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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species A in the reply filed on 6/12/2026 is acknowledged. It is noted that Applicant states: “claims 1-17 are now ready for examination with claims 18-22 withdrawn” (Remarks dated 6/12/2026), but claim 18 in the amendment of the same date includes a status identifier of “Original” rather than “Withdrawn” (see Claim Objections below). Claim 18 corresponds to unelected Species B. Accordingly, only claims 1-17 will be examined on the merits.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 173 in Fig. 4.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “case includ[ing] a display in communication with the controller” of claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. It is noted that display 122 is illustrated (see Fig. 4) and described in the specification as being part of a mobile device, rather than the case (e.g., see Paragraphs 042, 049-054).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Paragraph 0049 includes references to “motor 172” and “speaker 174”, which were not found in the drawings.
The use of the term “Bluetooth” (multiple instances in Paragraphs 007, 049, and 052), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claim 18 is objected to because of the following informalities: as described above under Election/Restrictions, the claim contains an improper status identifier in view of the species election dated 6/12/2026. Appropriate correction is required.
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 4 and 16 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.
Regarding claim 4, the claim contains the trademark/trade name “Bluetooth” in line 2. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a wireless communication module chip and, accordingly, the identification/description is indefinite.
Regarding claim 16, the claim recites “cause the controller to distribute provide the electrical current to the lip product at a gradient along the axis to cause the lip product to have an ombre appearance” in lines 3-5. The underlined portion appears to be a grammatical error, making it unclear what is required by the claim. Examiner further notes that it is unclear what structure in the device would enable the distribution and/or provision of electrical current “at a gradient along the axis” as claimed. For purposes of examination only, the claim will be interpreted according to Examiner’s best understanding in light of the written description (see Paragraph 044 of the Specification), namely that a device capable of providing current in the axial direction would also be capable of providing the current at a gradient along the axis as claimed.
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.
Claims 1-4, 7-8, 10-12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ilekti et al (US 2011/0168199) in view of Deravi et al. (US 11,464,719) and Legendre et al. (US 8,758,215).
Regarding claim 1, Ilekti et al. disclose a lipstick device (see especially Fig. 11) comprising: a lip product (S); a case (2) securable to the lip product (Paragraph 0488; Fig. 10), the case comprising a power source (Paragraph 0049); a controller (64) in communication with the power source (64 triggers operation of heating device; Paragraph 0524); and a user interface (64, 72) in communication with the controller (72 indicates operation of heating device after user presses 64; Paragraph 0527).
The device disclosed by Ilekti et al. differs from the claimed invention in that it uses electrical energy to heat the lip product, rather than changing the color of the lip product, and therefore does not disclose an electrochromic material in electrical communication with the power source. Ilekti et al. also do not explicitly disclose that the controller includes a non-transitory memory and one or more processors.
Deravi et al. teach an electrochromic material (see the Abstract and Col. 3, lines 4-8) that is appropriate for use in cosmetic products (Col. 8, lines 46-60), and further describes the use of such a material in a device that applies voltage to induce color change (Col. 7, lines 15-30).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the device of Ilekti et al. with an electrochromic material in electrical communication with the power source, as taught by Deravi et al., in order to provide color changing functionality. One having ordinary skill in the art would be capable of modifying the device of Ilekti et al. to provide electrical energy directly to the lip product (instead of or in addition to applying energy via a heating element) with predictable results.
The combined invention of Ilekti-Deravi still does not explicitly disclose a controller comprising a non-transitory memory and one or more processors. Legendre et al. teach a device for applying a cosmetic composition along with electrical energy (Col. 1, lines 5-40; Col. 5, lines 12-16; Col. 32, lines 12-16), the device including a non-transitory memory and one or more processors (5 and 3a in Fig. 1; Col. 27, lines 9-14). Legendre et al. teach that this configuration controls the power source to provide electrical current (e.g., heating the applicator; Col. 27, lines 26-31).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the controller of the combined invention of Ilekti-Deravi with a non-transitory memory and one or more processors, as taught by Legendre et al., in order to control the electrical current applied to the lip product. Doing so would result in a device wherein the non-transitory memory stores instructions that, when executed by the one or more processors, cause the controller to control the power source to provide electrical current to the lip product to cause the lip product to change color, thus arriving at the claimed invention.
Regarding claim 2, Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. further disclose that the case includes a mounting structure (5, 6) including the power source (via heating device 60; see Fig. 11), and a lid (cap 3 shown in Fig. 1) securable around the lip product (see Fig. 1), and wherein the user interface is integrated into the case (Fig. 11).
Ilekti et al. do not disclose a lock to lock the lid. However, Legendre et al. teach that a similar device may include a lock to prevent removal of an applicator until a predefined condition is satisfied (Col. 4, line 64 - Col. 5, line 2). The applicator of Legendre et al. has a frame (25) that surrounds the applicator and attaches to the top of the device in a manner similar to the lid of Ilekti et al. (see Fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the combined invention of Ilekti-Deravi-Legendre with a lock to lock the lid, as taught by Legendre et al., in order to prevent unintended exposure of the lip product.
