6DETAILED 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 .
Response to Amendment
Applicant’s amendments to claims 12, 15, and 21 and the addition of claims 24-27 filed on 10/03/2025 are acknowledged by the Examiner.
Claims 1-2, 4, 6-11, 13-14, and 16-20 remain cancelled.
Claims 3, 5, 12, 15, and 21-27 are currently pending and are under examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In light of the amendments to the claims, the office action has been updated. Therefore, Magnusson is no longer disclosed in this office action, and all arguments regarding Magnusson are moot. See updated office action below.
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive.
Applicant’s argument regarding MOON and Guirguis: The proposed combination would require fundamentally altering each reference’s core functionality without any identified problem that such alterations would solve. The proposed modification would require one skilled in the art to destroy Moon’s essential rolling capability, Ignore Park’s focus on external features, and eliminate Guirguis’s three-band structure. Further, the proposed combination requires impermissible hindsight.
Examiner’s response: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, in light of the amendments, Marmar is the new primary reference, and MOON, Park, and Guirguis are teaching references, therefore, MOON’s rolling capability is moot as MOON is not the primary reference. MOON is only being disclosed to teach the nubs on an inner surface. Similarlity, Park is not the primary reference and is only disclosed to teach the surface area of the surface portion for scrotal contact being at least 2 cm2, and lastly, Guirguis is only being disclosed to teach the progressive thickness. Further, in response to applicant's argument that the proposed modification would require one skilled in the art to destroy Moon’s essential rolling capability, ignore Park’s focus on external features, and eliminate Guirguis’s three-band structure, 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). Lastly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Objections
Claim 24 is objected to because of the following informalities:
Regarding claim 24, “the longitudinal axis” in lines 5-6 should be recited as “the virtual longitudinal axis”.
Appropriate correction is required.
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) 21, 3, 5, 12, and 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marmar et al. (referred to as “Marmar”) (US 4,995,381) in view of MOON (US 2019/0076289 A1) in view of Park (US 2010/0179379 A1) further in view of Guirguis (US 2018/0289117 A1).
Regarding claim 21, Marmar discloses a device (10) adapted to encircle a shaft for male contraception (see Figs. 1-2 and Col. 3 lines 42-49 and Col. 4 lines 9-16; when reading the preamble in the context of the entire claim, the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of the claimed invention’s limitations, and thus ring 10 is capable of being a male contraceptive device as ring 10 is adapted to encircle a shaft for an extended period of time) the device (10) having an annular shape around a virtual longitudinal axis that defines a longitudinal direction (see Figs. 1-2; ring 10 without element 16 as element 16 may be eliminated, see Col. 3 lines 49-53, is an annular shape, and is shaped around a virtual longitudinal axis which is the axis that goes through opening 12 in which a penis is received through and is a longitudinal direction) and comprising:
two annular edges forming two opposite axial ends of the device (10) (see Annotated Fig. 2 of Marmar and Figs. 1-2; ring 10 has two annular edges which are labeled in Annotated Fig. 2, and these two annular edges are opposite axial ends of the ring 10), a first edge of the two edges being a rear abutment edge configured to be on a side of a shaft root when encircling the shaft in a mounted state of the device (10) (see Figs. 1-2 and Annotated Fig. 2 of Marmar, and Col. 4 lines 41-45 which discusses how the ring 10 is placed at the base of a penis, and thus the first annular edge labeled in Annotated Fig. 2 is a rear abutment edge configured to be on a side of a shaft root when encircling the shaft in a mounted state of the ring 10 when the ring 10 is at the base of the penis);
an outer face (see Annotated Figs. 1-2 of Marmar; the outer face is labeled in Annotated Figs. 1-2 which is the outer perimeter surface as this outer surface is not in direct contact when ring 10 is worn on a penis);
