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 .
Specification
The amendment filed 12/20/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: regarding claim 2, line 3 “matte color” and in claim 3 line 3 “high-gloss color” are not supported by the application as filed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
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 2 and 3 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. The specification as originally filed does not provide support for “matte color” or “high-gloss color”.
Claim Rejections - 35 USC § 112
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 2-3 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. Regarding claim 2, line 3 “matte color” and in claim 3 line 3 “high-gloss color” are not supported by the application as filed.
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 4 and 5 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 4 – it is unclear which previously set forth “indicator”, “the indicator” in lines 1-2 is referring to, the indicator on the inner surface or the indicator on the outer surface, as set forth in claim 1.
Claim 5 – it is unclear which previously set forth “indicator”, “the indicator” in lines 1-2 is referring to, the indicator on the inner surface or the indicator on the outer surface, as set forth in claim 1.
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.
Claim(s) 1 and 4-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mistler(2011/0041856 in view of Glenn(2009/0199859).
Claim 1 – Mistler teaches a condom -10-, comprising: a tubular body -12- having an open end -14- and a closed end -20-, the tubular body comprising an inner surface -26- and an outer surface -22-, and the tubular body -12- provided in a rolled configuration See figure 3; a first texture, bumps -60- set forth in paragraph [0038] provided on the inner surface, the first texture providing a first indication of an orientation of the tubular body paragraph [0038] last 4 lines, the first texture configured to stimulate a male user, the bumps -60- will be next to the penile skin when in the worn position and will inherently stimulate the penis and distinguish the inner surface by tactile sensation (touch by the bumps as shown in figure 13); and one or more indicators, Mistler teaches a indicia -60- may be used on the inner surface and visible on the outer surface at the top end, as shown in figures 1 and 2 and as set forth in paragraphs [0036] through [0039] as an indicator.
However, Mistler does not teach the second texture on the outer surface at the top end of the tubular body, providing an indication of the orientation of the tubular body, wherein the second texture is configured to provide stimulation to a female user and to properly position the condom during use.
Glenn teaches a condom including elements -9- which are used to properly orient the condom in use, see paragraph [0009] and [0020] and are capable of stimulating the female user during use.
It would have been obvious to one of ordinary skill in the medical arts at the time the invention was effectively filed to provide the condom of Mistler with a plurality of dots/bumps -9- as taught by Glenn on the outside surface near the tip as shown in figures 1 and 2 to ensure the condom is worn in the correct orientation as suggested by Glenn and capable of providing tactile stimulation to a female user.
Claim 4 – Mistler teaches a symbol may be used oriented to indicate the closed end of the condom element -108- oriented away from the closed end.
Claim 5 – Mistler teaches the one or more indicators -108- is a symbol oriented to indicate the open end of the condom away from the open end.
Claim 6 – Mistler teaches the color may be seen through the outer surface, see paragraph [0039] and is considered on the outside, ring -130E- figure 16 is considered to be at the bottom end of the condom.
Claim 7 - Mistler teaches a condom -10-, having: a tubular body -12- having an open end -14- and a closed end -20-, the closed end provided on a top end of the condom, see figure 4, the tubular body comprising an inner surface -26- and an outer surface -22-, and the tubular body -12- provided in a rolled configuration, see figure 3; a first texture, bumps -60- as set forth in paragraph [0038] provided on the inner surface, the first texture providing a first indication of the orientation, paragraph [0038] last 4 lines of the tubular body; a second texture, smooth outer surface provided on the outer surface; the second texture providing a second indication of the orientation of the tubular body, directed to the outside as shown in figure 4. Mistler teaches a color may be used on the inner surface as set forth in paragraph [0039] as an indicator or color -60- as shown in figures 1 and 2.
However, Mistler does not teach the second texture provided on the outer surface at the top end of the tubular body, providing an indication of the orientation of the tubular body and to stimulate a female user, wherein the user utilizes the at least one texture to properly position the condom during use.
Glenn teaches a condom including protruding elements -9- which are used to properly orient the condom in use, see paragraph [0009] and [0020].
It would have been obvious to one of ordinary skill in the medical arts at the time the invention was effectively filed to provide the condom of Mistler with a plurality of protruding dots on the outside surface near the tip as shown in figures 1 and 2 of Glenn to ensure the condom is worn in the correct orientation as suggested by Glenn and is inherently capable of stimulation of a female partner by rubbing the protruding dots on/around the female clitoris.
