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 .
This Office Action is responsive to the Amendment filed 21 January 2026. Claims 1 and 5-29 are currently under consideration. The Office acknowledges the amendments to claims 1, 6, 7, 10, 15-18, 22, 23, 25, and 26, as well as the cancellation of claims 2-4, and the addition of new claims 27-29.
Election/Restrictions
Newly submitted claims 28 and 29 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The newly submitted invention and the originally claimed invention are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect. The originally claimed invention is for massaging two persons and includes a U-shaped body, a reversibly plastically deformable thermoplastic polymer clip, and an end face proximal to the transition segment that is convex and disposed opposite the second convex curve segment. None of these features are recited by the newly submitted invention. Additionally, the newly submitted invention includes a continuously convexly curved back side, a notch with a concave curvature, a common continuous curvature among the back side and the transition segment, and the first and second convex curve segments both having a larger diameter than the transition segment. None of these features are recited by the originally claimed invention. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28 and 29 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 19 is objected to because of the following informalities: in the last line, “the body” should apparently read --the U-shaped body-- for consistency throughout the claims. Appropriate correction is required.
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.
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 16-18 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 16 recites that it is dependent upon claim 2. However, claim 2 has been canceled, so the scope of claim 16 is not clear. For sake of compact prosecution, claim 16 will be taken herein to depend upon claim 1.
Claims 17 and 18 are rejected by virtue of their dependence upon claim 16.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 25 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by De Alva (U.S. Pub. No. 2014/0228628 A1). De Alva discloses a method (Abstract), comprising: aligning a first leg 14 and a second leg 24/42 of a curved U-shaped body 12 relative to each other with a transition segment between the first leg and the second leg, including manipulating an internal clip 18 in the curved U-shaped body, wherein the first leg includes a back side and a ventral side, the back side being continuously curved in design, and the ventral side including a first convex curve segment distal to the transition segment and a second convex curve segment proximal to the transition segment, wherein the first convex curve segment and the second convex curve segment are separated from each other by a notch 20, and wherein the second leg includes an end face proximal to the transition segment, the end face being convex and disposed opposite the second convex curve segment of the first leg in an initial shape of the U-shaped body; introducing the first leg into a bodily orifice of a first person; and introducing the second leg into a bodily orifice of a second person (Figs. 1-5, 9-11; [0024]; [0068]; [0070]-[0071]; [0074]; [0076]; [0084]; back side is continuously curved; the convex curve segments can be on either side of the notch defined by one of the malleable/adjustable points).
Claim Rejections - 35 USC § 103
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.
Claims 1, 5, 6, 8-15, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over De Alva, in view of Almgren (WO 2018/164631 A1).
Regarding claim 1, De Alva discloses a partner toy for massaging a first person and a second person (Abstract; [0019]), comprising: a U-shaped body 12 having a first leg 14 for inserting into a bodily orifice of the first person, a second leg 24/42 for inserting into a bodily orifice of the second person, and a transition segment between the first leg and the second leg, at least the second leg being cylindrical (Figs. 1, 10; [0068]; [0074]; [0084]); and an internal clip 18 in the U-shaped body configured to align the first leg and the second leg relative to each other, wherein the clip is made at least partially of a resilient deformable polymer material ([0024]; [0071]), wherein the first leg includes a back side and a ventral side, the back side being continuously curved, and the ventral side including a first convex curve segment distal to the transition segment and a second convex curve segment proximal to the transition segment, wherein the first convex curve segment and the second convex curve segment are separated from each other by a notch 20 (Figs. 1-5; [0076]; back side is continuously curved; the convex curve segments can be on either side of the notch defined by one of the malleable/adjustable points), and wherein the second leg includes an end face 35 proximal to the transition segment, the end face being convex and disposed opposite the second convex curve segment of the first leg in an initial shape of the U-shaped body (Figs. 9-11; [0070]). De Alva fails to disclose that the clip material comprises a reversibly plastically deformable thermoplastic polymer. Almgren discloses a similar device (Abstract) comprising an internal component 2 comprising a reversibly plastically deformable thermoplastic polymer in order to easily allow repeated reshaping (p. 2, lines 1-9; p. 6, lines 20-38; col. 9, lines 11-17; col. 9, line 32 – col. 10, line 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of De Alva by using such a reversibly plastically deformable thermoplastic polymer as taught by Almgren in order to easily allow repeated reshaping.
