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 .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 11-31) in the reply filed on 7/30/2026 is acknowledged.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/30/2026.
Specification
The disclosure is objected to because of the following informalities:
Reference sign 112 is described inconsistently in the specification as “inkjet receptive coating” [0023], “inkjet receptive layer” [0037], and “cosmetic ink layer” [0037].
Reference sign 140 in Figure 3C is not defined/described in the specification.
Appropriate correction is required.
The use of the terms such as Epson, Hewlett Packard, and Canon, which are trade names or a marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 11, 16, 20, and 24 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 11 recites the limitation "the water-soluble film". There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, this recitation is being interpreted as “the water-soluble layer”.
Claim 11 also recites the limitation "the protective polymer film". There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, this recitation is being interpreted as “the protective polymer layer”.
Claim 16 recites “wherein the humectant comprises one or more of diglycerol, glycerin isoprene glycol, dipropylene glycol, tripropylene glycol monomethyl ether, and triethylene glycol monobutyl ether.” “Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. MPEP 2111.03. In contrast, the recitation of “one or more” suggests that only one of the listed humectants needs to be present. The use of this contradicting language renders the scope of the claim indefinite, as it is unclear whether all the listed elements are part of the claimed invention. For purposes of compact prosecution, the instant claim is being interpreted to read “wherein the humectant comprises one or more of diglycerol, glycerin isoprene glycol, dipropylene glycol, tripropylene glycol monomethyl ether, or triethylene glycol monobutyl ether.”
Claim 20 recites the limitation “cosmetic approved”. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). In the instant case, neither the claims nor specification provides an objective definition for “cosmetic approved”. For instance, it is unclear what standards the dyes/pigments must conform to, and which entity the dyes/pigments are approved by. For purposes of compact prosecution, if the prior art teaches dyes/pigments that may be applied to the skin, it will read on the instant claim limitation.
Claim 24 recites “wherein the biocide comprises one or more of benzothiazolinone, phenoxyethanol, and ethylhexylglycerin.” “Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. MPEP 2111.03. In contrast, the recitation of “one or more” suggests that only one of the listed biocides needs to be present. The use of this contradicting language renders the scope of the claim indefinite, as it is unclear whether all the listed elements are part of the claimed invention. For purposes of compact prosecution, the instant claim is being interpreted to read “wherein the biocide comprises one or more of benzothiazolinone, phenoxyethanol, or ethylhexylglycerin.”
Examiner Comment
The Examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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.
Claims 11, 27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as evidenced by Basak et al. (2024).
Regarding claim 11 , Ewan teaches an inkjet printer printed temporary tattoo [Abstract; claim 7], printed with FDA-approved cosmetic ink [col. 5, line 16; claim 4], comprising: a paper (i.e. print backing); water-soluble layer overlaying the paper; water-insoluble adhesive deadener overlaying the water-soluble layer comprising polyvinyl alcohol [col. 4 line 11-12]; an imprint coating (i.e. inkjet receptive coating) overlaying the adhesive deadener, upon which ink is imprinted (reads on ink layer); and an adhesive layer overlaying the ink layer [claim 1; Figure 2]. Ewan further teaches that the water-insoluble adhesive deadener serves to protect the inkjet ink from dissolution by water and the water-soluble layer (reads on protective polymer layer) [col. 4, line 12-14].
Regarding claim 27, Ewan teaches that the print backing comprises a paper layer having a high rate of water absorption (reads on porous) [col. 3, line 55-56]. As evidenced by Basak, paper comprises interwoven fibers of cellulose [pg. 1], which are porous and hydrophilic [pg. 2].
Regarding claim 29, Ewan teaches that the water-soluble layer may comprise of polyvinyl alcohol [col. 2 line 66 - col. 3 line 1]
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as evidenced by Electronics Australia (1996) and Hewlett Packard 850C Manual (accessed 9/11/2026).