Claim 8 - Mistler teaches a first color provided on the inner surface, color provided on inner side may be fluorescent, see paragraph [0039].
Claim 9 - Mistler teaches a second color provided on the outer surface, when the color of the inside cannot be seen through to the outside the outside will have a different color than the inside see last 5 lines of paragraph [0039].
Claim 10 - the indicator, three dots as taught by Glenn, is a symbol oriented to indicate the closed end of the condom.
Claim 11 - the indicator, three dots as taught by Glenn, is a symbol oriented to indicate the open end of the condom is in a direction away from the dots.
Claim 12 - the color may be seen through the outer surface, see paragraph [0039] and is considered on the outside, ring -130E- figure 16 is considered to be at the bottom end of the condom.
Claim 13 - Mistler teaches a condom, including a tubular body -12- extending between an open end -14- and a closed end -20-, the closed end provided on a top end of the condom, -20- as shown in figure 3, the tubular body -12- comprising an inner surface -26- and an outer surface -22-, and the tubular body -12- provided in a rolled configuration wherein the top end is at least partially unrolled, see figure 3; a first texture bumps -60- provided on the inner surface, the first texture providing a first indication of the orientation of the tubular body, see paragraph [0036], the first texture to stimulate the male user and a first indicator on the inner surface including a color as set forth in paragraphs [0036] through [0039].
However, Mistler does not teach a second texture provided on the outer surface to stimulate a female user and to distinguish the outer surface by tactile sensation.
Glenn teaches a condom including protruding elements -9- which are used to properly orient the condom in use, see paragraph [0009] and [0020].
It would have been obvious to one of ordinary skill in the medical arts at the time the invention was effectively filed to provide the condom of Mistler with a plurality of protruding dots on the outside surface near the tip as shown in figures 1 and 2(of Glenn) to ensure the condom is worn in the correct orientation as suggested by Glenn.
Claims 14 and 15 - at least a portion of the inner and outer surface may be fluorescent, see paragraph [0039].
Claim 16 - Mistler teaches a first color provided on the inner surface, color provided on inner side may be fluorescent, see paragraph [0039].
Claim 17 - Mistler teaches a second color provided on the outer surface, when the color of the inside cannot be seen through to the outside the outside will have a different color than the inside see last 5 lines of paragraph [0039].
Claim 18 - the indicator, dots -9- as taught by Glenn is a symbol and is oriented to indicate the closed end of the condom is on the side of the rolled condom with the dots.
Claim 19 - the indicator, dots -9-, is a symbol oriented to indicate the open end of the condom is on the opposite side of the rolled condom.
Claim 20 - the color may be seen through the outer surface, see paragraph [0039] and is considered on the outside. The ring -130E- is considered to be at the bottom end of the condom.
Response to Arguments
On page 8, Applicant argues Mistler in view of Glenn does not provide a teaching of textures used or user stimulation and distinguishing orientation.
This is not persuasive because elements -60- of Glen is a texture that allows for distinguishing orientation and stimulation of the penis and the raised dots taught by Glenn on the exterior surface of the distal end of the condom and provide tactile means to determine orientation and stimulation of a female user.
In response to applicant's argument that the structure of Mistler as modified by the teaching of Glenn does not teach the recited function, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case there is no structural difference between the claim subject matter and Mistler as modified by Glenn and further Mistler as modified is capable of performing the recited functions as set forth above.
The applicant has provided no convincing arguments that the specification as originally filed provided support for “matte color” or high gloss color. Applicant argues that color inherently includes a matte finish and glossy finish. The office disagrees because color does not inherently include the properties of a specific finish(texture) for example in a molding process, if red dye is added to plastic to be molded in a mold, the resulting molded object will be red but the surface texture will be determined by the surface of the mold. If green dye is added to a plastic to be molded in the same mold, the resulting molded object will be green and have the same surface texture as the resulting red object. Therefore, the applicant’s arguments are not persuasive.
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 SAMUEL G GILBERT whose telephone number is (571)272-4725. The examiner can normally be reached MaxiFlex; M-F 8-5.
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, Charles Marmor can be reached at 571-272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL G GILBERT/ Primary Examiner, Art Unit 3791