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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 9/9/24 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.
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.
Claim(s) 1-16 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 requires “a distal portion” forming “a distal surface”, but then goes on to require “a distal surface of the applicator head” in the fifth clause, as well as “an upper surface” and “a bottom surface”, but this is extremely confusing. Wouldn’t either the upper or bottom surface by definition have to be this “distal surface” and if so why is no relationship set forth between these elements? Is applicant attempting to claim that the non-thermal member forms a distal surface of the applicator head, but this applicator head distal surface is somehow not structurally related to the “distal portion and distal surface” of the thermal member? Is applicant attempting to claim that the non-thermal member forms a distal surface of the applicator head and that this distal surface is not the upper surface or the bottom surface? The metes and bounds of the claim are unclear. For examination purposes, the claim will be treated as reciting “wherein the upper surface forms part of the distal surface of the applicator head”. The last clause of this claim is also confusing; it states “wherein, when said non-thermal member is received and retained within said cavity”; however this wording is unclear because it does not seem to clearly require the non-thermal member be received in the cavity or joined to the thermal member. For examination purposes, the claim will be treated as reciting “wherein said non-thermal member is received and retained within said cavity”. Clarification or correction is requested.
Claim 4: this claim recites “wherein said first applicator portion includes a rear face, a right side face, and a left side face”; however, claim 1 already requires the first applicator portion has “a front face including a proximal surface and a distal surface” and no relationship is set forth between these surfaces making it unclear how many surfaces are being claimed. For examination purposes, the claim will be treated as reciting “wherein said first applicator portion includes a rear face opposite the front face, a right side face, and a left side face”. This claim also recites “curved along a longitudinal axis of said applicator head”; however, claim 1 sets forth “a longitudinal axis of the shank”, which is part of the applicator head, so are these the same longitudinal axes or different? Clarification or correction is requested.
Claim 7: recites “along at least part 40% of a length of said front face”; however, this is not proper idiomatic English and it is unclear what “along at least part 40% of a length” means. For examination purposes, the claim will be treated as reciting “along at least part of a length of said front face”. Clarification or correction is requested.
Claim 9: recites “wherein said upper surface of said second applicator portion is one of a convex surface and a flat surface” however, similar to the issue with claim 1, is this “upper surface” the same or different from this “distal surface” that was claimed? Based on a review of applicant’s disclosure these are the same; applicant is respectfully reminded that one term should be used consistently throughout the claims to refer to a single feature. Clarification or correction is requested.
Claim 13: recites “said rear face of said first applicator portion” without antecedent basis. Clarification or correction is requested.
Claim 14: recites “wherein the applicator head is configured to be associated with a cosmetic package…”; however, the language “configured to be associated with” is confusing and unclear because it is only functional and so it does not appear to actually require any of the structure that follows. It is unclear if applicant intends for the structure of “a stem, a cap, a receptacle” to be positively required by the claim or only functionally recited making the metes and bounds of the claims unclear. For examination purposes, the claim will be treated as written which only functionally requires the applicator head is capable of being associated with other components. Clarification or correction is requested.
Claim 16: this claim recites “said rear face is lip-shaped along a length direction” and then goes on to recite “and wherein said rear face includes a proximal convex portion followed by a central recessed area and a distal convex portion”; however, the language “and wherein said rear face includes a proximal convex portion followed by a central recessed area and a distal convex portion” appears to be describing what “lip shaped” is and so it is unclear if applicant is trying to claim that the rear face is lip shaped and also includes another proximal convex surface that is not related to the lip shape, a central recessed area not related to the lip shape, and a distal convex portion not related to the lip shape? It would appear this is attempting to claim the lip shape twice using different wording, which is confusing and improper because it makes the metes and bounds of the claim unclear. For examination purposes, the claim will be treated as omitting the last three lines because these are already covered with the language “lip shaped” in lines 1-3. 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) 1-4, 6-7, 9, 11, and 13-15, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thorpe (US 20140234010).
