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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, and 9-21 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 2, 3, 5, 6, 8-11, 14, 17, and 18 are objected to because of the following informalities:
Claim 1, please amend the preamble to support depending claims by stating: “A false eyelash applicator, the applicator comprising:”
Claim 2, line 1, for clarification and consistency purposes please change “said support” to - -said false eyelash support- -.
Claim 3, line 2, “a false eyelash” please change to - -the false eyelash- -.
Claim 5, line 2, please change “base ; said” to - -base; said- -.
Claim 6, line 1, for clarification and consistency purposes please change “said support” to - -said false eyelash support- -.
Claim 8, line 1, for clarification and consistency purposes please change “said support” to - -said false eyelash support- -.
Claim 9, line 3, for clarification and consistency purposes please change “said members” to - -said first and second clamp members- -.
Claim 10, line 1, for clarification and consistency purposes please change “said clamp members” to - -said first and second clamp members- -.
Claim 11, line 2, for clarification and consistency purposes please change “said clamp members” to - -said first and second clamp members- -.
Claim 14, line 5, for clarification and consistency purposes please change “said lashes” to - -said false lashes- -.
Claim 17, line 8, for clarification and consistency purposes please change “said members” to - -said first and second clamp members- -.
Claim 18, line 3, for clarification and consistency purposes please change “the first and second members” to - -said first and second clamp members- -.
Appropriate correction is required.
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: “spacer mechanism” in claims 16-18; and “latch mechanism” in claim 18.
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 2-5, 7, 8, and 14 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 2, line 2, “the base” lacks a prior antecedent. The claims are drawn towards the applicator with the false eyelash only functionally recited, it is unclear if applicant is attempting to set forth a system claim by claiming structural components of the eyelash (i.e. base) or if the claim limitation was a typographical error. The claim will be examined as “rollably supporting the false eyelash”.
Claim 2, line 3, states “the exterior of the outer side”; “the exterior” lacks a prior antecedent, furthermore it is unclear as to what is the exterior of the outer side is, it would appear the outer side is the exterior of the false eyelash support. Clarification is required. The claim will be examined as “supporting the false eyelash on the outer side”.
Claim 3, line 1, states “said support outer side” however, claim 2 set forth “at least one outer side”. It is unclear as to which outer side applicant is referring too. The claim will be examined as “wherein said at least one outer side of the false eyelash support”.
Claim 5, line 1, states “said support outer side”; however, claim 2 set forth “at least one outer side”. It is unclear as to which outer side applicant is referring too. The claim will be examined as “wherein said at least one outer side of the false eyelash support”. Claim 5, line 3, states “a radius of curvature that is much greater than the radius of curvature of the human eye”. This limitation is indefinite since the meets and bounds of the claim are unclear, human eyes can come in a wide variety of shapes and sizes (example: adults vs children), therefore, it is unclear what constitutes a “radius of curvature that is much greater than the radius of curvature of the human eye”. The claim will be examined as “said concave support outer side having a radius of curvature configured to allow placement on the user’s eye.
Claim 7, line 2, “the false eyelash band” lacks a prior antecedent. It will be examined as “the false eyelash” (see rejection to claim 2 above). Line 2, states “the support outer side”; however, claim 2 set forth “at least one outer side”. It is unclear as to which outer side applicant is referring too. The claim will be examined as “wherein said at least one outer side of the false eyelash support”.
Claim 8, line 1, states “said support outer side”; however, claim 2 set forth “at least one outer side”. It is unclear as to which outer side applicant is referring too. The claim will be examined as “wherein said at least one outer side of the false eyelash support”. Line 5, “said false eyelash base” lacks a prior antecedent, it will be examined as “said false eyelash”. (see rejection to claim 2 above).
Claim 14, line 4, states “testable with one another” it is unclear what is meant by “testable” it appears the groove and curved portion are mateable with each other. Clarification is required. It will be examined as “said lash receiving groove and corresponding curved portion being mateable with one another”.
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) 1, 2, 4-7 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han (US 8,424,542).
Han discloses a false eyelash applicator (20) comprising: a false eyelash support (32), for releaseably supporting a false eyelash to be applied to an eyelid; and a handle portion (50) for manipulating said false eyelash support to apply said false eyelash (see Figure 5, 10, and 11; col. 7, lines 45-55); wherein said support is configured to rollably support the false eyelash in a lengthwise roll on configuration for rolling, by manipulation of said handle portion, the false eyelash lengthwise laterally over an eyelid and off said support (the limitation of “rollably support the false eyelash in a lengthwise roll on configuration” is meet by the manipulation of the user starting from one side (figure 3; start on left side and then rolling via manipulation of the user’s hand (26) to attach from one left side of the eyeline the other right side). Claim 2, the false eyelash support (32) has at least one outer side (36; see Figure 6), said at least one outer side being shaped for rollably supporting the false eyelash (58) on the outer side in alignment therewith (then rolling via manipulation of the hand (26) to attach from one corner of the eyeline the other). Claim 4, wherein the support outer side (54; top side) is substantially straight lengthwise for supporting the false eyelash (58) in a substantially straight shape (see Figures 5 and 6). Claim 5, the support outer side is substantially concave (end 36) lengthwise for supporting the false eyelash (58); said concave support outer side having a radius of curvature (the tool is larger than the false eyelash assuming that is the same size as the user’s eye the tool is larger than the user’s eye) (see Figures 5 and 6). Claim 6, the support (32) comprises a unitary structure (see Figure 10). Claim 7, comprising an adhesive medium (52) for releaseably adhering the false eyelash band on the support outer side (col. 8, lines 10-15). Claim 20, further comprising a false eyelash (34), said false eyelash being pre-supported on said applicator in said roll on configuration (see Figure 1).
