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 .
Claim Objections
Claim 12 is objected to because of the following informalities:
In regard to claim 12, the limitation “the cosmetic sponge is configured to: change the cosmetic sponge” (see lines 4-5) is unclear, i.e. it is unclear as to how the sponge is configured change the sponge. It appears in claim 12, on line 5, “the cosmetic sponge” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
In regard to claims 1 and 12, the limitation of the sponge changing back to the first color as the sponge returns to the first temperature based on a liquid absorbed the sponge that is at the first temperature (see lines 7-10 of claim 1 and lines 9-11 of claim 12) is considered to be new matter, i.e., the specification does not disclose the sponge changes to the first color based on a liquid absorbed by the sponge that is at the first temperature.
In regard to claim 17, the recitation of the sponge changing from the second color and a second temperature to the first color at a third temperature is considered to be new matter. It appears in claim 17 that on line 2, “first” should be “third” and on line 3, “second” should be “third” and “first” should be “second”. See claim 15 in U.S. Patent 12,295,477.
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 13 and 17 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.
In regard to claim 13, an antecedent basis for “the visual indicator” (see line 1) and “the user” (see line 2) has not been defined.
In regard to claim 17, an antecedent basis for “the portion” (see line 1) has not been defined.
Claim Rejections - 35 USC § 102
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.
Claims 11-16, 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peachy-Color Changing Blending Sponge; 8/31/20 (as cited by the Applicant in Parent Application 18/607,197, herein after Peachy).
In regard to claim 11, the Peachy reference discloses a system comprising:
a cosmetic sponge comprising a thermochromic pigment, wherein the thermochromic pigment is configured to change color (from white to pink);
wherein the cosmetic sponge is configured to:
change the cosmetic sponge from a first color (white) at a first temperature (>68 degrees F) to a second color (pink) at a second temperature (<68 degrees F) in response to absorbing liquid by the cosmetic sponge. Further, the sponge is capable of applying makeup while the sponge is the second color and is capable of changing back to the first color as the sponge returns to the first temperature in response to absorbing liquid (at an appropriate temperature); i.e., the steps of applying makeup and changing the sponge back to the first color are considered product by process limitations that do not impart any structural limitations on the claim. It is noted claims 13-18 and 20 also include product by process limitations which do not lend any structural limitations to the claims.
In regard to claim 13, the color transition is capable of serving as a visual indicator to a user that the user needs to dampen the sponge when a color transition happens at the period of time before completion of applying makeup.
In regard to claim 14, the color transition is capable of serving as a visual indicator to a user that the user needs to dampen the sponge.
In regard to claim 15, the sponge is capable of absorbing liquid after applying makeup to remove makeup from the sponge.
In regard to claim 16, the sponge is capable of being stored when the portion of the sponge is a first color.
In regard to claim 18, since the sponge changes color at the second temperature, is it capable of signaling the sponge is damp before use.
In regard to claim 20, the sponge changing color is capable of serving an a visual indicator to a user that they need to dampen the sponge.
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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Peachy.
Although the Peachy reference does not disclose the first temperature is an ambient temperature and the second temperature is a skin temperature of a user, it is the examiner’s position it would have been obvious to one of ordinary skill in the art at the time the invention was made the sponge can be designed to change color at any suitable temperature, including the claimed temperatures, especially since an ambient temperature the skin temperature of a user covers a wide range of temperatures, without effecting the overall operation of the device.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 17 of U.S. Patent No.12,295,477. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader in scope than the patented claims and therefore the patented claims anticipate the pending claims and anticipation is the epitome of obviousness. It is noted the various product by process limitation noted above do not lend any structural limitations to the claims and since the patented claims include at least all of the structural limitations of the pending claims, the patented claims are considered to anticipate the pending claims.
Claims 12-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 17 of U.S. Patent No.11,963,601. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader in scope than the patented claims and therefore the patented claims anticipate the pending claims and anticipation is the epitome of obviousness. As discussed above, the various product by process limitation noted above do not lend any structural limitations to the claims and since the patented claims include at least all of the structural limitations of the pending claims, the patented claims are considered to anticipate the pending claims.
Claims 12-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 18 of U.S. Patent No.11,607,025. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader in scope than the patented claims and therefore the patented claims anticipate the pending claims and anticipation is the epitome of obviousness. As discussed above, the various product by process limitation noted above do not lend any structural limitations to the claims and since the patented claims include at least all of the structural limitations of the pending claims, the patented claims are considered to anticipate the pending claims.
Claims 12-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 15 of U.S. Patent No.11,202,491. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader in scope than the patented claims and therefore the patented claims anticipate the pending claims and anticipation is the epitome of obviousness. As discussed above, the various product by process limitation noted above do not lend any structural limitations to the claims and since the patented claims include at least all of the structural limitations of the pending claims, the patented claims are considered to anticipate the pending claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The McDonald et al. reference is cited as being directed to the state of the art as a sponge which changes color upon a temperature change and the Villarreal et al. reference is cited as being directed to a cosmetic sponge having a tip at one end and a bulbous surface at an opposite end.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J WALCZAK whose telephone number is (571)272-4895. The examiner can normally be reached Monday-Friday 6:30-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DJW
10/3/26
/DAVID J WALCZAK/Primary Examiner, Art Unit 3754