an inner face delimiting an inner volume (see Annotated Figs. 1-2 of Marmar; the inner face is labeled in Annotated Fig. 1 of Marmar and is opposite the outer face and is the entire surface that comes into direct contact with a penis when the penis is pushed through opening 12, and this inner face delimits an inner volume of the opening 12), the inner face comprising an upper surface portion, concave, configured to be in contact with the shaft on a side of a superficial dorsal vein thereof (see Annotated Figs. 1-2 of Marmar; the inner face, which is the entire surface that comes into direct contact with the penis, comprises an upper surface portion, which is the entire upper half of the inner face, which is concave as this portion curves inward, and this upper surface portion is configured to be in contact with the shaft on a side of a superficial dorsal vein thereof when the ring 10 is worn on the penis),
wherein the male contraceptive device (10) is a single piece ring (see Figs. 1-2; ring 10, without element 16, see Col. 3 lines 49-53, is a single piece ring and is injection molded, see Col. 4 lines 5-8), which further comprises a surface portion for scrotal contact, adapted to be spaced from the shaft and located opposite the upper surface portion, such that it enables to keep a scrotal skin portion between the shaft placed in the inner volume and the surface portion for scrotal contact, whereas said rear abutment edge is configured to push back testicles behind the inner volume (see Annotated Figs. 1-2 of Marmar; the ring 10 further comprises a surface portion for scrotal contact, which is interpreted to be the entire lower half of ring 10, as this portion of the device is adapted to be spaced from the shaft and is located opposite the upper surface portion, such that it is capable of and thus enables to keep a scrotal skin portion between the shaft placed in the inner volume and the surface portion for scrotal contact, as the size of user’s penises varies, and the rear abutment edge, which is the first annular edge labeled in Annotated Fig. 2, is capable of pushing back the testicles behind the inner volume), said device (10) being a male thermal contraceptive device (see Figs. 1-2; the ring 10 is capable of being a male thermal contraceptive device as ring 10 may be worn for an extended period of time on the penis and thus can increase the temperature thus being a thermal contraceptive device),
wherein the single piece ring (10) has front and rear surfaces that are identical with an annular shape around the longitudinal axis, with a same opening size for the front and rear surfaces (see Annotated Figs. 1-2 of Marmar in which the front and rear surfaces of ring 10 are labeled, in Annotated Fig. 1 only the front surface is labeled, and the rear surface would be the surface opposite the front surface that is not shown in Fig. 1, and thus are identical with an annular shape around the longitudinal axis, and with a same opening size for the front and rear surfaces), the male contraceptive device (10) being incompressible along the longitudinal direction (see Figs. 1-2 and Col. 3 lines 57-60 and Col. 4 lines 1-5 which discusses how the ring 10 may be formed from polysiloxane or silicone elastomers, and thus is formed of a same material as applicant, see Pg. 4 line 1, and has a Shore A Hardness same as applicant, see Pg. 4 lines 35-36, and thus is incompressible along the longitudinal direction).
Marmar is silent on a distance between the two annular edges being over 15 mm; the inner face having nubs to form an inner grip surface of the device, wherein interstitial zones are distributed on the inner face, between the nubs to facilitate perspiration, wherein at least five nubs are provided per square centimeter of the inner grip surface, wherein the surface portion for scrotal contact, which is formed by said inner grip surface, corresponds to a surface area of at least 2 cm2 and has first nubs which project radially inward, wherein the nubs are forming the inner grip surface and comprise several tens of nubs, and wherein the single piece ring extends between the two opposite axial ends with a thickness of the single piece ring that increases progressively away from each of the two opposite axial ends so that a maximum thickness of the single piece ring is obtained midway between the two opposite axial ends.