Claim(s) 1-3, 5, 6, and e8-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roos (GB 1,307,107).
Roos discloses a false eyelash applicator (12) comprising: a false eyelash support (20), for releaseably supporting a false eyelash (L) to be applied to an eyelid (see Figures 1-3; col. 3, lines 30-35); and a handle portion (12) for manipulating said false eyelash support to apply said false eyelash (see Figures 1-3; col. 3, lines 44-45); wherein said support is configured to rollably support the false eyelash in a lengthwise roll on configuration for rolling, by manipulation of said handle portion, the false eyelash lengthwise laterally over an eyelid and off said support (the limitation of “rollably support the false eyelash in a lengthwise roll on configuration” is meet by the manipulation of the user starting from one side (figure 1; start on left side and then rolling via manipulation of the hand (8) to attach from one corner of the eyeline the other). Claim 3, wherein said support outer side (30) is substantially convexly curved lengthwise for supporting a false eyelash (L) in a substantially inverted shape thereon (see Figure 4; inverted meaning lashes facing inwards). Claim 5, wherein said support outer side is substantially concave lengthwise (28) for supporting the false eyelash (L); said concave support outer side having a radius of curvature that is much greater than the radius of curvature of the human eye (Figure 2; the tool is larger than the false eyelash assuming that is the same size as the user’s eye the tool is larger than the user’s eye). Claim 6, support comprises a unitary structure (see Figure 2; col. 3, lines 50-52). Claim 8, wherein said support comprises a clamp having a first clamp member (18) and a second clamp member (20), wherein at least one of said first and second clamp members form said outer side for rollably supporting said inverted false eyelash (see Figure 2); said clamp members (18, 20) being operably coupled (via hinge 22) together for gripping false lashes (L) extending from said false eyelash (see Figure 2). Claim 9, further comprising at least one alignment post (38) and associated hole (42) formed on at least one of said first and second clamp members (Figure 3), said alignment post(s) and associated hole(s) being arranged on said first and second clamp member(s) to slidable engage one another and align said first and second clamp members one above the other as said first and second clamp members are pressed together (see Figures 2 and 3; col. 5, lines 105-115). Claim 10, the first and second clamp members (18,20) are configured to be adjustable between an open configuration (Figure 3) for loading said substantially inverted false eyelash (L) onto said applicator (10), a substantially closed configuration (Figure 4) for tightly gripping the false lashes of the substantially inverted false eyelash being supported, and a neutral configuration (Figure 5) for loosely gripping said false lashes whilst allowing said substantially inverted false eyelash to be releasable from said clamp members without substantial restriction (col. 5; lines 5-35). Claim 11, further comprising a biasing device (22, 36, 44), said biasing device being configured to bias said first and second clamp members between said substantially open, neutral and closed configurations (see Figure 5; col. 5, lines 30-35 “abutment 44 causing the male and female elements 38 and 42 to separate”). Claim 12, the biasing device (22) comprises a shim clamp integrated with the applicator (22) (see Figure 2). Claim 13, the biasing device comprises a clip (36, 44) separate from or integrated with the applicator (see Figure 2). Claim 14, wherein said first clamp member includes a lash receiving groove (28) extending lengthwise along said outer side and said second clamp member includes a corresponding curved portion (30), said lash receiving groove and corresponding curved portion being matable with one another and being profiled such that, when said clamping members are in the closed configuration gripping said lashes, said lashes substantially maintain their naturally curled shape (see Figures 2 and 3). Claim 15, further comprising a hinge (22), wherein said first clamp member and said second clamp member are operably coupled together by said hinge (22) for adjusting said first and second clamp members between said open, neutral and closed configurations (see Figures 3 and 4). Claim 16, further comprising a spacer mechanism (36, 44, 22) which is configured to be operable to cause said first and second clamp members to space apart from the substantially closed configuration to the neutral configuration by a predetermined amounted and form a gap therebetween (see Figure 5). Claim 17, wherein said spacer mechanism (36, 44, 22) comprises said hinge (22), said hinge being an expandable hinge pivotally interconnecting said first and second clamp members together (Figure 4), said expandable hinge being operable between an unexpanded configuration (Figure 4) and expanded configuration (Figure 3), wherein in the unexpanded configuration, said first and second members pivot about a common rotational axis of said hinge, and wherein in said expanded configuration, the hinge rotational axis of said first member is displaced generally perpendicularly from the hinge rotational axis of the second member by said predetermined amount so as to form said gap between said members (see Figures 3-5). Claim 18, said spacer mechanism (36, 44) further comprises a latch mechanism (38, 42) for adjusting the expandable hinge between said expanded and unexpanded configurations (Figures 3-5); and a guide member (40) for maintaining the first and second members substantially parallel to one another in the neutral configuration (see Figure 4). Claim 19, further comprising a spacer mechanism (36, 44, 22) which is configured to be operable to cause said first and second clamp members to space apart from the substantially closed configuration to the neutral configuration by a predetermined amounted and form a gap therebetween (see Figures 3-5). Claim 20, further comprising a false eyelash (L), said false eyelash being pre-supported on said applicator in said roll on configuration (see Figure 1).
Conclusion
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, Thomas Barrett can be reached at 571-272-4746. 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
11/21/2025