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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first and second channels extend[ing] into the body…along first and second longitudinal axes”; “first and second internal ends”; “wherein the first and second channels partially merge”; and “first and second diameters of the first and second channels…taper along the first and second longitudinal axes” (claim 1) must be shown or the feature(s) canceled from the claim(s). In claim 8, “the intersection of the longitudinal axes” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because the abstract describes a method, while the claims of the instant application are directed to a device. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: at paragraph [0034], a grammatical error appears in the first sentence with “...the interior surfaces 26 the channels 18 are textured…”.
Appropriate correction is required.
Claim Objections
Claims 4 and 13 are objected to because of the following informalities: in claim 4, “one-piece” should apparently read --one piece--; or --a one-piece construction--; and in claim 13, “an block shape” should apparently read –a block shape--. 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 8 and 12 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 8 at line 2 recites the limitation "the intersection". There is insufficient antecedent basis for this limitation in the claim.
Claim 12 at line 1 recites the limitation "the first and second axes tending toward each other". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lamin (U.S. Patent No. 10,258,537) in view of Wright, Jr. (U.S. Patent No. 9,486,388). Regarding claims 1, 11 and 12, Lamin discloses a mutual sexual stimulation device for receiving and aligning first and second undersides of first and second male genitalia, the mutual sexual stimulation device comprising: a body including first and second openings 114,118 on a front face (Figs. 2-4 and col. 3, lines 39-50), wherein first and second channels extend into the body from the first and second openings, respectively, along first and second longitudinal axes, respectively, toward first and second internal ends, respectively (Figs. 2 and 4); and wherein the first and second channels partially merge to form a chamber (at element 120) adjacent to the first and second internal ends, respectively (Figs. 2 and 4). However, Lamin fails to disclose wherein first and second diameters of the first and second channels, respectively, taper along the first and second longitudinal axes, respectively, toward the chamber to increase compressive forces on the first and second male genitalia. Wright, Jr. discloses a masturbatory stimulator apparatus (see Abstract and Figs. 3-4B), as likewise disclosed by Lamin, wherein the apparatus comprises multiple channels, wherein each channel may provide a variety of textures, diameters and mechanical features to provide different sensations and pressures to a user (col. 6, lines 44-55 and col. 7, lines 9-25). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a channel for providing pressure and massage to a male user as taught by Lamin, with a varying diameter, as suggested by Wright, Jr., as Lamin recognizes the use of a channel which provides grippability to the male organ and Wright, Jr. discloses that a channel with varying diameters increases pressures/sensations to the male organ. While Lamin and Wright, Jr. fail to disclose explicitly that the varying diameter of each channel tapers, Lamin and Wright make such obvious as Lamin and Wright, Jr. recognize the use of their respective devices for male masturbation, and Wright, Jr. discloses that a smaller diameter channel of the masturbatory device would emulate a human lumen with a smaller passageway, such as the anus (col. 7, lines 2-8), creating a greater pressure/friction and/or pleasure to the male organ and the glans.
Regarding claim 2, while Lamin teaches that the body is made of a soft, flesh-like material designed to mimic genital flesh consistency (col. 1, lines 60-67 – col. 2, lines 1-26), Lamin fails to disclose explicitly that the material is a thermoplastic elastomer. Wright, Jr. teaches that the channels may be constructed of a variety of materials, such as thermoplastic elastomers, to facilitate sliding of the male organ through the channel(s) (col. 5, lines 1-7 and col. 6, lines 3-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a channel for mimicking the genital flesh consistency as taught by Lamin, of a thermoplastic elastomer as suggested by Wright, Jr., as Lamin suggests the need of a material which is soft and flesh-like, and Wright, Jr. discloses that thermoplastic elastomers are soft substances which allow the male organ to slide easily through the channel(s) (col. 5, lines 1-7).
Regarding claim 3, while Lamin teaches that the body is made of a soft, flesh-like material designed to mimic genital flesh consistency (col. 1, lines 60-67 – col. 2, lines 1-26), Lamin fails to disclose explicitly that the material is silicone. Wright, Jr. teaches that the channels may be constructed of a variety of materials, such as silicone, to facilitate sliding of the male organ through the channel(s) (col. 5, lines 1-7 and col. 6, lines 3-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a channel for mimicking the genital flesh consistency as taught by Lamin, of silicone as suggested by Wright, Jr., as Lamin suggests the need of a material which is soft and flesh-like, and Wright, Jr. discloses that medical grade silicone is one of a variety of soft substances which allow the male organ to slide easily through the channel(s) (col. 5, lines 1-7).