Claims 1-2 and 13-14: Thorpe discloses an applicator head joined to a distal end of a stem (see annotations), a cap (112) joins to a proximal end of the stem (see annotations) and the cap and the stem also join to a receptacle (104) configured to hold product (see abstract). The applicator head comprises a metal or stone [0056-0058] thermal member (102) defining at least a portion of a sidewall of the applicator head, said thermal member comprising: a proximal portion forming a shank (see annotations) that defines a central longitudinal axis; a distal portion forming a first applicator portion (see annotations) that is accessible as an application surface in use (see annotations) the first applicator portion including a front face (see annotations), that includes a proximal surface and a distal inclined surface (see annotations) that is inclined relative to the central longitudinal axis of the shank and this inclined surface extends to the distal end of the thermal member (see annotations) along the front face (see annotations). A central cavity extends through an entire length of the thermal member (see annotations) and terminates in a distal opening in/on/through the distal surface (see annotations) of the first applicator portion (see annotations). The applicator head includes a polyethylene polymer or elastomer [0056-0057] insulating non-thermal member (108) defining a portion of the distal surface of the applicator head (see annotations). The non-thermal member comprises a connection portion (see annotations) extending from a second applicator portion (see annotations). The second applicator portion extends along a flat plate that closely matches the flat planar surface of the distal surface of the first applicator portion (see annotations). The second applicator portion includes an upper surface (see annotations) and a bottom surface (see annotations). The non-thermal member is received and retained within the cavity of the thermal member (see annotations) and a majority of the connection portion is housed within the cavity (see annotations) with the second applicator portion extending from the opening such that the bottom surface of the second applicator portion closely contacts the distal surface of the first applicator portion of the thermal member (see annotations).
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Claim 3: the connection portion is an elongated rod portion (see annotations) of the non-thermal member with a length greater than a length of the cavity of the thermal member such that a distal portion of the elongated rod portion extends out from a proximal end of the cavity (see annotations).
Claim 4: the first applicator portion includes a rear face opposite the front face (see annotations), a right side face, and a left side face (see Figs 1 & 4) and since the applicator can be spherical [0075] (note this is an unillustrated embodiment, but is disclosed nonetheless) this would result in the rear face of the first applicator portion being curved along the longitudinal axis and in a direction orthogonal do the longitudinal axis of the applicator head.
Claim 6: the entire applicator tip can take the form of a sphere or a parabola [0077] and a parabola by definition forms a concave curve and would result in the first applicator portion and the second applicator portion both being concavely curved, or parabolic, thereby forming a reservoir for the cosmetic during application.
Claim 7: the distal surface extends from a distal end of the thermal member along at least part of a length of the front face (see annotations).
Claim 9: the upper surface of the second applicator portion is a flat surface (see annotations).
Claim 11: the non-thermal member is oriented such that an apex of the non-thermal member is always in line with an apex of the thermal member because they are coaxial (see annotations).
Claim 13: the distal end of the thermal member is off center from the longitudinal axis of the shank towards the rear face of the first applicator portion (see annotations).
Claim 15: the second applicator portion includes a through cavity (408).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 and 103 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
102(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.
103: 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) 1-2, 5, 7-14, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kukreja (US 20180279740) as evidenced by Thorpe (US 20140234010).
Claims 1-2 and 13-14: Kukreja discloses an applicator head (10) retained at a distal end of a stem (20) with an opposite proximal end of the stem joined to a cap (30) that closes a receptacle (200) of cosmetic product (see abstract). The applicator head comprises: a metal [0032-0034] thermal member (2) defining at least a portion of a sidewall of the applicator head (see Figs 1-11); the thermal member comprising: a proximal portion forming a shank (2a) extending along and defining a central longitudinal axis; a distal portion (2b) forming a first applicator portion (see Figs 6-7). The first applicator portion includes front face (see Fig 7) including a proximal surface (see annotations) and an inclined distal surface (see annotations) that is inclined relative to the longitudinal axis (see annotations). The distal inclined surface extends from a distal end of the thermal member along at least part of the front face (see annotations). A cavity (6, see Fig 17) extends through the length of the thermal member (see Figs 15-17) with a distal opening of the cavity defined on the distal surface (see Fig 7) of the first applicator portion; and a non-thermal polymer member [0032-0034] (3) defining at least a portion of a distal surface of the applicator head (distal surface is formed by 8+13), the non-thermal member (3) includes a connection portion (3a+15+16) and a second applicator portion (13) extending along a plane that closely matches the incline of the distal surface of the first applicator portion (see Figs 1-11) and the second applicator portion includes an upper surface (12) and a bottom surface (top of 13, Fig 10). The non-thermal member (3) is received and retained within the cavity of the thermal member (see Figs 1-11) and the second applicator portion extends out from the opening such that the bottom surface of the second applicator portion closely contacts the distal surface of the first applicator portion of the thermal member (see Figs 2-4). The distal end of the thermal member is off centered from the longitudinal axis towards a rear face of the first applicator portion (see annotations).
Alternatively, if applicant disagrees that Kukreja discloses the first applicator member being made of metal, ceramic, or stone, while the second applicator member is made of plastic; then Kukreja states that the first applicator member and second applicator member can be made of plastic, metal, alloys, ceramic, or stone [0032-0034] and discloses the invention essentially as claimed except for explicitly stating the first applicator member is made of metal, ceramic, or stone, while the second applicator member is made of plastic.
