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 .
Status of the Claims
Claims 31 and 32 have been newly added. Claims 9-11, 14-21, and 30 have been canceled. Accordingly, claims 1-8, 12, 13, 22-29, 31, and 32 are pending and under current examination.
Withdrawn Objections and Rejections
The objection to claims 12 and 28 is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claims 1-8, 12, 13, and 21-30 under 35 U.S.C. 112(a) as lacking written description is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claims 1-8, 12, 13, and 21-30 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claims 1-3, 5-8, 12, 13, 21-24, and 26-30 under 35 U.S.C. 103 as being unpatentable over Beal in view of Choi and Dobler is withdrawn in view of the claim amendments filed 7/13/2026. Subsequently, the rejection of claims 4 and 25 further in view of Marshall is withdrawn.
New grounds of rejection necessitated by amendments are presented below.
Response to Arguments
Applicant’s arguments filed 7/13/26 (hereafter, “Remarks’) have been fully considered and are addressed as follows. Support is found in the specification as filed for the claims as amended; Applicant’s notation of said support is appreciated. In view of the claim amendments, rejections previously issued are withdrawn as detailed above; Applicant’s arguments to this effect are persuasive.
Regarding the rejections under 35 U.S.C. 103 as being unpatentable over Beal in view of Choi and Dobler, Applicant requested reconsideration and argued that Beal does not teach a lip stain comprised of ink produced by a printing process and that it would not have been obvious to modify Beal with Choi where Choi teaches a cosmetic formulation and not a paper or sheet type substrate product. Applicant notes on page 11 of 15 that Choi’s products have poor dye fixation and therefore introduce a charge to the substrate opposite to the dye polarity for binding ink ingredients by electrostatic forces to improve color fastness. Applicant argues on page 12 of 15 of Remarks that one would not combine Beal and Choi to apply dye inks as taught by Choi’s method to a substrate as in Choi using Beal’s applicator products and concludes that said modification is contrary to Beal and Choi’s objectives and allegedly in contrast with the claimed invention (see pages 12 and 13/15 of Remarks). In reply, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It is maintained that Choi’s printing process to apply dye inks may be used in combination with Beal for the production of a cosmetic product having ink dyes disposed thereon.
Applicant argues that neither Dobler nor Marshall cure the alleged deficiency of Beal and Choi; in reply, the relevance of Beal and Choi as applied in view of the claim language as amended is maintained as detailed below.
Applicant argues that the cited references do not teach a non-alcoholic ink as newly claimed. In reply, Applicant’s argument has been considered and is persuasive in view of the claim amendments; new grounds of rejection necessitated by amendment are presented below.
New Grounds of Rejection Necessitated by Amendments of 7/13/2026
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.
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.
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.
Claims 1-3, 5-8, 12, 13, 22-24, and 26-32 are rejected under 35 U.S.C. 103 as being unpatentable over US 4611611 (to Beal, Jr., hereafter “Beal”) in view of US 2020/0146966A1 (“Choi”), US 2006/0021632A1 (“Dobler”), and US 4996044 (“Mercado”, newly cited).
The elected claims are drawn to a product comprising a set of substrates each set having a first side and a second side and a lip stain (composition) comprised of ink. The intended use of the product is as a lip stain as recited in the preamble of claim 1. The product may be used in a method where it is applied to and able to be absorbed by a user’s lips, as recited in the preamble of claim 1. Said lip stain is comprised of non-alcoholic ink and is at least one of imprinted and embedded on at least the first side of the substrate and upon stepwise method of use may transfer and perform as further descried in the claims. Claim 1 further describes the effect of a method of using the claimed product as “when at least one of the user’s lips and the ink is moistened, the lip stain transfers directly to the lips of the user” at the end of claim 1. A prior art product having the requisite structure that is capable of performing the intended use, method of use, and effects of a method of use is considered to meet the claim. The claims as amended further require unstained handling areas as further described at the end of claim 1.
Beal teaches a lipstick applicator product constructed of a piece of paper folded over on itself to form two flaps wherein an upper and lower lip print of lip cosmetic is deposited on the facing surfaces of the flaps for applying the lip cosmetic (see abstract, in particular). The applicators may be made of flat pieces of sheet-like material such as paper (see column 1, lines 6-9) or wax paper (see column 3, lines 45-46)(“a substrate having a first side and a second side” as in claim 1; limitation of claim 5). The sheets comprise and deposit colors and patterns of lipstick to the upper and lower lips (column 2, lines 64-66).
Beal does not teach that the lipstick is a lip stain or comprised of ink or produced by a printing process nor does Beal specify that the formulation is non-alcoholic as newly claimed. Choi cures this deficiency.
