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 .
Response to Amendment
Applicant’s amendment, filed 31 March 2026, is acknowledged. Claim 14 is amended. Claims 1-13 and 15-20 are cancelled. Claims 21-39 are new.
Claims 14 and 21-39 are pending in the instant application.
Response to Arguments
Applicant’s arguments, filed 31 March 2026, with respect to the claim objections to claims 13, 17 and 19, the interpretation under 35 USC 112(f) of claims 16, 17 and 18, and the 35 USC 112(b) rejections of claims 12 and 16-20 have been fully considered and are persuasive in light of the claims being cancelled. The claim objections to claims 13, 17 and 19, the interpretation under 35 USC 112(f) of claims 16, 17 and 18, and the 35 USC 112(b) rejections of claims 12 and 16-20 have been withdrawn.
Applicant’s arguments, with respect to the 35 USC 102 rejections of claims 1, 6-9, 13 and 19 and 35 USC 103 rejections of claims 2-5, 10-12, 15-18 and 20, have been fully considered and are persuasive in light of the amendments. The 35 USC 102 rejections of claims 1, 6-9, 13 and 19 and 35 USC 103 rejections of claims 2-5, 10-12, 15-18 and 20 have been withdrawn.
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 14 and 21-39 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 14 is directed to an adapter for a sexual stimulation apparatus, but does not positively recite the stimulation apparatus. As such, line 5, “detachably connected to a sliding component of the sexual stimulation apparatus” renders the claim indefinite. Examiner suggests --the connector is configured to detachably connected to a sliding component of the sexual stimulation apparatus--. The same applies to lines 11-12, “the adapter is connected to the sexual stimulation apparatus via the connector”. Examiner suggests --the adapter is configured to connect to the sexual stimulation apparatus via the connector--.
Claims 21-39 inherit the same deficiencies.
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.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,653,752. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the instant application claims an adapter for a sexual stimulation apparatus, wherein the sexual stimulation apparatus is configured to perform a reciprocating motion, while claim 14 of U.S. Patent No. 12,653,752 is the same adapter that is dependent on claim 1 which claims a sexual stimulation apparatus that is configured to perform a reciprocating motion.
Allowable Subject Matter
Claims 14 and 21-39 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the double patenting rejection of claim 14 as set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Claim 14 claims an adapter for a sexual stimulation apparatus, wherein the adapter comprises a first and second body, a connector disposed on the first body or the second body; a spring disposed between the first and second body, a quick release member configured to pass through the first body and the second body, wherein the spring is in a compressed state when the first body and second body are fixed together by the quick release member and a connector disposed on the first body or the second body, wherein the connector is detachably connected to the sliding component of the sexual stimulation apparatus.
Bolton (US20210283006A1) teaches using a spring clamp with an adult stimulation device, but does not teach a quick release member wherein the spring is in a compressed state when the first body and second body are fixed together by the quick release member. Peacock (US4573717A) discloses a toggle clamp that discloses the spring is in a compressed state when the first body and second body are fixed together by the quick release member, but does not disclose a connector nor does the clamp allow for an area for a connector. Ciminski (US5295933A) discloses a clamp for a weight lifting bar wherein the spring is in a compressed state when the first body and second body are fixed together by the quick release member, but does not disclose a connector. As it is a clamp for a weight lifting bar, there would be no reason for a connector.
The prior art, either singly or in combination, fails to disclose an adapter for a sexual stimulation apparatus comprising a first and second body, a spring, and a quick release member wherein the spring is in a compressed state when the first body and second body are fixed together by the quick release member.
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 Marc D Honrath whose telephone number is (571)272-6219. The examiner can normally be reached M-F 7:30-5:00.
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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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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/M.D.H./Examiner, Art Unit 3791
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