However, MOON teaches an analogous device (10) adapted to encircle a shaft (see Fig. 8; device 10 shown in Fig. 8 is adapted to encircle a shaft like in Fig. 9), and analogous two annular edges, a distance between the two annular edges being over 15 mm (see Fig. 1, which the two annular edges are where elements 13 and 14 are located, and see [0063] which discusses how the length of the device 10 is 2 to 10 cm or 20 to 100 mm, and thus the distance between the two annular edges would be over 15 mm, as it can be 20 mm), and an analogous inner face having nubs (30) to form an inner grip surface of the device (10) (see Fig. 8 and [0056],[0069]; the device 10 has anti-slippage projections 30, which are nubs as they are small lumps or protuberances, on an inner surface/face, and thus forms an inner grip surface), wherein interstitial zones are distributed on the inner face, between the nubs (30), to facilitate perspiration (see Fig. 8 and [0056], [0069]; the inner face of device 10 has anti-slippage projections 30 and in between each of the anti-slippage projections, are spaces or interstitial zones best seen in the close up view of the anti-slippage projections 30 shown in Fig. 8, which are capable of facilitating perspiration), wherein at least five nubs are provided per square centimeter of the inner grip surface (see Fig. 8 and [0063], and [0069]; the device has anti-slippage projections 30 on an inner surface which are bulges or nubs, as they are small lumps, as seen in Fig. 8, and the present invention has a minimum length of 2 cm and has a minimum radius of 1 cm, as the minimum diameter is 2 cm, and thus the surface area (SA) would be SA = 2*pi*r*h = 2*pi*1*2 = 12.56 cm2, and Fig. 8 shows one half of the inner face, and thus is about 12.56/2 = 6.28 cm2 in surface area, and if the inner face is further divided into about 6 sections, there are at least five anti-slippage projections 30 per square centimeter of the inner grip surface), and wherein the nubs (30) are forming the inner grip surface and comprise several tens of nubs (see Fig. 8 and [0056], [0069]; the anti-slippage projections 30 which form the inner grip surface comprises several tens of nubs, as seen in Fig. 8), providing a sufficient length to cover a penis, and providing the device fitted over the penis from easily slipping off a shaft (see [0069]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the distance between the two annular edges of Marmar to be over 15 mm as taught by MOON and to have provided the inner face of Marmar with nubs (30) to form an inner grip surface with at least five nubs provided per square centimeter of the inner grip surface, and wherein interstitial zones are distributed on the inner face, between the protrusions, to facilitate perspiration as taught by MOON to have provided an improved device that is a sufficient length to cover a penis and provides the device fitted over the penis from easily slipping off a shaft (see [0069]). Therefore, the combination of Marmar in view of MOON results in wherein the surface portion for scrotal contact, which is formed at least in part by said inner grip surface, has first nubs (30 of MOON) which project radially inward (as previously modified above, the surface portion for scrotal contact, which is the lower half of the inner grip surface, is formed at least in part by the inner grip surface, and has anti-slippage projections 30 of MOON which project radially inward).
Marmar in view of MOON discloses the invention as discussed above.
Marmar in view of MOON is silent on wherein the surface portion for scrotal contact corresponds to a surface area of at least 2 cm2, and wherein the single piece ring extends between the two opposite axial ends with a thickness of the single piece ring that increases progressively away from each of the two opposite axial ends so that a maximum thickness of the single piece ring is obtained midway between the two opposite axial ends.
However, Park teaches an analogous device (100) adapted to encircle a shaft (see Fig. 1 and [0039]), wherein the surface portion for scrotal contact corresponds to a surface area of at least 2 cm2 (see Figs. 1-2 and [0040]; the surface portion for scrotal contact is interpreted to be the entire lower half of device 100, as this portion of the surface is capable of scrotal contact depending on a user’s anatomy, and the surface area of the entire lower half of device 100 is 11.30 cm2 as the surface area (SA) of just the outer cylinder portion of device 100 is SA = 2*pi*r*h and the radius is 15 mm as the diameter of device 100 can be 30 mm, and the length or height of device 100 can be 24 mm, and thus SA = 2*pi*15mm*24mm = 2260.8 mm2, but since the surface portion for scrotal contact is the entire lower half of the device, the SA of the surface portion is 2260.8/2 = 1130.4 mm2 which is 11.30 cm2, which reads on the claimed surface area as the surface area is at least 2 cm2), providing a properly sized device to fit a majority of users, while still being functional.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the dimensions of the device (10 of Marmar) of Marmar in view of MOON such that the surface portion for scrotal contact corresponds to a surface area of at least 2 cm2 as taught by Park to have provided an improved device that is properly sized to fit a majority of users, while still being functional.
