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 .
DETAILED ACTION
Information Disclosure Statement
1. The references disclosed within the information disclosure statement (IDS) submitted on September 19, 2023, December 9, 2024, have been considered and initialed by the Examiner.
Double Patenting
2. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
3. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,412,830. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites similar subject matter as claim 1 of U.S. Patent No. 11,412,830 and U.S. Patent No. 11,412,830 appears to encompass the limitations of the instantly claimed invention.
4. Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims1 of U.S. Patent No. 11,771,199. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites similar subject matter as claim 1 of U.S. Patent No. 11,771,199 and U.S. Patent No. 11,771,199 appears to encompass the limitations of the instantly claimed invention.
5. Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,201,204. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites similar subject matter as claim 1 of U.S. Patent No. 12,201,204 and U.S. Patent No. 12,201,204 appears to encompass the limitations of the instantly claimed invention.
Claim Rejections – 35 USC § 103(a)
6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
7. Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over Silva (U.S. 2017/0143102).
Silva discloses devices, and systems of cosmetic blotting tool and container,
where a folium shaped sponge may be made of foam material and further comprise an
oil absorbent characteristic to remove excess oils from a skin surface without disrupting
previously applied cosmetics. Additionally, the cosmetic blotting tool and container may
include a storage housing comprising a removable lid member and a vented base
member, where the vented base member may facilitate drying of the first folium shaped
sponge after usage via providing a ventilated area, and where the storage housing may
be configured to receive and store the folium shaped sponge (abstract). Silva discloses
storage housing may be a volume-enclosing container for storage (paragraph 30). Silva
discloses The sponge 110 is shown as having a thickness 112 creating a volume
between two surfaces 104 comprising non-latex foam material with anti-microbial
agents. In an embodiment where the sponge may comprise a non-latex, anti-microbial
material, the material may in effect inhibit the growth of bacteria inside the sponge. The
sponge 110 may comprise an open-cell foam material where gas pockets may connect
with each other and allow oil molecules to easily flow through the entire structure, displacing the air/gas pockets (paragraph 32). Figure 7 of Silva shows a first layer having a volume and a second layer having a volume, with a pocket formed between a first and second layer, where the makeup tool is folium shaped:
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Although Silva does not explicitly disclose the volume of the second layer, as
claimed, volume modifications involve a mere change in the size of a component and a
change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systerns, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Gir. 1984), cert, denied, 469 U.S. 880, 225 USPO 232 (1984) See MPEP 2144.04, as in claim 1.
In claim 1, the phrase, “configured to apply makeup via a first layer, the second
layer, and a contact point of a narrow tip end of the makeup tool” is an
intended use. A recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. If the prior art structure is
capable of performing the intended use, then it meets the claim. In a claim drawn to a
process of making, the intended use must result in a manipulative difference as
compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto,
136 USPQ 458, 459 (CCPA 1963).
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Veronica Ewald, can be reached on 571-272-8519. 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).
/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
