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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 22 is 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 22 is rejected because it recites limitations “the intimate device is coated or infused with at a mattifying agent”. After reviewing para 0029, there is not any explaining to one of ordinary skill in the art to understand what material the mattifying agent is.
For the express purpose of an examination on the merits, this limitation is interpreted as any coating material such as waxes.
In the art rejections below the claims have been treated as best understood by the examiner.
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) 1-3, 5, 11-12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563).
Regarding claim 1, Tippman teaches an intimate device (figs 1-11) comprising: an intimate device body (member 11) having:
a first end (fig 11, top portion of member 61);
a tapered end (fig 11, bottom portion of member 61) opposite the first end;
a skin-facing surface (fig 8, right side of member 11); and
a garment-facing surface (fig 8, left side of member 11) opposite the skin-facing surface, wherein the skin-facing surface and the garment-facing surface meet to form an edge around a circumference of the intimate device body (fig 8, member 11), and
wherein the intimate device body consists essentially of a single continuous silicone rubber (para 0051 and 0055), wherein non-moisture wicking (the silicone rubber obviously has the properties as claimed); and
an adhesive layer disposed on the garment-facing surface of the intimate device body (para 0051).
Tippman does not explicitly teach an intimate device configured to conceal genitalia.
However, Tippman suggested that the device can be used on any part of the body including an undergarment (para 0013). Therefore, it would have been obvious to one of ordinary skill in the art to understand that the device can be used to conceal genitalia part of a user in order to allow the person wearing the garment are huggable, grabbable and touchable without the person doing the hugging, grabbing, touching realizing that the person being touched is not naturally the way they appear (para 0013).
PNG
media_image1.png
399
294
media_image1.png
Greyscale
Regarding claim 2, Tippman teaches the first end is a rounded end (fig 11 annotated above), the intimate device is configured to adhere to an undergarment (para 0013).
Regarding claim 3, Tippman teaches the intimate device is configured to adhere to athletic attire (abstract).
It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed (i.e. athletic attire) does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Tippman teaches a device, as presently claimed, that is obviously capable of being adhered to athletic attire.
Regarding claim 5, Tippman teaches the polymeric material silicone rubber is liquid resistant and non-absorbent (the silicone rubber obviously has the properties as claimed).
Regarding claim 11, Tippman teaches the garment-facing surface is convex (fig 8, right side of member 11).
Regarding claim 12, Tippman teaches the skin-facing surface is concave (fig 8, left side of member 11).
Regarding claim 14, Tippman teaches the edge is beveled (fig 8, the perimeter of member 11).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563) as applied to claim 1 above, and further in view of Dowdle (2020/0229513).
Regarding claim 7, Tippman teaches all claim limitations except that the silicone rubber is medical grade silicone rubber.
Dowdle teaches an undergarment (fig 1A) comprising medical grade silicone rubber (para 0045).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Tippman medical grade silicone rubber in view of Dowdle in order to reduce direct skin exposure to toxins that produce undesired affect such as irritation or greater hazards (paras. 4-6 of Dowdle). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Tippman medical grade silicone rubber since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (MPEP 2144.07).
Regarding claim 8, Tippman teaches all claim limitations except the silicone rubber is food grade silicone rubber.
Dowdle teaches an undergarment (fig 1A) comprising food grade silicone rubber (para 0045).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Tippman food grade silicone rubber in view of Dowdle in order to reduce direct skin exposure to toxins that produce undesired affects such as irritation or greater hazards (paras. 4-6 of Dowdle). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Tippman food grade silicone rubber since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (MPEP 2144.07).
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563) as applied to claim 1 above, and further in view of Bilbech (U.S. 20160286867).
Regarding claim 9, Tippman teaches all claim limitations except the silicone rubber has a Shore A hardness of about 10 to 40.
Bilbech teaches an undergarment (abstract, fig 1) including silicone having a Shore A hardness of about 10 to 40 or more specifically 30 (para 0021).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone of Tippman so as to a have a Shore A hardness of about 10 to 40 or more specifically 30 in view of Bilbech in order to provide a desired level of flexibility and support.
Regarding claim 10, the modified device Tippman-Bilbech further teaches the silicone rubber has a Shore A hardness of about 30 (Bilbech, claim 9, para 0021). 11.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563) as applied to claim 1 above, and further in view of St. Anne et al. (2016/0022399).
