DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 November 2025 has been entered. Claims 1-9, 13 and 15-20 are now pending. The Examiner acknowledges the amendments to claims 2, 3 and 17 as well as the cancellation of claim 14.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,266,564. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant invention and the claims of the patent disclose:
a suction-based attachment system, comprising: a suction docking system comprising: a body plate configured to be positioned against a pelvis of a person, the body plate having a concave back surface configured to face the pelvis of the person, the body plate further having a front surface configured to face away from the pelvis of the person; and a suction docking protrusion extending outward from the front surface of the body plate, the suction docking protrusion having a suction docking surface and a rim that surrounds the suction docking surface, the suction docking surface being configured to operate as an attachment area for a suction cup included on a prosthetic phallic device, via an air vacuum formed in-between the suction docking surface and the suction cup included on the prosthetic phallic device, the suction docking surface being a concave surface, the suction docking surface and the rim being angled at an upward tilt with respect to the body plate; a harness configured to be coupled to the body plate, and further configured to couple the suction docking system to the user; and the prosthetic phallic device having a first end and a second end, the first end having the suction cup, wherein the suction cup is configured to removably attach to the suction docking surface of the suction docking protrusion via the air vacuum formed in-between the suction docking surface and the suction cup included on the prosthetic phallic device, the second end extending outward from the first end and being configured for sexual stimulation; and
a suction-based attachment system, comprising: a body plate configured to be positioned against a pelvis of a person, the body plate having a back surface configured to face the pelvis of the person, the body plate further having a front surface configured to face away from the pelvis of the person; and a suction docking protrusion coupled to the body plate, the suction docking protrusion having a suction docking surface, the suction docking surface being configured to operate as an attachment area for a suction cup included on a prosthetic phallic device, via an air vacuum formed in-between the suction docking surface and the suction cup included on the prosthetic phallic device, wherein the suction surface is a flat or concave surface.
Allowable Subject Matter
Claims 3-9, 13 and 15-20 are allowable over the prior art of record. The following is a statement of reasons for the indication of allowable subject matter: regarding claims 3-9, 13, 15 and 16, while the prior art teaches a suction-based attachment system, comprising: a body plate configured to be positioned against a pelvis of a person, the body plate having a back surface configured to face the pelvis of the person, the body plate further having a front surface configured to face away from the pelvis of the person; and a suction docking protrusion coupled to the body plate, the suction docking protrusion having a suction docking surface, the suction docking surface being configured to operate as an attachment area for a suction cup included on a prosthetic phallic device, via an air vacuum formed in-between the suction docking surface and the suction cup included on the prosthetic phallic device, wherein the suction docking surface is a flat or concave surface, the prior art of record does not teach or fairly suggest a suction-based attachment system as claimed by Applicant, wherein the suction docking system further comprises a rim that surrounds all of the suction docking surface, wherein the flat or concave surface extends within and to all portions of an inner perimeter defined by the rim, and wherein the rim is raised with respect to the suction docking surface.
Regarding claims 17-20, while the prior art teaches a method, comprising: coupling a suction docking system to a user so that a body plate of the suction docking system is positioned against a pelvis of the user; and pressing a suction cup of a prosthetic phallic device against a suction docking surface of the suction docking system so as to create an air vacuum in-between the suction cup and the suction docking surface that holds the prosthetic phallic device on the suction docking surface, wherein the suction docking surface is a flat or concave surface, the prior art of record does not teach or fairly suggest a method as claimed by Applicant, wherein the flat or concave surface extends within and to all portions of an inner perimeter defined by a rim that surrounds all of the suction docking surface, and wherein the rim is raised with respect to the suction docking surface.
Response to Arguments
Applicant’s arguments filed 24 November 2025 with respect to the rejection of claim 2 under 35 U.S.C. 112(b) have been fully considered and are persuasive in light of the amendments.
Applicant’s arguments filed 24 November 2025 with respect to the rejection of claims 3-8, 13, 16, 17, 19 and 20 under 35 U.S.C. 102(a)(1) citing McAllister (‘396) have been fully considered and are not persuasive in light of the amendments.
Applicant’s arguments filed 24 November 2025 with respect to the rejection of claims 3, 9 and 18 under 35 U.S.C. 103 citing McAllister (‘396) have been fully considered and are persuasive in light of the amendments.
10. Applicant’s arguments filed 24 November 2025 with respect to the rejection of claim 14 under 35 U.S.C. 103 citing McAllister (‘396) in view of Stevens (‘539) have been fully considered and are persuasive in light of the amendments.
11. Applicant’s arguments filed 24 November 2025 with respect to the rejection of claim 15 under 35 U.S.C. 103 citing McAllister (‘396) in view of Green (‘717) have been fully considered and are persuasive in light of the amendments.
12. Applicant’s arguments filed 24 November 2025 with respect to the Double Patenting rejection have been fully considered and the rejection amended to reflect the presently pending claim amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE HOPKINS MATTHEWS whose telephone number is (571)272-9058. The examiner can normally be reached Monday - Friday, 7:30 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A Marmor, II 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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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
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