Marmar in view of MOON further in view of Park discloses the invention as discussed above.
Marmar in view of MOON further in view of Park is silent on wherein the single piece ring extends between the two opposite axial ends with a thickness of the single piece ring that increases progressively away from each of the two opposite axial ends so that a maximum thickness of the single piece ring is obtained midway between the two opposite axial ends.
However, Guirguis teaches an analogous single piece ring (1) with two opposite axial ends (5, 5), and wherein the single piece ring (1) extends between the two opposite axial ends (5, 5) with a thickness of the single piece ring (1) that increases progressively away from each of the two opposite axial ends (5, 5) so that a maximum thickness of the single piece ring (1) is obtained midway between the two opposite axial ends (5, 5) (see Figs. 1-2; [0031] discusses how the middle of the bands is thickest, and Fig. 2 is a cross section of ring 1 which shows the width 8 or thickness increasing progressively away from the edges 5, 5 so that a maximum thickness of the ring1 is obtained midway as band 7 has the greatest thickness in between bands 2, 3), providing a ring that is easier to grasp.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the thickness of the single piece ring (10 of Marmar) between the two opposite axial ends in the device of Marmar in view of MOON further in view of Park to increase progressively away from each of the two opposite axial ends so that a maximum thickness of the single piece ring is obtained midway between the two opposite axial ends as taught by Guirguis to have provided an improved device that is easier to grasp.
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Annotated Fig. 2 of Marmar.
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Annotated Fig. 1 of Marmar.
Regarding claim 3, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein the nubs (30 of MOON) are distributed over a full circumference of the single piece ring (10 of Marmar) (see Fig. 8 of MOON and [0069] of MOON; as previously modified above, see claim 21, the anti-slippage projections 30 of MOON, which are nubs, are distributed over a full circumference of ring 10 of Marmar), the single piece ring (10 of Marmar) having a symmetry of revolution around the longitudinal axis (see Figs. 1-2 of Marmar; the ring 10 of Marmar has a symmetry of revolution around the longitudinal axis).
Regarding claim 5, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein some of the nubs (30 of MOON), which are arranged on the surface portion for scrotal contact, provide an anti-slip effect to retain the scrotal skin portion in the inner volume (as previously modified above, see claim 21, some of the anti-slippage projections 30 of MOON are provided/arranged on the surface portion for scrotal contact, which is the entire lower half of the inner face, and provides an anti-slip effect, and thus are capable of retaining the scrotal skin portion in the inner volume).
Regarding claim 12, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein the device (10 of Marmar) serves to encircle the shaft and a scrotal skin of an empty scrotum to provide a male contraception during a daily time greater than or equal to 14 hours (see Figs. 1-2 of Marmar; the ring 10 of Marmar serves to encircle the shaft as the ring 10 of Marmar is placed at the base of the penis, see Col. 4 lines 41-45 of Marmar, and is capable of encircling scrotal skin of an empty scrotum depending on the user’s anatomy to provide male contraception, and is capable of being worn during a daily time greater than or equal to 14 hours), whereas the nubs (30 of MOON) of the inner face are configured to be in contact with the scrotal skin so as to keep the testicles in a proximal position near the inguinal canal (as previously modified above, see claim 1, the anti-slippage protrusions 30 of MOON of the inner face are capable of being in contact with the scrotal skin so as to keep the testicles in a proximal position near the inguinal canal).
