (62) outer side and the second member (64) outer side are held substantially parallel in a vertical plane and spaced apart vertically by an air gap extending horizontally lengthwise (see Figure 10); the first clamp member and the second clamp member being configured to loosely hold the plurality of false lashes in the air gap with the eyelash band remaining disposed on the exterior side of first outer side and the second outer side to thereby maintain the false eyelash in a substantially inverted shape and ready for rolling lengthwise on to an eyelid (it is noted that the device is capable of allowing the eyelash to be inverted between the clamps), further comprising a spacer mechanism (hinge) configured to be operable to cause the first clamp member and the second clamp member to space apart forming the air gap.
Regarding claim 61, Panda discloses each one of the first and second clamp member comprise a unitary structure (see Figure 10).
Regarding claim 63, a biasing device (spring hinge) configured to bias the first clamp member and the second clamp member between the substantially open, neutral, and closed configurations.
Regarding claim 67, the spacer mechanism is configured to orientate the clamp members in the neutral configuration (Fig. 10)
Regarding claim 72, further comprising a false eyelash (16).
Claim Rejections - 35 USC § 103
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.
15. Claim(s) 64, 65, and 68 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panda (US 3,511,248) in view of Nathans (US 2,022,896).
16. Panda discloses the claimed invention except for a spacer mechanism, comprising a biasing device, wherein the biasing device can be a shim clamp or a clip. Nathans teaches an eyelash curler having a first clamp member (22) and a second clamp member (22) comprising a spacer mechanism (17; spring) and a biasing device such as a shim clamp (25) or clip (28) (see Figures 1-4) to help keep the clamp members in parallel neutral configuration. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the device of Panda be made with a spacer mechanism comprising a biasing device as taught by Nathans to help maintain the spaced apart relationship.
Claim(s) 62, 66, and 70 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panda (US 3,511,248) in view of Roos (GB 1,307,107).
Panda discloses the claimed invention except for at least one alignment post formed on the first clamp (also interpreted as guide member claim 70) and at least one associated hole formed on the second clamp to slideable engage one another; and the first clamp member includes a lash receiving groove with the second clamp member having a corresponding curved portion. Roos teaches at least one alignment post (40) formed on the first clamp and at least one associated hole formed on the second clamp (42) to slideable engage one another to lock the device in place; also, Roos discloses an eyelash applicator comprising the first clamp member includes a lash receiving groove (28) with the second clamp member having a corresponding curved portion (30) (see Figure 3). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the first and second clamp of Panda be made with a post and hole as taught by Roos to help lock the device in place. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the applicator of Panda be made with a lash receiving groove and curved portion as taught by Roos to help maintain the curve of the eyelashes.
Allowable Subject Matter
Claims 69 and 71 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.
Response to Arguments
Applicant’s arguments filed 5/28/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 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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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772 6/15/2026
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