Regarding claims 3-4, Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. do not disclose a communication module. However, Legendre et al. further teach that such a device can include a communication module configured to provide wireless communication with an external device via Bluetooth to offload processing tasks (Col. 27, lines 47-51).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the combined invention of Ilekti-Deravi-Legendre with a communication module configured as claimed, as taught by Legendre et al., in order to offload processing tasks so as to minimize the processing requirements of the onboard processor.
Regarding claims 7-8, Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. further disclose that the case includes a temperature sensor to collect temperature data (a component of the heating device for adjusting heating power; Paragraphs 0051-0052) and a fan (Paragraph 0046). Legendre et al. teach a similar temperature sensor that is used to regulate temperature via a processor module (Col. 31, lines 46-67). None of the references explicitly discloses that the non- transitory memory stores instructions that, when executed by the one or more processors, cause the controller to adjust the electrical current provided to the lip product based on the temperature data from the temperature sensor, or to adjust a speed of the fan in response to the temperature data from the temperature sensor.
However, when implemented in the combined invention of Ilekti-Deravi-Legendre, it would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide temperature sensor data to the processor, as taught by Legendre et al., so that instructions stored in the memory are used to analyze the temperature data (a function that would be well known in the art), causing the controller to adjust the electrical current provided to the lip product, and to adjust a speed of the fan, based on the temperature data from the temperature sensor, thus arriving at the claimed inventions of claims 7 and 8.
Regarding claim 10, Ilekti et al. further disclose that the case includes a display in communication with the controller (72 includes a light indicating that 64 has triggered operation of the device; Paragraphs 0526-0527).
Regarding claims 11-12, Ilekti-Deravi-Legendre in combination disclose the device of claim 10. Ilekti et al. further disclose a temperature sensor to collect temperature data (see above regarding claim 7), as well as a display that is illuminated to reflect the sensor data (light 15 in the embodiment of Fig. 1 illuminates when a desired temperature has been reached; Paragraph 0506). Legendre et al. teach a similar sensor that is used to regulate temperature via a processor module (Col. 31, lines 46-67). None of the references explicitly discloses that the non-transitory memory stores instructions that, when executed by the one or more processors, cause the controller to illuminate the display to reflect the sensor data.
However, when implemented in the combined invention of Ilekti-Deravi-Legendre, it would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide temperature sensor data to the processor, as taught by Legendre et al., so that instructions stored in the memory are used to analyze the temperature data (a function that would be well known in the art), causing the controller to illuminate the display to reflect the sensor data, thus arriving at the claimed invention of claims 11 and 12.
Regarding claims 14-15, Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. further disclose that the case includes a sensor to collect sensor data (for adjusting heating power; Paragraphs 0051-0052) and a visual feedback mechanism (light 15 in the embodiment of Fig. 1 illuminates when a desired temperature has been reached; Paragraph 0506). Legendre et al. teach a similar sensor that is used to regulate temperature via a processor module (Col. 31, lines 46-67). None of the references explicitly discloses the non-transitory memory storing instructions that, when executed by the one or more processors, cause the controller to activate the feedback mechanism in response to the sensor data when the sensor data is beyond a preset threshold.
However, when implemented in the combined invention of Ilekti-Deravi-Legendre, it would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide temperature sensor data to the processor, as taught by Legendre et al., so that instructions stored in the memory are used to analyze the temperature data (a function that would be well known in the art), causing the controller to activate the visual feedback mechanism in response to the sensor data when the sensor data is beyond a preset threshold (i.e., when the desired temperature is reached), thus arriving at the claimed invention of claims 14 and 15.
Regarding claim 16, Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. further disclose that the lip product is arranged along an axis (see axis Z in Fig. 11) and that a conductive material (20) is in contact with the lip product along the axial direction (Paragraphs 0500-0503; see Figs. 4-7). None of the references explicitly discloses that the non-transitory memory stores instructions that, when executed by the one or more processors, cause the controller to distribute provide the electrical current to the lip product at a gradient along the axis to cause the lip product to have an ombre appearance.
However, when implemented in the combined invention of Ilekti-Deravi-Legendre, it would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide instructions stored in the memory that would cause the controller to provide the electrical current to the lip product along the axial direction, since this would be consistent with the conductive material/structure disclosed by Ilekti et al. and the controller functioning taught by Legendre et al. According to Examiner’s best understanding (see above rejection under 35 U.S.C. 112(b)), this would satisfy the limitations of the instant claim.
Claims 5, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ilekti et al. in view of Deravi et al. and Legendre et al., as applied to claim 1 above, and further in view of Hsieh et al. (US 2021/0289912).