Regarding claim 24, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein due to the maximum thickness of the single piece ring (10 of Marmar) midway between the two opposite axial ends, a lowermost diameter of the inner face, measured perpendicularly to the longitudinal axis, is defined midway between the two opposite axial ends, in a middle annular area provided with some of the nubs, which are closer to the longitudinal axis as compared to any other of the nubs (as previously modified above, see claim 21, a lowermost diameter of the inner face of Marmar, measured perpendicularly to the longitudinal axis, is defined midway between the two opposite axial ends, in a middle annular area provided with some of the nubs 30 of MOON as modified above, which are closer to the longitudinal axis as compared to any other of the nubs as due to the progressive thickness of the ring 10 of Marmar).
Regarding claim 25, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein the distance between the two annular edges is between 15 and 24 mm (as previously modified above, see claim 21, the distance between the two annular edges may be 20 mm, as taught by MOON, see [0063] of MOON, and thus is within the claimed range).
Regarding claim 26, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein Shore A hardness of material making up the inner grip surface is included between 10 and 20 (see Col. 3 lines 54-60 of Marmar which discusses how the Shore A hardness of ring 10 of Marmar and thus including the material making up the inner grip surface may be 7 to 28, and thus may be between 10 and 20).
Regarding claim 27, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein Shore A hardness of material making up the inner grip surface is included between 10 and 20 (see Col. 3 lines 54-60 of Marmar which discusses how the Shore A hardness of ring 10 of Marmar thus including the material making up the inner grip surface may be 7 to 28, and thus is between 8 and 30).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marmar in view of MOON in view of Park in view of Guirguis further in view of Grossman (US 4,881,553).
Regarding claim 15, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein at least eight of the nubs (30 of MOON) are distributed along a single circular trajectory in a transverse section of the device, over a half for contact with a scrotal skin (see Fig. 8 of MOON and [0056], and [0069] of MOON; there are at least eight anti-slippage projections 30 of MOON distributed along a single circular trajectory in a transverse section of the ring 10 of Marmar, as previously modified above, see claim 21, as the anti-slippage projections 30 of MOON are provided on the inner face of collar 2 of Marmar, and over half of the anti-slippage projections 30 of MOON are capable of coming into contact with the scrotal skin depending on the anatomy of a user).
MOON further teaches the inner face being provided with at least eight nubs per square centimeter (see [0063] of MOON and Fig. 8 of MOON; the present invention has a minimum length of 2 cm and has a minimum radius of 1 cm, as the minimum diameter is 2 cm, and thus the surface area (SA) would be SA = 3*pi*r*h = 2*pi*1*2 = 12.56 cm2, and Fig. 8 shows one half of the inner face, and thus is about 12.56/2 – 6.28 cm2 in surface area, and if the inner face is further divided into about 6 sections, there are at least eight anti-slippage projections 30 per square centimeter), providing a sufficient number of nubs arranged along the inner face such that the device does not easily slip off of the shaft.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the inner face of the device (ring 10 of Marmar) in the device of Marmar in view of MOON in view of Park further in view of Guirguis to be provided with at least eight nubs per square centimeter as taught by MOON to have provided an improved male contraceptive device that has a sufficient number of nubs arranged along the inner face such that the device does not easily slip off of the shaft.
Marmar in view of MOON in view of Park further in view of Guirguis is silent on wherein the nubs have a height greater than or equal to 0.9 or 2 mm, and wherein on the surface portion of the inner face for the scrotal contact, maximum inter-nub distance is less than 7mm.