Regarding claim 12, Ewan does not explicitly teach a temporary tattoo wherein the cosmetic ink has a resolution of 360 to 2440 horizontal or vertical dots per inch. Ewan teaches that the cosmetic ink printed temporary tattoo may be printed using various inkjet printers including the Hewlett Packard (HP) 850C [col. 4, line 29-32]. The HP 850C (discontinued in 1996, see Electronics Australia, pg. 126 ) prints at 600 x 600 dpi [Hewlett Packard, pg. 19]. It would be obvious to select a printer taught by Ewan to be suitable for printing the cosmetic ink tattoo and consequently have a printed image with a resolution of 600 x 600 dpi. The range taught by the prior art overlaps with and makes obvious the instantly claimed range. MPEP 2144.05.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Drew (US 5,578,353, patented 11/26/1996).
Regarding claim 13, Ewan does not explicitly teach a temporary tattoo wherein the inkjet receptive coating as a thickness of 1-10 microns. Drew teaches an admission ticket having a transferrable tattoo on each ticket for transfer to the skin for identification purposes [Abstract]. The ticket comprises a substrate and ink indicia layer coated onto said substrate, wherein the ink is transferred to the skin by wetting and pressing the ink indicia layer against the skin [Abstract]. Drew further teaches that the ink indicia layer (reads on inkjet receptive coating) is 10 microns or less [col. 3, line 10-12]. It would be obvious to formulate the ink receptive layer of Ewan in a thickness that is taught to be acceptable for an ink layer for transfer onto skin, as taught by Drew. Furthermore, differences in parameters such as concentration, proportions, or degree will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. See MPEP 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Humason et al. (US 4,522,864, patented 6/11/1985).
Regarding claim 14, Ewan teaches that the water-insoluble adhesive deadener (protective polymer layer) may have a thickness of approximately 0.8 mils, which equals about 20 microns [col. 4, line 18]. Humason teaches a temporary tattoo comprising an extremely thin film of water-resistant material disposed between the water-soluble slip layer and imprinted design of the tattoo [col. 1, line 53-59; Figure 2]. The film protects the printed design during the time it is in place on the skin [col. 2, line 40-42] and may comprise of any materials having the necessary water-resistant properties, such as commercially available “offset overprint varnish” or resins (i.e. polymeric) [col. 3, line 9-12]. Humason further teaches that extreme thinness of the film is important to enable the film and imprinted design to flex and stretch with the skin without cracking and disrupting the design [col. 2, line 52-58]. The thinness of the film also allows the film to be less noticeable on the skin and achieve a translucency that improves the appearance of the tattoo [col.2, line 46-52]. The film is preferably no thicker than necessary to resist the penetration of water to the paper and water-soluble slip layer [col. 3, line 7-10].
Generally, differences in parameters such as concentration, proportions, or degree will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. See MPEP 2144.05. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997) (Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the teachings of Humason to that of Ewan, and optimize the thickness of the protective polymeric layer to achieve the advantages taught by Humason. Furthermore, "[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Claims 15-20 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Edaka et al. (US 2017/0135921 A1, published 5/18/2017, cited on the 1/17/2025 IDS).