Choi teaches base substrate materials having formulations with dye applied using a printer device in a selected image, pattern, or color to produce a customized cosmetic product (see [0011] and [0012] in particular). Preferred embodiments of Choi’s cosmetic formulations include a suitable dye material which may be safe for use in cosmetics including edible inks (“ink” as in claim 1) and dyes including one or more of water, propylene glycol, glycerin, polysorbate 80, and FD&C dyes including Red No. 40 (see [0040])(limitations of claims 1, 4, 12, and 13) which are printed or stamped onto a base material by various means which may be a printing device (see [0041])(“the lip stain…imprinted…on at least the first side of the substrate” as in claim 1). Lipsticks and glosses may be the application employed (see [0042] and [0056]). As to the claim language limiting the ink to one which is non-alcoholic, Choi teaches that inkjet devices may print with dye-based ink (see [0005]) as recognized in the art and that edible ink and cosmetic inks are preferred (see [0040]); Choi names inks as those useful for cosmetics particularly preferred to have solvents propylene glycol or water (see [0044]; [0050]; [0051], [0056]. Alcohol is not taught to be a required solvent or carrier component in cosmetic printable inks based on Choi’s teaching as a whole (“non-alcohol based ink” as in claim 1).
Beal and Choi both pertain to cosmetic applicator products in the shape of a sheet wherein a cosmetic formulation such as lipstick or lip gloss (stain) is transferred from the sheet type product to a person’s skin. These both teach a product which performs a transfer of cosmetic dye produce thereby considered to meet the language of claim 1 reciting “wherein when at least one of the user’s lips and the ink is moistened, the lip stain transfers directly to the lips of the user”). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to use an ink printing process to apply dye inks as taught by Choi to a paper or sheet type substrate as suggested by Choi for the cosmetic applicator products of Beal, with a reasonable expectation of success. One would have been motivated to do so to facilitate production of a customized cosmetic product having safe and/or edible cosmetic ink components and known dye formulation aids such as water and propylene glycol and the particular FD&C dye outlined above for formulation of a topical color cosmetic for the intended cosmetic application to the lips in particular.
Neither of the aforementioned references necessarily teach a set of substrates having a set of sides, indicia, and first and second handling areas as newly recited in claim 1. Dobler cures this deficiency.
Dobler teaches an applicator for cosmetic lipstick which is a single ply card with a pattern that retains a sample of lipstick wherein said pattern assist in placing the cosmetic upon the applicator for subsequent transfer from the lipstick to the lips. For stepwise method of using Dobler’s product, one folds the applicator, moves to her mouth, and transfers the lipstick sample to her lips (see abstract, in particular). Fig. 1-3 show an embodiment of the applicator product illustrating a pattern, a fold place, and a perimeter on the card where no lipstick is applied thereby serving as, at the top of the card, a first handling area according to instant claim 1, and, at the bottom of the card, a second handling area according to instant claim 1 (also “the lip stain extending over less than all of the first side of each substrate” as newly recited). Dobler’s structure meets the structure and capability of performing the intended use further described in the last six lines of claim 1 as amended. Dobler’s illustrations indicate that each substrate includes alignment indicia where each substrate (top lip first side, bottom lip second side)is to be folded prior to transferring the lip stain to the user’s lips in order to apply a substantially equal amount of lip stain on each of the user’s lips. Where Dobler’s decal requires water to apply, it is considered dry prior to that point in a method of use which is “after the lip stain is at least one of imprinted or embedded on at least the first side of each substrate of the set of substrates” as in new claim 21.
Beal and Dobler are both directed to cosmetic product transfer devices. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to modify the structure and shape of Beal’s transfer paper to retain a section of surface area where lipstick or cosmetic product is stored then from which is transferred to the surface of the skin such as at the lips of a user upon performing the product’s intended method of use. Additionally, it would have been prima facie obvious to modify Beal’s transfer paper to have a perimeter with no lip stain or equivalent product thereby comprising unstained first and second handling areas within alignment indica as illustrated by Dobler, with a reasonable expectation of success. One would have been motivated to do so based on Dobler’s teaching of a sample having the correct surface area and shape for convenient use of lipstick application. As to the capability of the product providing direct transfer of the lip stain to the moistened lips of the user, since the aforementioned prior art teaches the structure claimed, the structure addressed above is considered capable of performing the intended use or achieving the claimed effect upon use since a product and its properties are inseparable. Further regarding claims 31 and 32, the aforementioned structure is considered to teach an adhesive on the second side whether shaped by folding and/or an adhesive or a combination thereof (see [0070] for instance) and having regions and indicia capable of being used as further claimed, particularly in view of Choi’s teaching of an adhesive may be printed on the protected film around the base (see [0066]) and the sleeve may also have a closure such as folding or adhesive (see [0070]), reasonably suggesting need for adhesive on what is essentially two sides of a substrate..