Regarding claim 5, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the second leg is phallic-shaped in design and includes a radial expansion at an end proximal to the transition segment (Figs. 10, 11, 16-18).
Regarding claim 6, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the internal clip includes a first end segment and a second end segment, and wherein the first end segment is disposed in the first leg and the second end segment is disposed in a region of the radial expansion of the second leg (Figs. 9, 13).
Regarding claim 8, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the internal clip includes a rectangular cross section at least in a region of the transition segment (e.g., Fig. 14). The combination of De Alva and Almgren fails to expressly disclose that the cross section includes a first side length in a range from 2 mm to 12 mm and a second side length also in a range from 2 mm to 12 mm. However, this would have been obvious to determine for one of ordinary skill in the art as a matter of routine experimentation. Based upon the requisite dimensions for such a partner toy (e.g., being comfortably insertable within a vagina and stimulating various portions of the users) and a desired level of resilience/bias, determining the optimal/workable dimensions of the cross section of the internal clip within the U-shaped body would not have been inventive.
Regarding claim 9, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the transition segment is molded integrally with the first leg and the second leg ([0082]).
Regarding claim 10, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the transition segment has a circular cross section (Figs. 1, 2).
Regarding claim 11, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, but fails to expressly disclose that the transition segment has a diameter in a range from 15 mm to 30 mm. However, this would have been obvious to determine for one of ordinary skill in the art as a matter of routine experimentation. Based upon the requisite dimensions for such a partner toy (e.g., being comfortably insertable within a vagina and stimulating various portions of the users) and a desired level of resilience/bias, determining the optimal/workable dimensions of the transition segment would not have been inventive.
Regarding claim 12, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, but fails to expressly disclose that a length ratio between the first length of the first leg and the second length of the second leg is in a range from 1:2 to 1:4. However, this would have been obvious to determine for one of ordinary skill in the art as a matter of routine experimentation. Based upon the requisite dimensions for such a partner toy (e.g., being comfortably insertable within a vagina and properly penetrating a partner) and a desired depth of penetration, determining the optimal/workable dimensions of the length ratio would not have been inventive.
Regarding claims 13-15, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and Almgren further discloses that the material of the internal clip is a thermoplastic polyester material, the material of the internal clip has a softening temperature range in a range from 50° C to 80° C, and wherein the internal clip is a polymorphic material (p. 2, lines 8-9; p. 6, line 37 – p. 7, line 2; p. 9, lines 5-9).
Regarding claim 27, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and De Alva further discloses that the back side of the first leg is continuously curved over a length of the back side in a convex shape (Figs. 1, 3).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over De Alva and Almgren as applied to claim 1 above, and further in view of Mark (U.S. Pub. No. 2009/0281373 A1). The combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, but fails to disclose a foam core disposed in the second leg, and wherein the foam core is fully enclosed by elastic material of the U-shaped body. Mark discloses a similar device (Abstract; Fig. 6) that includes a foam core disposed in a leg, wherein the foam core is fully enclosed by elastic material, in order to accommodate the shape of the vagina ([0011]-[0012]; [0054]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of De Alva and Almgren with such an enclosed foam core in the second leg, as taught by Mark, in order to accommodate the shape of the vagina.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over De Alva, Almgren, and Mark as applied to claim 16 above, and further in view of Cai (U.S. Pub. No. 2016/0136037 A1).
Regarding claim 17, the combination of De Alva, Almgren, and Mark discloses the invention as claimed, see rejection supra, but fails to disclose that the foam core is at least partially formed of a polyethylene material. Cai discloses a similar device (Abstract; Fig. 4) comprising a foam core that is at least partially formed of a polyethylene material in order to provide a shape memory material with a stable and adjustable elasticity ([0021]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of De Alva, Almgren, and Mark with such polyethylene foam, as taught by Cai, in order to provide a shape memory material with a stable and adjustable elasticity.
Regarding claim 18, the combination of De Alva, Almgren, Mark, and Cai discloses the invention as claimed, see rejection supra, and further discloses that the foam core emulates a shape of the second leg (Mark: [0011]-[0012], [0054]; Cai: [0021]).
Claims 19 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over De Alva and Almgren as applied to claim 1 above, and further in view of Crozier et al. (U.S. Pub. No. 2023/0310262 A1; hereinafter known as “Crozier”).