Regarding claims 15-20 and 25-26, Ewan teaches the temporary tattoo of claim 11, but does not explicitly teach a temporary tattoo wherein the cosmetic inkjet ink comprises the ingredients and concentrations recited in instant claims 15-20. Edaka teaches cosmetic ink formulations suitable for inkjet printing on skin [Abstract; 0013;0031]. The cosmetic ink of Edaka comprises about 7% to about 30% humectant by weight (reads on instant claim 15, wherein the humectant may comprise of dipropylene glycol (reads on instant claim 16) [0021]. Edaka does not explicitly disclose that the cosmetic ink comprises a polymer, however, Edaka teaches that the ink may comprise of polyethylene glycol (reads on instant claims 17 and 18) [0021]. Edaka teaches polyethylene glycol as a humectant, thus it would be obvious to include polyethylene glycol in the composition in the amount of about 7% to about 30% by weight, i.e. the amount taught to be suitable for humectants (reads on instant claim 17) [0021]. Edaka further teaches that the cosmetic ink may comprise about 1% to about 3% surfactant by weight (reads on instant claim 19) [0023] and cosmetically approved dyes [0001] in the amount of about 1 to about 5% by weight [0020] (reads on instant claim 20). The cosmetic ink may also comprise of water in the amount of about 60% to about 80% by weight (reads on instant claims 25 and 26) [0024]. It would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Ewan with that of Edaka, to include the cosmetic ink taught by Edaka in the temporary tattoo of claim 11. Edaka teaches that when the cosmetic ink set is being applied to substantially non-porous surfaces, an ink receptive layer may be applied to the surface prior to printing [0031]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Furthermore, the amounts taught by Edaka of the various ingredients overlap with and make obvious the instantly claimed amounts. MPEP 2144.05.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Onodera (US 2020/0121573 A1, published 4/23/2020, cited on the 1/17/2025 IDS) and SpecialChem, AMINOMETHYL PROPANOL: INCI Ingredient (published 2/17/2023).
Regarding claims 21-22, Ewan does not explicitly teach a temporary tattoo comprising cosmetic inkjet ink comprising 0.01% to 2% pH buffer by weight. Onodera teaches a cosmetic ink that may be printed on a cosmetic sheet using an inkjet printer [0001; 0085]. Onadera further teaches that the cosmetic ink preferably has a pH in the range of 6 to 10, in order to prevent the cosmetic ink from eroding member parts of various printers, and to prevent aggregation of coloring material (i.e. pigments and dyes, see paras. 0051-0053) during long-term storage [0078]. Accordingly, the cosmetic ink of Onadera may comprise of pH adjusting agents (reads on pH buffer) [0058]. Onadera does not explicitly teach the instantly claimed pH buffers, however, SpecialChem teaches that aminomethyl propanol is a pH adjuster and preservative used in cosmetic products [pg. 1]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. It would be obvious to a skilled artisan to select aminomethyl propanol, a pH adjuster primarily used in cosmetics, for use in a cosmetic ink composition. SpecialChem further teaches that a concentration greater than 5% of aminomethyl propanol can cause undesired side effects such as skin irritation and redness [pg. 4]. Neither Onadera nor SpecialChem explicitly disclose the instantly claimed range, however, differences in concentration will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP 2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). A skilled artisan would be motivated to adjust the amounts of aminomethyl propanol in order attain the desired pH and avoid unwanted skin side effects, as taught by Onadera and SpecialChem, respectively.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Handley (US 2020/0276101 A1, published 9/3/2020).
Regarding claims 23-24, Ewan does not explicitly teach a temporary tattoo comprising cosmetic inkjet ink comprising 0.1% to 3% biocide by weight. Handley teaches a semi-permanent (reads on temporary) tattoo ink composition that may be used with an inkjet printer [Abstract; 0024]. Handley further teaches that the composition may comprise of preservatives in the amount of about 0.05% to about 5% by weight of the composition [0155-0156]. The preservative may comprise of phenoxyethanol or ethylhexylglycerin [0155] (reads on biocide). It would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Ewan with that of Handley and include a preservative, such as phenoxyethanol or ethylhexylglycerin, in the cosmetic ink composition. A skilled artisan would be motivated to make this modification with a reasonable expectation of success in order to prevent discoloration or spoilage of the ink composition [0155]. Furthermore, it would be obvious to include phenoxyethanol or ethylhexylglycerin in the amount that preservatives are taught to be suitable in. The range taught in the prior art overlaps with makes obvious the instantly claimed range. MPEP 2144.05.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS) as applied to claim 11 above, and further in view of Collins et al. (US 6,299,967, patented 10/9/2001, cited on the 1/17/2025 IDS), as evidenced by Gilbert (2001).