However, Grossman teaches analogous nubs (16), wherein the nubs (16) having a height greater than or equal to 0.9 mm or 1 mm (see Fig. 4 and Col. 3 lines 17-19; the protrusions 16 have a height from 2 mm to 8 mm, which is greater than 0.9 mm or 1 mm) and wherein maximum inter-nub distance is less than 7mm (see Col. 3 lines 16-17; the spacing of the projections 16 or the inter-nub distance can be 2 mm, and thus is less than 7 mm as claimed), providing protrusions that are sufficient in height such that the device is still comfortable for a user to wear, and providing a sufficient amount of space between each of the protrusions such that the protrusions are not too crowded but also provide a good amount of protrusions so that the device still has the anti-slipping benefits.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the height of the nubs (30 of MOON) in the device of Marmar in view of MOON in view of Park further in view of Guirguis to be greater than or equal to 0.9 or 1 mm as taught by Grossman and to have modified the maximum inter-nub distance between the nubs (30 of MOON) in the device of Marmar in view of MOON in view of Park further in view of Guirguis to be less than 7 mm as taught by Grossman to have provided an improved male contraceptive device that provides protrusions that are sufficient in height such that the device is still comfortable for a user to wear, and provides a sufficient amount of space between each of the protrusions such that the protrusions are not too crowded but also provide a good amount of protrusions so that the device still has the anti-slipping benefits.
Claim(s) 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marmar in view of MOON in view of Park in view of Guirguis further in view of NGUYEN et al. (referred to as “NGUYEN”) (US 2013/0152943 A1).
Regarding claim 22, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein the nubs (30 of MOON) in the inner grip surface are distributed in parallel rows (see Fig. 8 of MOON; as previously modified above, the anti-slippage projections 30 of MOON are distributed in parallel rows).
Marmar in view of MOON in view of Park further in view of Guirguis is silent on wherein the nubs in the inner grip surface have different sections, with a comparatively larger section of nubs provided away from the two opposite axial ends.
However, NGUYEN teaches analogous nubs (130, 140, 150), wherein the nubs (130, 140, 150) in the grip surface have different sections, with a comparatively larger section of nubs (130, 140, 150) provided away from the two opposite axial ends (see Fig. 1 and [0024]; raised features 130, 140, 150 are nubs as they may be a circular shape, and have different sections, with a comparatively larger section, which is raised feature 150, which are provided away from the two opposite axial ends, which are the left and right ends of device 100), providing different sizes of protrusions for better retainment of the device.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nubs (30 of MOON) in the device of Marmar in view of MOON in view of Park further in view of Guirguis to have different sections, with a comparatively larger section of the nubs provided away from the two opposite axial ends as taught by NGUYEN to have provided an improved male contraceptive device that provides different sizes of protrusions for better retainment of the device.
Regarding claim 23, Marmar in view of MOON in view of Park further in view of Guirguis discloses the invention as discussed in claim 21. Marmar in view of MOON in view of Park further in view of Guirguis further discloses wherein the nubs (30 of MOON) form half-beads (see Fig. 8 of MOON; the anti-slippage projections 30 of MOON form half-beads as best seen in the close-up view in Fig. 8 of MOON, as they are rounded like a bead shape, but are not a complete sphere/circle).
Marmar in view of MOON in view of Park further in view of Guirguis is silent on the nubs being distributed in at least two groups of different size.
However, NGUYEN teaches analogous nubs (130, 140, 150) being distributed in at least two groups of different size (see Fig. 1 and [0024]; raised features 130, 140, 150 are nubs as they may be any shape such as circular, and the raised features 130, 140, 150 are different sizes and thus are distributed in at least two groups of different size), providing different sizes of protrusions for better retainment of the male contraceptive device.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the nubs (30 of MOON) in the device of Marmar in view of MOON in view of Park further in view of Guirguis to be distributed in at least two groups of different size as taught by NGUYEN to have provided an improved male contraceptive device that provides different sizes of protrusions for better retainment of the device.
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 ROBIN HAN whose telephone number is (408)918-7579. The examiner can normally be reached Monday - Thursday, 9-5 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at (571)270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBIN HAN/Examiner, Art Unit 3786
/ALIREZA NIA/Supervisory Patent Examiner, Art Unit 3786