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 .
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 1-9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “a coupling joint made of a hard synthetic resin or metal material”, and the claim also recites “the coupling joint made of the hard synthetic resin” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-9 are rejected as inheriting the defect(s) of claim 1.
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 (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.
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) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bourjal (US 7441656) in view of Flynn (US 3315830).
Regarding claim 1, Bourjal teaches an overcap (3) for a stick-type cosmetic container including a container body (2) configured to store solid contents or liquid contents and coupled to the overcap, the overcap comprising: a tube-shaped cover made of a soft synthetic resin (6) as a constituent material, and a coupling joint (10) provided in an inner diameter of an open lower portion of the tube-shaped cover to prevent shape deformation while being connected to the container body through a hanging method (col. 6, ll. 20-25) or screw coupling method (col. 6, ll. 26-29).
Bourjal does not teach that a width of the overcap increases toward an upper portion that is sealed, that the coupling joint is made of a hard synthetic resin or metal material, wherein the tube-shaped cover and the coupling joint are made of different materials from each other, and the tube-shaped cover made of the soft synthetic resin and the coupling joint made of the hard synthetic resin have an integrally molded structure.
Flynn teaches an overcap (34) with a width that increases toward an upper portion that is sealed (via 32) and a coupling joint (22) that is made of a hard synthetic resin or metal material (col. 2, ll. 1-7).
Earl teaches that overmolding (e.g., creating an integrally molded structure from separate components) is a commonly used coupling technique (¶0042).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the overcap of Bourjal such that a width of the overcap is increased toward an upper portion that is sealed as taught by Flynn for the purpose of providing the cap with a desired aesthetic. Furthermore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have made the coupling joint of Bourjal of a hard synthetic resin as taught by Flynn wherein doing so would merely have been a matter of selecting a known material known to be useful as a coupling joint. It is noted that this would result in the tube-shaped cover and the coupling joint are made of different materials from each other, and the tube-shaped cover made of the soft synthetic resin and the coupling joint made of the hard synthetic resin.
Furthermore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have made the rube-shaped cover and coupling joint an integrally molded structure in light of Earl’s teaching that overmolding is a commonly used coupling technique.
Regarding claim 2, the combination of Bourjal Flynn, and Earl teaches the overcap of claim 1, wherein a coupling groove having an undercut structure or a female screw thread is formed in the coupling joint of the overcap (Bourjal, 25).
Regarding claim 4, the combination of Bourjal, Flynn, and Earl teaches the overcap of claim 1, wherein the open lower portion of the overcap is provided in a cylindrical shape, a quadrangular cylindrical shape, a hexagonal cylindrical shape, or an octagonal cylindrical shape to be coupled to the container body (cylindrical shape, Bourjal 16).
Claim(s) 3, 5, and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bourjal, Flynn, and Earl as applied to claim 1 above, and further in view of Carullo.
Regarding claim 3, the combination of Bourjal, Flynn, and Earl teaches the overcap of claim 1, but does not teach a brush rod including a brush is coupled to the coupling joint of the overcap.
Carullo teaches a cap with a brush rod (2) including a brush coupled to a coupling joint (4a) of an over cap (1).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the cap of Bourjal with a brush rod including a brush coupled to the coupling joint of the overcap as taught by Carullo for the purpose of enabling the cap to apply mascara (Carullo, ¶0002).
Regarding claim 5, the combination of Bourjal, Flynn, and Earl teaches the overcap of claim 1, but does not teach a finishing member coupled to an upper portion of the tube-shaped cover.
Carullo teaches a finishing member (5) coupled to an upper portion of a tube-shaped cover (1).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the tube-shaped cover of Bourjal with a finishing member as taught by Carullo for the purpose of providing an aesthetically pleasing end (Carullo, ¶0030).
Regarding claim 7, the combination of Bourjal, Flynn, Earl, and Carullo teaches the overcap of claim 5, wherein a coupling groove having an undercut structure or a female screw thread is formed in the coupling joint (Bourjal, coupling groove with undercut structure, see Fig. 2 and female screw thread in Fig. 6).
Regarding claim 8, the combination of Bourjal, Flynn, Earl and Carullo teaches the overcap of claim 5, but does not teach a brush rod including a brush is coupled to the coupling joint of the overcap.
Carullo teaches a cap with a brush rod (2) including a brush coupled to a coupling joint (4a) of an over cap (1).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the cap of Bourjal with a brush rod including a brush coupled to the coupling joint of the overcap as taught by Carullo for the purpose of enabling the cap to apply mascara (Carullo, ¶0002).
Regarding claim 9, the combination of Bourjal, Flynn, Earl, and Carullo teaches the overcap of claim 5, but does not teach that the open lower portion of the overcap is provided in a quadrangular cylindrical shape, a hexagonal cylindrical shape, or an octagonal cylindrical shape to be coupled to the container body.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have changed the shape of the open lower portion of Carullo’s overcap because Applicant has not disclosed that the shape of the overcap provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Carullo's overcap and the applicant's invention to perform equally well with either the cylindrical overcap taught by Carullo or the claimed overcap with a quadrangular cylindrical shape, a hexagonal cylindrical shape, or an octagonal cylindrical shape because both overcaps are equally capable of attaching to a container.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the shape of the overcap of Carullo to obtain the invention as specified in claim 9 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Carullo.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bourjal, Flynn, Earl, and Carullo as applied to claim 5 above, and further in view of Maehr (US 13342315).
Regarding claim 6, the combination of Bourjal, Flynn, Earl, and Carullo teaches the overcap of claim 5, but does not teach that the finishing member is provided with a grip-shaped decorative member.
Maehr teaches providing a finishing member (40) with a ‘grip-shaped’ decorative member (37).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the finishing member of Carullo with a grip-shaped decorative member as taught by Maehr for the purpose of enabling the cap to connect to a necklace (Maehr, col. 16 line 56 to col. 17, line 20).
Response to Arguments
Applicant's arguments filed 23 April 2026 have been fully considered but they are not persuasive.
In response to the argument that Bourjal and Flynn do not teach an integrally molded structure, it is noted that the newly cited Earl reference is relied upon to teach this feature.
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 BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571)270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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