Regarding claim 5, Ilekti-Deravi-Legendre in combination disclose the device of claim 3, but none of the cited references disclose a GPS sensor.
Hsieh et al. teach a cosmetic device with a case (11) having a wireless communication module for communicating with an external device (see Fig. 1), wherein the case includes a GPS sensor to collect location data (sensor 21 in housing 11 may be a GPS sensor; Paragraph 0037), and a non-transitory memory stores instructions that, when executed by one or more processors, cause a controller (12) to send the location data to the external device (control module 12 would inherently include a memory and processor to perform the described functions; Paragraph 0037; Fig. 1). Hsieh et al. teach that these features enable analysis of device usage via the external device (Paragraph 0051).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the combined invention of Ilekti-Deravi-Legendre with a GPS sensor and instructions in the memory to cause a controller to send the location data to the external device, as taught by Hsieh et al., in order to enable analysis of device usage via the external device.
Regarding claims 13 and 17, Ilekti-Deravi-Legendre in combination disclose the device of claim 1, but none of the cited references disclose a light sensor or a motion sensor.
Hsieh et al. teach a cosmetic device with a case (11) and controller (12) as described above regarding claim 5. Hsieh et al. further teach that the case includes a sensor in communication with the controller as an input interface to control operation of the device (Paragraph 0024), the non-transitory memory storing instructions that, when executed by the one or more processors, control operation of the device in response to the sensor data (inputting a “trigger instruction” to the controller; Paragraph 0024). Hsieh et al. teach that this sensor could be “a light sensor, or any other man-machine interface or sensing device” and further describes a “light blocking sensor” that detects a change of light caused by movement of a user’s hands or feet (Paragraph 0024).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the combined invention of Ilekti-Deravi-Legendre with a light sensor or a motion sensor in communication with the controller and instructions in the memory to control operation of the device in response to the ambient light or motion data, as taught by Hsieh et al., as a suitable alternative to the control button disclosed by Ilekti et al. (see Paragraph 0524). One having ordinary skill in the art would be capable of making such a modification with predictable results. When implemented in the combined invention of Ilekti-Deravi-Legendre, controlling operation of the device via either a light sensor or a motion sensor would involve adjusting or distributing the electrical current provided to the lip product, thus arriving at the claimed inventions of claims 13 and 17, respectively.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ilekti et al. in view of Deravi et al. and Legendre et al., as applied to claim 1 above, and further in view of Bansal (US 2013/0125910).
Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. discloses that the user interface provides a plurality of activation options (64 is an on/off switch), but none of the cited references disclose a user interface having shade or intensity options.
Bansal teaches a color-changing lipstick device (Paragraph 0091) that allows a user to adjust a shade or intensity of the lip product (Paragraph 0097) by application of an electric field of varying charge and intensity (Paragraph 0019; Fig. 4). Bansal does not describe in detail a user interface to provide such options.
However, when implemented in the combined invention of Ilekti-Deravi-Legendre, it would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the user interface of the combined invention with a plurality of shade options and a plurality of intensity options, alongside the disclosed plurality of activation options, since Bansal teaches that users would have a desire to control these properties of the lip product (Paragraphs 0001-0002).
One having ordinary skill in the art would be capable of adding these features to the combined invention with predictable results. Since the combined invention controls the provision of electrical current to the lip product via instructions stored in the memory, as described above regarding claim 1, implementing the teaching of Bansal would include providing instructions in the memory to cause the controller to adjust the electrical current in response to a shade selection from one of the plurality of shade options, an intensity selection from one of the plurality of intensity options, and an activation selection from one of the plurality of activation options, thus arriving at the claimed invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ilekti et al. in view of Deravi et al. and Legendre et al., as applied to claim 1 above, and further in view of Breidenbach et al. (US 2004/0234321).
Ilekti-Deravi-Legendre in combination disclose the device of claim 1. Ilekti et al. further disclose that the case includes a first compartment (interior of 6) containing the lip product, but none of the cited references disclose a second compartment for an auxiliary cosmetic product.
Breidenbach et al. teach a similarly structured device (Fig. 1) having a case (10) that includes a first compartment (25) containing a lip product, and a second compartment (22) for an auxiliary cosmetic product (Paragraph 0042). Breidenbach et al. teach that this configuration enables multiple products to be provided while saving space (Paragraphs 0007-0008).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to provide the combined invention of Ilekti-Deravi-Legendre with a second compartment for an auxiliary cosmetic product, as taught by Breidenbach et al., in order to save space when providing a complementary product in the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form for additional examples of applicator devices and/or color-changing cosmetics having features relevant to the claims of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C PATTERSON whose telephone number is (571)270-5558. The examiner can normally be reached M-F 7:30-4:00 CST.
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/MICHAEL C PATTERSON/Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 July 20, 2026
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