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 .
This action is written in response to application number 18/983,756 filed
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 10 is 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.
It is unclear what constitutes “sufficient” surface area or “enough” material. It would be at the user’s discretion when obtaining that type of measurement. Therefore, the claim is indefinite. Appropriate action is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 16 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Although the limitations of claim one “for the skin” of a person, claim 1 does not explicitly claim the skin. Claim 10 however is directed to the lips of a human and therefore are unpatentable. Appropriate action is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 5-9, 15, 17-18, 20-21, 25, 27 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cloud (US 5,348,031) in view of Curry et al. (US 2014/0048095).
Claim 1. Cloud discloses a device 10 for storing and applying material to a skin of a user for medical and/or cosmetic purposes, the device comprising:
a body including first 16 and second 17 sides that define (1) a cavity 23/24 that functions as a reservoir for storing the material and (2); and
an applicator 14 configured to be inserted into and removed from the hole of the body, the applicator including:
(1) a first section 30 configured to be grasped by the user for applicator removal from and insertion into the hole of the body (fig. 1); and
(2) a second section 32 for accumulating material within the cavity of the body and for subsequently applying the material to the skin of the user (col. 2, ll. 25-67).
Cloud fails to explicitly teach a hole in the device. Curry teaches a hole 40 that communicates with the cavity and allows an application to be inserted and removed ([0049]; fig. 1). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the opening of Cloud to include the gap of Curry to allow easy finger gripping for opening and inserting the applicator inside the device.
Claim 2. Cloud-Curry discloses the device of claim 1 wherein the applicator further includes a third section between the first and second sections, the third section comprises (1) a seal 19 that is configured as a ledge that extends outwardly with respect to the first section, the seal functions as a seal between the applicator and the body when applicator is fully inserted and seated within the hole of body (Cloud; fig. 1-3).
Claim 5. Cloud-Curry discloses the device of claim 1 wherein the applicator includes a third section 34 having a first that extends in an outward direction away from the first section, the ridge is configured to secure the applicator within the body when fully seated therein (Cloud; Col. 2, ll. 51-67).
Claim 6. Cloud-Curry discloses the device of claim 5 wherein the body includes at least indentation 27 to receive the first ridge of the third section to secure the applicator within the body when seated therein (Cloud; fig. 1-2).
Claim 7. Cloud-Curry discloses the device of claim 1 wherein the first section includes a lip 33 configured to facilitate grasping (Cloud; fig. 1).
Claim 8. Cloud-Curry discloses the device of claim 5 wherein the third section includes a second ridge 34 adjacent the first ridge that extends outwardly and that is configured to secure the applicator within the body when fully seated therein (Cloud; fig. 1).
Claim 9. Cloud-Curry discloses the device of claim 1 wherein the first section of the applicator is circular at the distal end thereof (Cloud; fig. 2).
Claim 14. Cloud-Curry discloses the device of claim 1 wherein the body includes a first side 12 and a second side 14 that together device the cavity and hole 40 (Curry; fig. 1).
Claim 15. Cloud-Curry discloses the device of claim 1 wherein the material is lip balm, lip gloss or petroleum jelly (cloud; col. 1; ll. 5-15).
Claim 17. Cloud-Curry discloses the device of claim 1 wherein the body is configured as a single integral structure that includes the first and second sides (Cloud; fig. 1), a two-piece structure that includes the first and second sides or a three-piece structure that includes the first and second sides that are combined to form the body.
Claim 18. Cloud-Curry discloses the device of claim 1 wherein the first and second side are deformable (Curry; [0052]).
Claims 20, 27. Cloud discloses a device 10 for storing and applying material to a skin of a user for medical and/or cosmetic purposes, the device configured to fit in a sleeve sized to fit a credit card (fig. 1), the device comprising:
a body including first 16 and second 17 sides that define (1) a cavity 22/23 that functions as a reservoir for storing the material; and
an applicator 14 configured to be inserted into and removed from the hole of the body (fig. 2), the applicator including:
(1) a proximal section 30 configured to be grasped by the user for applicator removal from and insertion into the hole of the body;
(2) a distal section 32 for accumulating material within the cavity of the body and for subsequently applying the material to the skin of the user; and
(3) a mid-section 33 between the proximal section and distal section having a first ridge (embossed ridged extending downwardly from 32) that extends outwardly and that is configured to fit within the first indentation to secure the applicator within the body when seated therein (col. 2, ll. 50-67; fig. 1-2).
Cloud fails to explicitly teach a hole in the device. Curry teaches (2) a hole 40 that communicates with the cavity and (3) a first indentation within the hole of the body ([0049], [0060]; fig. 4, 9). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the opening of Cloud to include the gap of Curry to allow easy finger gripping for opening and inserting the applicator inside the device.
Claim 21. Cloud-Curry discloses the device of claim 20 wherein the mid-section between the first and second sections, the third section comprises (1) a seal 19 that is configured as a ledge that extends outwardly with respect to the first section, the seal functions as a seal between the applicator and the body when applicator is fully inserted and seated within the hole of body (Cloud; fig. 3, 5).
Claim 25. Cloud-Curry discloses the device of claim 20 wherein the proximal section of the applicator is circular at the distal end thereof (Cloud; fig. 1).
Claim 31. Cloud-Curry discloses the device of claim 27 wherein the body is configured as a single integral structure that includes the first and second sides, a two-piece structure that includes the first and second sides or a three-piece structure that includes at least the first and second sides that are combined to form the body (Cloud; fig. 1-2).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cloud (US 5,348,031) in view of Curry et al. (US 2014/0048095) in view of Patton (US 8,087,271).
Claim 19. Cloud-Curry discloses the device of claim 1 but fails to disclose a keychain hole. Patton teaches wherein the body 100 includes a hole 36 for a keychain (col. 4, ll. 60-67- col. 5, ll. 1-2; fig. 3). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the body of Cloud-Curry to include the key slot of Patton for easily identifying the device with the addition of accessories.
Allowable Subject Matter
Claims 3-4, 11-13, 22-24, 26 and 29-30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAVEN COLLINS whose telephone number is (571)270-1672. The examiner can normally be reached Monday-Friday 8:30am to 5:00pm EST.
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/RAVEN COLLINS/ Examiner, Art Unit 3735
/Anthony D Stashick/ Supervisory Patent Examiner, Art Unit 3735