Regarding claim 19, the combination of De Alva and Almgren discloses the invention as claimed, see rejection supra, and further discloses means for vibration for generating mechanical vibrations in the second leg of the body ([0032]; [0080]-[0081]). The combination of De Alva and Almgren fails to disclose that this means comprises a drive, a drive support for receiving the drive, an energy source for supplying the drive with electrical energy, and an electronic control unit for actuating the drive. Crozier discloses a similar device (Abstract; Figs. 1, 3, 26) that includes a drive 114/116/3002 ([0103]-[0104]; [0205]), a drive support for receiving the drive (e.g., coils formed around the drive: [0210] or an opening where the drive is received: [0222]), an energy source for supplying the drive with electrical energy and an electronic control unit for actuating the drive ([0109]; [0177]-[0179]), wherein the drive generates mechanical vibrations, in order to provide controllable stimulation ([0109]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of De Alva and Almgren with such a drive, drive support, energy source, and electronic control unit, as taught by Crozier, in order to provide controllable stimulation.
Regarding claim 21, the combination of De Alva, Almgren, and Crozier discloses the invention as claimed, see rejection supra, and Crozier further discloses that the electronic control unit includes a memory having a plurality of pre-stored vibration profiles ([0121]; [0177]; [0179]; cycling through different intensities).
Regarding claim 22, the combination of De Alva, Almgren, and Crozier discloses the invention as claimed, see rejection supra, and Crozier further discloses at least one control element coupled to the control unit and configured to switch on and off the drive or configured to select a vibration profile from the plurality of pre-stored vibration profiles ([0092]; [0109]; [0177]-[0179]).
Regarding claim 23, the combination of De Alva, Almgren, and Crozier discloses the invention as claimed, see rejection supra, and Crozier further discloses that the at least one control element is disposed in a recess on an outer side of the body ([0082]; [0092]).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over De Alva, Almgren, and Crozier as applied to claim 19 above, and further in view of Baetica et al. (U.S. Pub. No. 2018/0185237 A1; hereinafter known as "Baetica"). The combination of De Alva, Almgren, and Crozier discloses the invention as claimed, see rejection supra, but fails to disclose that the drive includes a longitudinal axis, and wherein the longitudinal axis of the drive is disposed parallel to a longitudinal axis of the second leg. Baetica discloses a similar device (Abstract; Figs. 6, 7) comprising drives 42 that include a longitudinal axis, wherein the longitudinal axes of the drives are disposed parallel to longitudinal axes of legs of the device in order to provide desired vibration ([0082]; [0124]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of De Alva, Almgren, and Crozier with longitudinal motors disposed along the longitudinal axis of the legs, as taught by Baetica, in order to provide desired vibration.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over De Alva as applied to claim 25 above, and further in view of Almgren. De Alva discloses the invention as claimed, see rejection supra, but fails to disclose heating the curved U-shaped body to a softening temperature of the internal clip for restoring an initial shape of the internal clip. Almgren discloses a similar method (Abstract) comprising a device with an internal component 2 comprising a plastically deformable thermoplastic polymer, which can be heated to a softening temperature for restoring an initial shape, in order to easily allow repeated reshaping (p. 2, lines 1-9; p. 6, lines 20-38; col. 9, lines 11-17; col. 9, line 32 – col. 10, line 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of De Alva so that the internal clip comprises such a plastically deformable thermoplastic polymer, as taught by Almgren, in order to easily allow repeated reshaping via heating the curved shaped body to the softening temperature of the internal clip.
Allowable Subject Matter
Claims 7 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: regarding claim 7, none of the prior art of record teaches or reasonably suggests that the first and second end segments of the internal clip include a protrusion and anchor the internal clip in the U-shaped body, in combination with the other recited components. Regarding claim 20, none of the prior art of record teaches or reasonably suggests that the drive is rigidly connected to such an internal clip, in combination with the other recited components.
Response to Arguments
Applicant’s arguments with respect to the claim objections and the rejections under 35 U.S.C. 112(b) have been fully considered and are persuasive in light of the amendments. The objections and rejections have been withdrawn.
Applicant’s arguments with respect to the rejections under 35 U.S.C. 102 and 103 have been fully considered and are persuasive in light of the amendments. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made, as detailed supra.
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 THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason M. Sims can be reached at (571)272-7540. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THADDEUS B COX/Primary Examiner, Art Unit 3791