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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/25 has been entered.
Status of the Claims
Claims 21-30 have been newly added. Claims 9-11 and 14-20 have been canceled. Accordingly, claims 1-8, 12, 13, and 21-30 are pending and under current examination.
Withdrawn Rejections
The rejection of claims 1-8, 12, and 13 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
Objections
Claims 12 and 28 are objected to because of the following informalities: species of chemical compounds are capitalized but should not be capitalized when written as common chemical names. Appropriate correction is required.
Response to Arguments
Applicant’s arguments filed 12/30/2025 (hereafter, “Remarks’) have been fully considered and are addressed as follows.
Regarding the rejection of claims 1-8, 12, and 13 under 35 U.S.C. 112(b), Applicant’s argument that the claim amendment has resolved the issue is persuasive.
Regarding the rejection of claims 1-3, 5-8, 12, and 13 under 35 U.S.C. 103, Applicant’s traversal and delineation of the claim language of record and cited art of record as outlined on page 6 of 8 of Remarks are noted.
Applicant comments that Choi teaches away from using dyes that stain since they are considered to have poor performance (see Choi [0082]) and argues that lip stick and lip gloss as in Choi are “very different” products than lip stain. In reply this argument is not persuasive since it pertains to an intended use and not the structural components actually claimed and taught by the prior art.
Applicant asserts that lip stick and lip gloss are meant to appear moist and not stain the lips and that lip stain is meant to stain the lips and not appear moist on its own. In reply, this argument is not persuasive since arguments of council cannot take the place of evidence in the record. For instance, this argument is not persuasive because a lip stick could have a matte or glossy finish or effect, and a lip stain has not been shown to distinguish over the structural components addressed below.
Applicant argues that Choi does not include any examples of dyes that are non-alcohol based and that Dobler does not mention “lip stain” or “non-alcohol based ink” as newly recited in claim 1. In reply, the new limitations are addressed as necessitated by amendment in the rejections below. Further, Choi is not limited to a reading of its examples or preferred embodiments. Choi teaches solvents which are not alcohol.
Regarding rejections further relying on the Marshall reference, Applicant asserts that Marshall fails to cure the alleged deficiency of Beal, Choi, and Dobler. Applicant characterizes Marshall’s facial tattoo products as “very different” than the claimed cosmetic products and the products of Beal and Choi; Applicant concludes that Marshall is not analogous art or focused on the same field of endeavor or reasonably pertinent to the claims. 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). Beal, Choi, Dobler, and Marshall are all directed to cosmetic products for decorating or modifying the appearance for instance of the face and/or lips or keratin substrates. As such, Applicant’s assertion that these are “very different” and nonanalogous or not pertinent is not persuasive based on both structural components and functional effects.
Applicant concludes that there is no incentive to combine Marshall with Beal or Choi and that Marshall does not describe “lip stain” or “non-alcohol based ink and argues that none of the cited references, alone or in combination, teach all elements of claim 1 and that claim 4 therefore is also not obvious. In reply, please see the modified and new grounds of rejection necessitated by amendment which address these limitations in detail.
Applicant asserts that Marshall fails to describe “soft tissue paper” by its teaching of “tissue” in the context of “compacted tissue substrate”. This argument is not persuasive in view of what Marshall reasonably suggests, in context, to the ordinary artisan. Marshall’s relevance is maintained as its teaching of tissue applicable to the skin or face provides structure from which one would have immediately envisaged a soft tissue paper as a type of tissue substrate.
New Rejections
Claim Rejections - 35 USC § 112, New Matter
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 1-8, 12, 13, and 21-30 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 claim(s) 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 inventor(s), at the time the application was filed, had possession of the claimed invention.
At least claims 1 and 22 recite that the lip stain component of the claimed lip stain product is comprised of “non-alcohol based ink”, however the specification as filed does not support this feature. While the specification generally teaches away from lip stains with high levels of alcohol (i.e., paragraph [0005]) and teaches that the ink may be “non-alcoholic” (see [0013] and [0025]), the specification does not disclose an ink which is “non-alcohol based” nor does the specification as filed disclose the meaning of this term, specifically “based”. Accordingly, this language and feature constitutes new matter. Claims requiring a limitation of a rejected base claim are also rejected here.
Further the claimed feature of a substrate being “substantially dry” after the lip stain is imprinted or embedded as in claims 21 and 30 also constitutes new matter as there is no description of this feature in the specification as filed.
New Rejections
Claim Rejections - 35 USC § 112(b)
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 1-8, 12, 13, and 21-30 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. What constitutes “non-alcohol based” as newly recited is vague and indefinite. The specification does not define this term or its metes and bounds, and its interpretation is subjective from one artisan to another. Does this term exclude any alcohol or only a “base” such as a solvent or carrier which is alcoholic? Appropriate clarification is required.
Further, the subjective term “substantially” as recited at least in claims 1, 21, 22, and 30 is not defined and has a meaning which may vary from interpretation to interpretation with regard to both what constitutes substantially equal amount as well as what constitutes substantially dry character in a process of making the claimed invention.
Modified Grounds of Rejection as Necessitated by Amendments of 12/30/2025,
No New Reference Cited; New Rejections of New Claims
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, 21-24, and 26-30 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”).
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-alcohol based 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. 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 new claim language limiting the ink to one which is non-alcohol based, 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.
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”) as applied to clams 1-3, 5-8, 12, 13, 21-24, and 26-30 above, and further in view of US 2009/0120565A1 (“Marshall”).
The teachings of Beal and Choi and Dobler 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 s 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.
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