Regarding claim 28, Ewan does not explicitly teach a protective polymer layer comprising acrylic and/or polyurethane. Collins teaches an inkjet recording media for making temporary tattoo images on human skin [Abstract]. The media comprises a water-soakable release-paper substrate coated with an inkjet imaging layer that is receptive to ink from inkjet printing devices [col. 3 line 49- col. 4 line 5]. Collins further teaches a water-insoluble protective layer comprising polymers such as polyvinylbutyral, cellulose acetate propionate, cellulose acetate butyrate, polyvinyl chloride, butyl rubber, chloroprene, and the like [col. 3, line 64-67]. Collins teaches additional water-insoluble polymeric components for use in the imaging layer, including polyvinyl chloride, polyesters, polyurethanes, and methyl methacrylate (reads on acrylic, see Gilbert), 2-hydroxyethyl acrylate, and ethyl acrylate. As Collins teaches these water-insoluble polymers to be equivalent, it would be obvious for a skilled artisan to select any of the recited polymers for inclusion in the protective polymer layer, such as polyurethane and acrylic compounds. It would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, to modify the teachings of Ewan with that of Collins, and select any of the polymers taught by Collins as suitable for a protective polymer layer. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07.
Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Ewan (US 5,958,560, patented 9/28/1999, cited on the 1/17/2025 IDS), as applied to claim 11 above, and further in view of Costantino et al. (US 2020/0097791, published 3/26/2020), as evidenced by SciFinder Substance Detail, Polyethylene Terephthalate (accessed 9/11/2026).
Regarding claim 30, Ewan teaches a temporary tattoo comprising a release coat disposed between the backing material and adhesive layer [Fig. 2], but does not explicitly disclose a temporary tattoo wherein a wax layer is disposed between the backing and the adhesive layer. Costantino teaches a cutaneous information device (CID) for purposes such as identification and data collection. The CID comprises a first carrier layer (i.e. protective backing) with a release agent or anti-stick coating, and a second layer comprising a biocompatible adhesive and a substrate suitable for receiving and carrying printed and/or electronically-readable information [0013; see Fig. 1 and paras. 0078-0088]. The substrate comprising the CID is preferably of low strength and will break apart if subjected to relatively low mechanical stress [0084]. This makes the device substantially impossible to remove, and when removed, the device is destroyed visually and functionally [0011]. As a result, the device is nontransferable, which adds a measure of security when used for identification purposes [0084; 0117]. To apply the CID, the carrier layer is removed and the adhesive side is placed on the skin [0013]. The protective carrier layer comprises a release layer or non-stick coating that allows for easy separation from the adhesive layer [0106]. This allows the rest of the CID to be removed as a single mass from the release layer [0106], i.e. without damaging the structure and rendering the device useless for identification purposes. The release layer may comprise of wax [0161]. A skilled artisan would recognize the applicability of Costantino’s teachings to temporary tattoos, and modify the teachings of Ewan such that the tattoo comprises a release layer made of wax, disposed between the backing and the adhesive. A skilled artisan would be motivated to make this modification and arrive at the instantly claimed invention, in order to allow for the backing layer of the temporary tattoo to be easily removed without disturbing the adhesive layer, and thus preserve the integrity of the printed cosmetic ink pattern.
Regarding claim 31, Ewan teaches a temporary tattoo comprising a backing material [Fig. 2] but does not explicitly teach that the backing comprises polyethylene terephthalate (PET). Ewan teaches that the backing material has a protective function [col. 3, line 22], and may comprise of any variety of films, including polyester, and is preferably a clear plastic [col 4 line 46-52]. Costantino teaches that PET, which is a polyester (see Scifinder Substance Detail), is strong, lightweight, and flexible [0158]. PET is also used as an outside protective layer in some electronic constructions. The selection of a known material based on its suitability for its intended use is prima facie obvious.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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, Brian-Yong Kwon can be reached at 571-272-0581. 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.
/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
Prosecution Insights