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 § 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.
Claim(s) 18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim(s) 18 is /are directed to a “storage media”. However, according to paragraph [00082] of the specification, the broadest reasonable interpretation of the “storage media” covers a transitory propagating signal which is non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007).
The examiner suggests amending the claim(s) to recite a “non-transitory computer-readable medium” storing a computer program or equivalent. Any amendment to the claims should be commensurate with its corresponding disclosure.
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.
Claim(s) 1-2, 7-9, 14, 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (US 2017/0325724).
As to claim 1, Wang discloses a computer-implemented method for designing a user-specific electronic tattoo (Fig. 36B) comprising:
obtaining a user-input including one or more desired functions of the electronic tattoo (para. 0007, 0117) and a desired appearance of the electronic tattoo (para. 0281, Fig. 36B); and
generating a design of the electronic tattoo based on the user-input (0126, 0164, 0085) including:
determining an electronic circuit design capable of achieving the one or more desired functions (para. 0126, 0142, 0281, Fig. 36B); and
designing a final image of the electronic tattoo that mimics the desired appearance and incorporates the electronic circuit design (para. 0281, Fig. 36B).
As to claim 2, Wang discloses the computer-implemented method of claim 1, wherein the user-input is provided by a user via a user-interface (0126, 0164, 0285).
As to claim 7, Wang discloses the computer-implemented method of claim 1, wherein determining the electronic circuit design comprises applying a circuit design algorithm configured to generate circuit parameters for achieving the one or more desired functions (para. 0126, 0142, 0281, Fig. 36B).
As to claim 8, Wang discloses the computer-implemented method of claim 7, wherein generating the circuit parameters includes: identifying circuit component candidates which fulfill the desired functions (para. 0126, 0142, 0281, Fig. 6A, Fig. 36B); identifying electrical connections between the circuit component candidates (para. 0126, 0142, 0281, Fig. 6A, Fig. 36B); and identifying constraints (para. 0126, 0142, 0281, Fig. 6A, Fig. 36B).
As to claim 9, Wang discloses the computer-implemented method of claim 8, wherein identifying the circuit component candidates includes: determining the circuit component candidates from circuit components stored in a component database which fulfill the desired functions (para. 0126, 0142, 0281, Fig. 6A, Fig. 36B).
As to claim 14, Wang discloses the computer-implemented method of claim 1, further comprising: generating user instructions for producing the electronic tattoo based on the final image of the electronic tattoo (0126, 0164, 0285, e.g. instructions provided by AutoCAD (Autodesk, San Rafael, Calif.); and communicating the user instructions to the user (0126, 0164, 0285).
As to claims 18-19, these claims recite features similar to those discussed above. Therefore, they are rejected for reasons similar to those discussed above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0325724) in view of Rubino (US 2012/0040314).
As to claims 3, Wang is silent regarding wherein the desired appearance is provided by uploading an image file.
Rubino teaches wherein the desired appearance is provided by uploading an image file (para. 0056, 0069, 0070).
It would have been obvious to one of ordinary skill in the art to incorporate Rubino’s teachings into Wang since doing so would merely combine prior art elements according to known methods to yield predictable results, and provide an efficient and effective system for viewing, selecting, and customizing a tattoo as suggested by Rubino in paragraph 0008.
As to claims 4, Wang is silent regarding wherein the desired appearance is provided by selecting an image file from a tattoo image database which stores existing tattoo designs.
Rubino teaches wherein the desired appearance is provided by selecting an image file from a tattoo image database which stores existing tattoo designs (para. 0052, 0054).
It would have been obvious to one of ordinary skill in the art to incorporate Rubino’s teachings into Wang since doing so would merely combine prior art elements according to known methods to yield predictable results, and provide an efficient and effective system for viewing, selecting, and customizing a tattoo as suggested by Rubino in paragraph 0008.
As to claims 5, the combination of Wang and Rubino discloses the computer-implemented method of claim 3, wherein salient features, specifically visual and/or aesthetic features, of the image file are identified and extracted by image recognition, and particularly, wherein the visual and/or aesthetic features are conveyed into a target image (Wang, para. 0005, 0216, 0229; Rubino, para. 0056, 0069, 0070).
As to claims 6, the combination of Wang and Rubino discloses the computer-implemented method of claim 1, wherein the desired appearance is provided by uploading basic preferences regarding one or more of shape, size, coloration, style, visual features and/or aesthetic features, and particularly, wherein the visual and/or aesthetic features are conveyed into a target image (Rubino, para. 0049, 0057, 0059).
Allowable Subject Matter
Claims 10-13, 15-17, 20 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art discloses the claim limitations discussed above, but fails to disclose the combined features required by each of dependent claims 10, 15, 16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 Form.
Azdoud et al. disclose a method for tattooing and applying substances to skin.
Scott et al. disclose a medical alert system for monitoring and tracking an individual living at home using a tattoo on the individual's skin and an energy source.
ROGERS et al. disclose skin-mounted biomedical devices and methods of making and using biomedical devices for sensing and actuation applications.
Ankave discloses systems and computer-implemented methods of identifying tattoo providers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUOC TRAN whose telephone number is (571)272-7399. The examiner can normally be reached 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached at 571-272-7332. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHUOC TRAN/Primary Examiner, Art Unit 2668
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