Thorpe, however, teaches providing cosmetic [0002] applicator heads with an exterior first applicator member (102) made of a thermally conductive material like stone or metal [0056 & 0058] with an insert second applicator member made of a thermally insulating polymer or elastomer material [0056-0057] specifically in order to allow for the application of heat or cold with the substance during use [0003]. In other words, Thorpe teaches that providing a first applicator member of a thermally conductive material and a second applicator member of thermally non-conductive material was known to be beneficial in applying cosmetics in 2014. Kukreja, discloses first and second applicator members and various thermally conductive and non-thermally conductive materials that can be used to make the applicator members. One of ordinary skill in the art when reading Kukreja would be motivated to choose the combination of the first applicator member being made of a thermally conductive stone or metal material and the second applicator member being made of a thermally non-conductive polymer material because, as evidenced by Thorpe, this was known to produce beneficial results when applying cosmetics and Kukreja already states that these materials or combinations thereof can be used to make the applicator.
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Claim 5: the second applicator portion (13) is elliptical drop shaped and the distal surface of the thermal member is also elliptical drop shaped (see Figs 6-11 & annotations). The second applicator portion is dimensioned to fit into/over and cover at least part of the distal surface of the first applicator portion (see annotations).
Claim 7: the distal surface of the first applicator portion extends from a distal end of the thermal member along at least part of a length of the front face (see Fig 6-8).
Claim 8: at least a part of the upper surface of the second applicator portion includes flocking [0017 & 0025].
Claim 9: the upper surface of the second applicator portion is convex (see Fig 10-11).
Claim 10: the elongated rod portion of the non-thermal member is retained within the cavity of the thermal member by snap fitting [0026] and the snap fit includes an annular projection (14) extending from the inner surface of the cavity of the first applicator member [0078] (see Fig 1) that mates with an annular recess (15) on the non-thermal member (see Fig 1 & 9-11) and annular flange (16) adjacent the annular recess on the non-thermal member (see Figs 9-11) and the annular recess mates with the annular projection, thereby forming the snap fit connection (see Fig 1).
Claim 11: the non-thermal member is oriented so that an apex of the non-thermal member is in line with an apex of the thermal member [0027].
Claim 12: the end of the elongated rod portion of the non-thermal member has rectangular portion (17) located close to the second applicator portion (13) that corresponds to a rectangular portion (18) of the cavity near the opening (see Figs 15-16) in order to orient the second applicator relative to the first and prevent rotation therebetween (see Fig 15-17).
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) 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thorpe (US 20140234010).
Claim 10: Thorpe discloses the elongated rod portion of the non-thermal member to be retained within the cavity of the thermal member by snap fitting [0062] with the non-thermal member including a series of annular projections, or annular rings, [0062] on its inner surface that mate with corresponding recesses [0062] and the non-thermal member includes an annular flange at its lower surface adjacent the annular projections (see annotations) and the recesses and annular projections mate together for the snap fit [0062].
Thorpe discloses the invention essentially as claimed except for reversing the snap fit so that the annular rings extend from the cavity of the thermal member and the non-thermal member carries the recesses. However, it would have been obvious to one of ordinary skill in the art at the time of filing to reverse this fastener by providing the annular projections within the cavity interior surface and the recesses on the non-thermal member, since it has been held by the courts that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(A).
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Claim 16: the applicator body can have any shape including convex, disk-shaped, oval, elliptical, spherical, curvilinear, trapezoidal [0075], parabolic [0077], flat, cylindrical (claim 23), planar (claim 23), and combinations of the above [0077]. Thorpe further explicitly states the applicator can be used to apply lip products [0002]. Thorpe discloses the invention essentially as claimed except for explicitly stating the applicator can be “Lip shaped”; however, the office notes that “lip-shaped” is a combination of convex and curvilinear. 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 body of Thorpe to be lip-shaped for the common sense reason that when applying lip products, a lip shaped applicator would result in more rapid application by stamping and since lip shaped is a combination of the shapes taught by Thorpe and contemplated by Thorpe and the device can be used explicitly to apply lip products.
Response to Arguments
Applicant’s arguments filed 4/30/26 have been considered but are moot because of the extensive amendments to the claims and the new grounds of rejection provided as a result of the claim amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 extension fee 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 date of this final action.
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-Thursday 9:00am-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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER GILL/
Examiner, Art Unit 3772
/NICHOLAS D LUCCHESI/Primary Examiner, Art Unit 3772
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