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 4 and 15 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.
Claim 4 recites “wherein and the second application elements are flocking fibers applied to the second applicator face.” It is unclear what wherein is referring to.
Claim 15 contains the trademark/trade name HYTREL ®. 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 type of thermoplastic elastomer and, accordingly, the identification/description is indefinite.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 6-12 is/are rejected under 35 U.S.C. 102 (a)(1) and (a)(2) as being anticipated by Sanchez (US 2017/0290411 A1).
Regarding claim 1, Sanchez discloses a method of forming a cosmetic applicator (abstract) comprising: forming a molded component [0018] comprising: a first part (18) having a first mating face (face at 245) and a first applicator face (top surface of figure 71), wherein the first applicator face comprises first application elements and wherein the first mating face comprises a cavity formed by two walls extending in a direction away from the first applicator face (figure 71); a second part (17) having a second mating face and a second applicator face (see figure 71); and a hinge (34), wherein the hinge joins the first part to the second part (see figures 5-10), wherein, the first part, the hinge, and the second part are arranged along a longitudinal axis (figures 12-13, 71), and rotating the first and second parts about a hinge axis to move the first and second mating faces into contact one another (see figures 8-10 & 71), wherein the second part is received in the cavity with the second applicator face exposed in a direction opposite from the first applicator face (see figure 71).
Regarding claim 2, Sanchez discloses applying a second application element to the second applicator face [0026, 0030-0031, 0018].
Regarding claim 6, Sanchez discloses wherein the first part comprises a first half end piece (30a, figure 5), wherein the second part comprises a second half end pieces (30B figure 5), and wherein rotation about the hinge axis (34) moves the first and second end half pieces into contact to form a mounting end piece (see figures 5-10 & 71).
Regarding claim 7, Sanchez discloses providing a stem (4) having an interior longitudinal space; and inserting the mounting end piece into the space (figure 5, 7 and 17, 34).
Regarding claim 8, Sanchez disclose wherein the first application elements are selected from one or more of tines, projections, bristles, particles, ribs, grooves, discs, slits, cuts, holes and dimples [0026, 0030, 0131].
Regarding claim 9, Sanchez discloses wherein the first and second mating faces further comprise one or more interlocking structures [0126] and wherein the step of rotating further comprises engaging the interlocking structures to fix the first part with the second part [0144].
Regarding claim 10, Sanchez discloses wherein the one or more interlocking structures comprises a snap fit connection [0051-0052].
Regarding claim 11, Sanchez discloses wherein the cavity extends along the longitudinal axis of the first part and wherein the cavity is open at a proximal end and a distal end (figure 71 and [0188]).
Regarding claim 12, Sanchez discloses wherein, the cavity comprises an open end longitudinally opposite from the hinge along the first part (see figure 71), wherein the second part comprises a distal end longitudinally opposite from the hinge along the second part, wherein, following the step of rotating about the hinge axis, the open end and the distal end of the second part form a distal tip of the applicator head (see figure 71).
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.
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) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez (US 2017/0290411 A1).
Regarding claim 3, Sanchez doesn’t explicitly discloses wherein the step of applying occurs prior to the step of rotating. However, MPEP 2144.04 (IV)(C) discloses in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)).
Regarding claims 4-5, wherein Sanchez discloses wherein the second application elements are flocking fibers [0031] applied to the second applicator face and wherein the first part is free of clocking fibers [0026 & 0031]. So Sanchez discloses that the first application elements can be tines and free of clicking while the second application elements can be flocking [0026 & 0031].
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez (US 2017/0290411 A1) in view of Neuner (US2002/0059942 A1).
Regarding claim 13, Sanchez discloses wherein the step of forming the molded [0018] thermoplastic material component [0025] but does not explicitly disclose comprises injection molding. However it is conventionally known to use injection molding to mold applicators. Analogous applicator art, Neuner, discloses injection molding is a well-known process which allows two or more materials to be substantially simultaneously injected into a single mold [0027]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized injection molding since "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding claim 14, Sanchez teaches wherein the thermoplastic material is selected from an elastomer, a thermoplastic elastomer, a thermoplastic elastomer polyester,HYTREL®, nitrile rubber, silicone rubber, ethylene-propylene terpolymer rubber (EPDM), styrene-ethylene-butylene-styrene (SEBS), styrene-isoprene-styrene (SIS), polyurethane (PU), ethyl vinyl acetate (EVA), polyvinyl chloride (PVC),polyethylene (PE), polyethylene terephthalate (PET), and polypropylene (PP) [0025].
Allowable Subject Matter
Claim 15 is allowable since the closest prior art of record has been cited and fails to teach the two walls surrounding the second part and providing application surfaces that extend along outside edges of the second part and the two walls of the first part extending at oblique angles with respect to the longitudinal axis of the applicator head with the received face received in the non- through cavity between the two walls in combination with the hinge joining the first and second parts, to form the applicator head with both application faces having the prescribed application elements as required by claim 15. Claims 16 -19 are allowed for depending on claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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