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 17 March 2026. Claims 1-3, 5-9, and 11-20 are currently under consideration. The Office acknowledges the amendments to claims 1, 5, 7, 9, 11, and 20, as well as the cancellation of claims 4 and 10.
Terminal Disclaimer
The terminal disclaimer filed on 17 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,963,901 has been reviewed and is NOT accepted.
As noted in the Terminal Disclaimer review decision of 23 March 2026, the terminal disclaimer was not signed.
Further, this application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b). Please file a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, or file a TD that is signed by the Applicant.
Finally, this application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c). The Applicant cited on the TD must be cited exactly as it is cited on the ADS and/or filing receipt and also in its entirety. Punctuation should be included if cited. For example, the Applicant cited on the ADS has both a comma and a period as punctuation.
Please make corrections as suggested above and resubmit the TD. No new fee is required.
Claim Objections
Claims 15 and 20 are objected to because of the following informalities:
In claim 15, line 1: “claims” should apparently read --claim--.
In claim 20, line 1: “further providing” should apparently read --further comprising providing--.
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 11 and 20 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 11 recites that it depends upon claim 10. However, claim 10 has been canceled, so the scope of claim 11 is not clear. Claim 11 will be taken herein to depend upon claim 7.
Claim 20 recites the limitation “which is configured to a time to the sexual climax and an increase in the intensity of the sexual climax.” This limitation does not make sense; there appears to be words or phrases missing.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-15, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gollan (U.S. Pub. No. 2018/0345003 A1).
Regarding claim 12, Gollan discloses a method of altering a sexual climax of a user (Abstract; Figs. 1, 4), the system being positionable proximate to a sexual organ of a user ([0004]-[0007]), the method comprising the steps of: placing a patch having an energy generator 18 proximate to a sexual organ of the user ([0004]-[0007]; [0020]; [0051]; [0079]); controlling the energy generator to generate and deliver continuous energy to an area proximate to the sexual organ, and wherein the sexual climax is altered ([0066]-[0071]).
Regarding claim 13, Gollan discloses the step of engaging in sexual intercourse while the energy generator is generating energy ([0076]).
Regarding claim 14, Gollan discloses the step of continuing to apply energy until after the altering of the sexual climax ([0091]).
Regarding claim 15, Gollan discloses that altering of the sexual climax comprises extending a time to the sexual climax ([0015]; [0067]; [0090]).
Regarding claim 17, Gollan discloses providing a controller configured to control the energy generator ([0066]; [0076]-[0077]).
Regarding claim 19, Gollan discloses that the energy generator is configured to generate an electrical stimulation ([0051]-[0055]; [0066]-[0067]).
Regarding claim 20, Gollan discloses the step of the user or another user operating the controller, which is configured to a time to the sexual climax and an increase in the intensity of the sexual climax ([0015]; [0067]; [0090]; [0095]).
Claims 12, 17, and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gollan et al. (U.S. Pub. No. 2021/0361941 A1; hereinafter known as “Gollan ‘941”).
Regarding claim 12, Gollan ‘941 discloses a method of altering a sexual climax of a user (Abstract; Figs. 2-3), the system being positionable proximate to a sexual organ of a user ([0121]-[0122]), the method comprising the steps of: placing a patch having an energy generator 216 proximate to a sexual organ of the user ([0121]-[0122]; [0127]); controlling the energy generator to generate and deliver continuous energy to an area proximate to the sexual organ, and wherein the sexual climax is altered ([0097]; [0127]; [0220]; [0223]; [0225]).
Regarding claims 17 and 18, Gollan ‘941 discloses providing a controller configured to control the energy generator, wherein the controller comprises a remote controller 306/308 in wireless communication with the energy generator ([0129]; [0155]).
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, 2, 5-9, 11, 12, and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 11, 15, and 19 of U.S. Patent No. 11,963,901. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite essentially identical limitations such that they would not meet a one-way test for distinctness. The claims of the issued patent include all of the elements recited by the present claims.
Claims 3 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 11, 15, and 19 of U.S. Patent No. 11,963,901 in view of Gollan. The claims of the issued patent include all of the elements recited by claim 3 and 13 except for a housing coupled to the patch and configured to house the power supply, and for engaging in sexual intercourse while the energy generator is generating energy. As detailed supra, Gollan teaches a similar system and method, further comprising a housing 18 coupled to the patch and configured to house the power supply ([0066]; [0076]-[0077]), and for engaging in sexual intercourse while the energy generator is generating energy ([0076]; [0088]; [0090]; [0116]) in order to improve intercourse, preserve spontaneity, and isolate circuitry from the external environment while allowing activation at the patch. 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 claims of the issued patent with the teachings of Gollan to arrive at the limitations of present claims 3 and 13 in order to improve intercourse, preserve spontaneity, and isolate circuitry from the external environment while allowing activation at the patch.
Allowable Subject Matter
Claims 1-3 and 5-9 would be allowable if the double patenting rejections set forth in this Office action are overcome.
Claim 11 would be allowable if the double patenting rejections set forth in this Office action are overcome and 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, set forth in this Office action.
Claim 16 would be allowable if the double patenting rejections set forth in this Office action are overcome and if rewritten to include 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: as detailed in the previous Office action, none of the prior art of record teaches or reasonably suggests such a device or method that alters a sexual climax by increasing an intensity of the climax.
Response to Arguments
Applicant’s arguments with respect to the objections to the specification and the claims have been fully considered and are persuasive in light of the amendments. The objections have been withdrawn.
Applicant’s arguments with respect to the rejections under 35 U.S.C. 112(b) have been fully considered and are persuasive in light of the amendments. The rejections have been withdrawn.
Applicant’s arguments with respect to the rejections of claims 1-3, 5-9, and 11 under 35 U.S.C. 102 have been fully considered and are persuasive in light of the amendments. The rejections have been withdrawn.
Applicant’s arguments with respect to the rejections of claims 12-15 and 17-20 under 35 U.S.C. 102 have been fully considered but they are not persuasive. These claims were not amended and Applicant does not make any particular arguments towards these claims.
Applicant’s arguments with respect to the double patenting rejections have been fully considered but they are not persuasive. As detailed supra, the Terminal Disclaimer has not been accepted.
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.
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, 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