Dobler teaches acrylates among preferred embodiment base formulation components (see [0043], [0045], [0047], [0048], Table 4, for instance). Dobler neither requires nor excludes alcohol.
Mercado cures this deficiency. Mercado teaches an improved lipstick formulation which includes staining dyes with good laydown properties, color wear, and staining effects (see abstract, in particular; see also, column 2, line 6). Mercado’s formulations contain acrylates copolymers for enhanced formulation properties including stabilization and smaller required concentration of high staining dyes for instance, and long wear properties (see column 2, lines 5-20). Mercado expressly teaches that the formulation is anhydrous which is free of water and also free of alcohol (see column 2, lines 25-34), helping enhance high stain and long wear properties, among other properties (column 2, lines 40-55).
Dobler and Mercado are both directed to lip staining and/or lip coloring products comprising acrylate carrier components for instance. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to use Mercado’s alcohol free formulation in place of Dobler’s lip staining formulation in Beal and Dobler’s lip transfer paper products, with a reasonable expectation of success. One would have been motivated to do so to facilitate high stain dye formulation and long wear properties upon transfer of the final lip stain product to the lips.
As to claim 2, which recites “wherein the lip stain product is produced on a printer using CMYK cartridges filled with ink, is a product-by-process limitation, the examiner directs Applicant’s attention to MPEP 2113: even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production, if the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Moreover, “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).” Thus, it is applicant’s burden to provide evidence demonstrating the unobvious difference. In this particular case with regard to the language of claim 2, it is the examiner’s position that Choi teaches a substrate formulation having dye deposited thereon by a printer device. Accordingly, the product of Beal and Choi as detailed above renders obvious the product as in claim 2.
As to claims 6, 7, and 8, which respectively indicate that the lip stain covers less than 50%, more than 50%, and more than 80% of a surface area of the first side of the substrate, it is the examiner’s position that Beal and Dobler’s illustrations in particular suggest to the ordinary artisan that the percent of surface area on a sheet covered by transfer ink may be varied and adjusted according to the pattern desired to be achieved (i.e., the shape of the lips as in Beal). As such, Beal and Dobler reasonably suggest that one may adjust the size of the total sheet as well as the surface area of pattern where ink for transfer is deposited in order to achieve the desired end result.
Regarding claim 22, its limitations have been addressed above in regard to claim 1. The limitations of claim 23 have been addressed above in regard to claim 2. The limitation of claim 24 has been addressed above in regard to claim 3. The limitation of claim 26 has been addressed above in regard to claim 5. The limitation of claim 27 has been addressed above in regard to similar structural components described in different language in the last paragraph of claim 1. The limitation of claim 28 has been addressed above in regard to claim 12. The limitation of claim 29 has been addressed above in regard to claim 13. The limitation of claim 30 has been addressed above in regard to claim 21.
Claims 4 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over US 4611611 (to Beal, Jr., hereafter “Beal”) in view of US 2020/0146966A1 (“Choi”) and US 2006/0021632A1 (“Dobler”) and US 4996044 (“Mercado”, newly cited) as applied to clams 1-3, 5-8, 12, 13, 22-24, and 26-32 above, and further in view of US 2009/0120565A1 (“Marshall”).
The teachings of Beal and Choi and Dobler and Mercado have been delineated above. While Beal teaches that the applicator sheet substrates include paper and wax paper for example (see column 3, lines 45-50), neither Beal nor Choi specify soft tissue paper in particular as recited in claim 4.
Marshall cures this deficiency. Marshall teaches temporary facial decal products comprising a mask-like substrate having specific shapes and for topical application (see abstract, in particular). Like Beal, Marshal teaches a paper base as a substrate onto which printing inks are deposited as known in the art (see [0011] and [0012] and [0009] for instance).
Beal, Choi, Dobler, and Marshall all pertain to topically applicable colored or printed sheet type products which are used to transfer a material such as a deposited color onto the surface of the skin. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to use a tissue paper base which Marshall establishes as state of the art for transfer paper or sheet materials in place of Beal’s generically disclosed paper substrates, with a reasonable expectation of success. One would have been motivated to do so to facilitate easy application onto a translucent, nonwoven substrate for subsequent maneuvering for application to a topical surface; moreover, to do so would have constituted substituting a species of Marshall for a genus of Beal and Choi, each for color deposition and subsequent transfer to a topical surface. As to the “soft tissue paper” claimed versus the tissue and the paper base taught by Marshall, it remains the examiner’s position that from Marshall’s tissue topically applicable to the face one of ordinary skill in the art reading that disclosure would have at once envisaged a tissue which is a soft tissue paper. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015). Please see MPEP 2131.02.
Conclusion
No claim is allowed.
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 AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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