Regarding claim 13, Tippman teaches all claim limitations except the adhesive is liquid resistant.
St. Anne et al. teaches an adhesive patch for use in a female genital region wherein the adhesive is liquid resistant (para. 78).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the adhesive of Tippman liquid resistant in view of St. Anne et al. to prevent the likelihood of premature detachment during water sports such as swimming (para 0078).
Claim(s) 1-3, 5, and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) in view of Tippman (2014/0250563).
Regarding claim 1, Laurie teaches an intimate device configured to conceal genitalia (figs 1-6B), the intimate device comprising: an intimate device body (fig 6B) having:
a first end (top portion of fig 5);
a tapered end (bottom portion of member 5) opposite the first end;
a skin-facing surface (top surface of fig 6B); and a garment-facing surface opposite the skin-facing surface (bottom portion of fig 6B),
wherein the garment facing surface comprises an adhesive (member 6);
wherein the skin-facing surface and the garment-facing surface meet to form an edge around a circumference of the intimate device body (figs 5-6B), and wherein the intimate device body is made of silicone (the inner core and surrounded coat are both made of silicone, para 0045); and
an adhesive layer disposed on the garment-facing surface of the intimate device body (para 0026 and 0044).
Laurie does not teach the intimate device body consists essentially of a single continuous silicone rubber, wherein the silicone rubber is non-moisture wicking.
Tippman teaches a device body consists essentially of a single continuous silicone rubber (fig 8, member 11, para 0051 and 0055); wherein non-moisture wicking (the silicone rubber obviously has the properties as claimed).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the structure of Laurie by using a body consists essentially of a single continuous silicone rubber, as taught by Tippman, in order to improve properties and reduce cost. The silicone rubber is generally non-reactive, stable, and resistant to extreme environments (para 0058).
Regarding claim 2, the modified device Laurie-Tippman discloses the first end is a rounded end (top portion of fig 5), wherein the intimate device is configured to adhere to an undergarment (Laurie, para 0044).
Regarding claim 3, the modified device Laurie-Tippman discloses the intimate device is configured to adhere to athletic attire (Laurie, para 0044).
Regarding claim 5, the modified device Laurie-Tippman discloses the polymeric material silicone rubber is liquid resistant and non-absorbent (Laurie, para 0041 to 0042 and Tippman, para 0051 and 0055, the silicone rubber inherently has all the properties as claimed).
Regarding claim 11, the modified device Laurie-Tippman discloses the garment-facing surface is convex (Laurie, figs 2 and 6B).
Regarding claim 12, the modified device Laurie-Tippman discloses the skin-facing surface is concave (Laurie, figs 2 and 6B).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further in view of Dowdle (20200229513).
Regarding claim 7, the modified device Laurie-Tippman teaches all claim limitations except the silicone rubber is medical grade silicone rubber.
Dowdle teaches an undergarment (100) comprising medical grade silicone rubber (para. 45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Laurie medical grade silicone rubber in view of Dowdle in order to reduce direct skin exposure to toxins that produce undesired affects such as irritation or greater hazards (paras. 4-6 of Dowdle). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Laurie medical grade silicone rubber since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (MPEP 2144.07).
Regarding claim 8, the modified device Laurie-Tippman teaches all claim limitations except the silicone rubber is food grade silicone rubber.
Dowdle teaches an undergarment (100) comprising food grade silicone rubber (para. 45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Laurie food grade silicone rubber in view of Dowdle in order to reduce direct skin exposure to toxins that produce undesired affects such as irritation or greater hazards (paras. 4-6 of Dowdle). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone rubber of Laurie food grade silicone rubber since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (MPEP 2144.07).
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further in view of Bilbech (U.S. 20160286867).
Regarding claim 9, the modified device Laurie-Tippman teaches all claim limitations except the silicone rubber has a Shore A hardness of about 10 to 40.
Bilbech teaches an undergarment (abstract, fig. 1) including silicone having a Shore A hardness of about 10 to 40 or more specifically 30 (para. 21).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the silicone of Laurie-Tippman so as to a have a Shore A hardness of about 10 to 40 or more specifically 30 in view of Bilbech in order to provide a desired level of flexibility and support.
