DETAILED ACTION
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, the claim appears to recite different configurations for the “shipping configuration” and “transfer configuration,” with some components that are present in the “shipping configuration” being removed or re-arranged in the “transfer configuration.” It is unclear which configuration Applicant intends to claim, or whether the “removed” portions are required to be present in the claimed invention. Claims 2-10 are rejected due to their dependency from claim 1.
Regarding claim 2, the claim states “wherein the at least one semi-transparent tissue sheet is removed prior to the thermal image transfer process,” which appears to be a method limitation. For the purpose of continued examining, the examiner will assume the limitation is meant to be a statement of intended use.
Regarding claim 7, the claim states that the transparent plastic sheet “is treated to exhibit static cling of a low-tack adhesive property.” It is unclear whether this is intended to be a method limitation or a product-by-process limitation.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over “Fake Skin - An Account of my First Experience of Mark-Making with a Tattoo Machine,” Adam McDade, 2018, as retrieved from https://adammcdade.weebly.com/beyond-the-epidermis-research-blog/category/tattoo/3, in view of “Stencils,” Tattoo Archive, 2004 as retrieved from https://www.tattooarchive.com/history/stencils.php.
Regarding claim 1, McDade teaches a tattoo stencil comprising layer of transparent paper, carbon paper, and yellow-toned paper (corresponding to the claimed “backing sheet”). The teachings of McDade differ from the present invention in that McDade doesn’t teach that the “transparent paper” is a plastic sheet. “Stencils,” however, teaches that the use of a transparent plastic such as acetate as a stencil has been known since at least the 1940s. It would have been obvious to one of ordinary skill in the art that a transparent plastic such as acetate could be used as the “transparent paper” of McDade, because the use of plastic materials such as acetate as tattoo stencils is old and well-known in the art of tattooing.
Not that although McDade does not teach any specific transmittance for the transparent sheet, it would have been obvious to one of ordinary skill in the art to provide the sheet with a transmittance of at least 50% because doing so would be consistent with the teaching that the sheet is to be “transparent.”
Regarding the limitations stating that the plastic sheet is removably interposed between the backing sheet and the carbon sheet in a shipping configuration and repositionable on top of the carbon sheet in a heat transfer configuration, the limitations appear related to rearrangement of the product’s parts, and as such cannot distinguish the claimed invention from that of the prior art (MPEP 2144.04 VI). Additionally, there is no apparent reason why the product of McDade could not be arranged in the claimed manner, and the specific order of the various layers in the product for shipping would be a matter of routine design choice.
Regarding claims 3 and 4, the teachings of McDade differ in that McDade does not explicitly teach that the sheet assembly is bound along a common edge. It would, however, have been obvious to one of ordinary skill in the art to bind the sheets together along a common edge because McDade explicitly teaches that the sheets are intended to be used together, and because it is old and well-known in the art to bind carbon paper with an intended image-receiving layer and other associated sheets.
Regarding claim 5, the teachings of McDade differ from the present invention in that McDade does not teach any specific thickness for the transparent sheet. The claimed thickness range, however, appears to the be an arbitrary recitation of size or dimension, and as such cannot distinguish the claimed invention (MPEP 2144.04 IV). Additionally, it would have been obvious to one of ordinary skill in the art to provide the transparent sheet with a thickness that would allow it to flexibly transfer a pattern to a client’s skin because McDade teaches that the transparent sheet is intended to transfer a pattern to a client’s skin.
Regarding claim 6, although McDade does not teach any specific optical haze value of the transparent sheet, McDade does teach that the sheet is to be transparent. It would have been obvious to one of ordinary skill in the art to make the transparent sheet of McDade have a haze value of less than 50%, as doing so would be consistent with McDade’s teaching that the product is to be “transparent.”
Response to Arguments
Applicant's arguments filed 9-11-2025 have been fully considered but they are not persuasive. Regarding the teachings of McDade and Tattoo Archive, Applicant argues that the cited prior art does not teach the claimed limitations. This is unpersuasive for the reasons discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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/IAN A RUMMEL/Primary Examiner, Art Unit 1785