Regarding claim 4, the body is one-piece (element 120 of Fig. 4; and col. 3, lines 39-54 of Lamin).
Regarding claim 5, the device further includes an outer sleeve 124 surrounding a portion of the body (Fig. 3 and col. 3, lines 55-60 of Lamin).
Regarding claim 6, the body comprises a first material (soft, flesh-like material) and the outer sleeve 124 comprises a second material (pliable rubber) that is more rigid than the first material “to provide stability and grippability and during use” (col. 3, lines 39-60 of Lamin).
Regarding claim 7, while Lamin teaches that the body is made of a “first material” of soft, flesh-like material designed to mimic genital flesh consistency (col. 1, lines 60-67 – col. 2, lines 1-26), Lamin fails to disclose explicitly that the material is silicone. Wright, Jr. teaches that the channels may be constructed of a variety of materials, such as silicone, to facilitate sliding of the male organ through the channel(s) (col. 5, lines 1-7 and col. 6, lines 3-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a channel of a body for mimicking the genital flesh consistency as taught by Lamin, of silicone as suggested by Wright, Jr., as Lamin suggests the need of a material which is soft and flesh-like, and Wright, Jr. discloses that medical grade silicone is one of a variety of soft substances which allow the male organ to slide easily through the channel(s) (col. 5, lines 1-7).
Regarding claim 8, while Lamin teaches an angle formed between the first and second longitudinal axes by the intersection of the longitudinal axes (see Figs. 1, 2 and 4), Lamin fails to disclose explicitly that the angle is between 5 and 15 degrees. However, the courts have shown that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2144.05 11(A)). Therefore to discover the optimum angle between the two openings and/or channels would have been obvious to one skilled in the art. Lamin further makes such obvious as Lamin recognizes that the device can be constructed with different angles to accommodate use by one, two or three users (col. 3, lines 55-67) and the device can be manufactured to provide for a wide variety of sizes, shapes and applications (col. 4, lines 21-31).
Regarding claim 9, while Lamin teaches that the inner channels/chamber of the body provide stimulation to the user(s), Lamin fails to disclose explicitly that an inner surface of the chamber includes surface texture. Wright, Jr. discloses a masturbatory stimulator apparatus (see Abstract and Figs. 3-4B), as likewise disclosed by Lamin, wherein the apparatus comprises multiple channels, wherein each channel may provide a variety of textures, diameters and mechanical features to provide different sensations and pressures to a user (col. 6, lines 44-55 and col. 7, lines 9-25). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a channel/chamber for providing pressure and massage to a male user or users as taught by Lamin, with a variety of textures or mechanical features, as suggested by Wright, Jr., as Lamin recognizes the use of a channel/chamber which provides stimulation to the male organ and Wright, Jr. discloses that a channel/chamber with various textures increases sensations/pressures to the male organ.
Regarding claim 10, the device further includes a third opening (“third orifice”) at a second end of the chamber (Fig. 2 and col. 3, lines 61-67 of Lamin).
Regarding claim 13, Lamin discloses a generally “block shape” as Lamin teaches that the body may have I-shape (col. 3, lines 55-60) with first and second opposing flat surfaces (as shown in Figs. 2-4) to facilitate one-handed operation for a user (col. 3, lines 55-60).
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-13 of U.S. Patent No. 10,383,788. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of the patent disclose a mutual sexual stimulation device for receiving and aligning first and second undersides of first and second male genitalia, the mutual sexual stimulation device comprising: a body including first and second openings on a front face, wherein first and second channels extend into the body from the first and second openings, respectively, along first and second longitudinal axes, respectively, toward first and second internal ends, respectively; wherein the first and second channels partially merge to form a chamber adjacent to the first and second internal ends, respectively; and wherein first and second diameters of the first and second channels, respectively, taper along the first and second longitudinal axes, respectively, toward the chamber to increase compressive forces on the first and second male genitalia.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-17 of U.S. Patent No. 11,382,826. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of the patent disclose a mutual sexual stimulation device for receiving and aligning first and second undersides of first and second male genitalia, the mutual sexual stimulation device comprising: a body including first and second openings on a front face, wherein first and second channels extend into the body from the first and second openings, respectively, along first and second longitudinal axes, respectively, toward first and second internal ends, respectively; wherein the first and second channels partially merge to form a chamber adjacent to the first and second internal ends, respectively; and wherein first and second diameters of the first and second channels, respectively, taper along the first and second longitudinal axes, respectively, toward the chamber to increase compressive forces on the first and second male genitalia.
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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