Regarding claim 10, the modified device Laurie-Tippman-Bilbech further teaches the silicone rubber has a Shore A hardness of about 30 (per claim 9, para. 21 of Bilbech).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further St. Anne et al. (U.S. 20160022399).
Regarding claim 13, the modified device Laurie-Tippman teaches all claim limitations except the adhesive is liquid resistant.
St. Anne et al. teaches an adhesive patch for use in a female genital region wherein the adhesive is liquid resistant (para. 78).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the adhesive of Laurie-Tippman liquid resistant in view of St. Anne et al. to prevent the likelihood of premature detachment during water sports such as swimming (para. 78 of St. Anne).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further Larsen et al. (U.S. Patent No. 7182085).
Regarding claim 14, the modified device Laurie-Tippman teaches all claim limitations except the edge is beveled.
Larsen et al. teaches a dressing (Figs. 1-3) for covering a portion of a user's body (col. 3, lines 63-67, col. 4, lines 1-4, 57-67) wherein the edges of the dressing are beveled to enhance user comfort (col. 7, lines 57-63).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the edge of Laurie-Tippman so as to be beveled in view of Larsen et al. in order to enhance user comfort (col. 7, lines 57-63 of Larsen).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563) as applied to claim 1 above, and further in view of Levy et el. (2019/0254365).
Regarding claim 21, Tippman teaches all claim limitations except the intimate device is coated or infused with at least one of an antimicrobial agent, a deodorizing agent, or an antiperspirant.
Levy et al. teaches an undergarment which is coated with an antimicrobial (para 0044).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the device of Tippman by coating it with antimicrobial agent of Levy et al. in order to reduce possible skin irritation.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further in view of Levy et al. (2019/0254365).
Regarding claim 21, the modified device Laurie-Tippman teaches all claim limitations except the intimate device is coated or infused with at least one of an antimicrobial agent, a deodorizing agent, or an antiperspirant.
Levy et al. teaches an undergarment which is coated with an antimicrobial (para 0044).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the device of Laurie-Tippman by coating it with antimicrobial agent of Levy et al. in order to reduce possible skin irritation.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tippman (2014/0250563) as applied to claim 1 above, and further in view of Jeon et al. (2023/0157909).
Regarding claim 22, Tippman teaches all claim limitations except the intimate device is coated or infused with at a mattifying agent.
Jeon et al. teaches undergarment having mattifying agent coating.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the device of Tippman by coating it with mattifying agent of Jeon et al. in order to reduce possible skin irritation.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laurie (2012/0210496) and Tippman (2014/0250563) as applied to claim 1 above, and further Jeon et al. (2023/0157909).
Regarding claim 22, the modified device Laurie-Tippman teaches all claim limitations except the intimate device is coated or infused with at a mattifying agent.
Jeon et al. teaches undergarment having mattifying agent coating.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the device of Laurie-Tippman by coating it with mattifying agent of Jeon et al. in order to reduce possible skin irritation.
Response to Arguments
Applicant’s arguments, filed 02-16-2026, have been fully considered, but they are not persuasive.
Argument 1: applicant argues that Tippman does not teach “the intimate device body consists essentially of a single continuous silicone rubber” because Tippmann device is a multi-layer garment. However, the examiner respectfully agrees that Tippmann device is a multi-layer garment, but Tippmann’s device body (i.e. member 11) is a single continuous silicone rubber. The other layers belonged to the device itself and not the device body.
Argument 2: applicant argues that Tippman does not teach an adhesive layer disposed on a garment facing surface. However, the examiner respectfully disagrees since “a garment facing surface” is an intended used of the device base which is based on the choice of a user.
Argument 3: applicant argues that Laurie does not teach “the intimate device body consists essentially of a single continuous silicone rubber” and even in view of Tippmann because Tippmann device is a multi-layer garment. However, the examiner respectfully agrees that Tippmann device is a multi-layer garment, but Tippmann’s device body (i.e. member 11) is a single continuous silicone rubber. The other layers belonged to the device itself and not the device body.
Conclusion
Applicant's amendment necessitated the new/revised 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.
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, KHOA D. HUYNH can be reached at (571)272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
