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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025 has been entered.
Specification
The disclosure is objected to because of the following informalities: the specification does not indicate the units of the surface roughness.
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.
Claim 4 is 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.
The terms “heavy calcium” and “light calcium” in claim 4 are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Even in industry there is no particular standard for what is meant by “heavy calcium” and “light calcium” beyond the fact that it is calcium carbonate; see e.g.:
A) https://www.alpapowder.com/112971/
B) https://www.jet-mills.com/the-difference-between-heavy-calcium-and-light-calcium-in-polymer-applications/
C) https://www.csacement.com/the-difference-between-heavy-and-light-calcium-carbonate.html
D) https://www.vtalc.com/news/understanding-calcium-carbonate-comprehensive-analysis-of-17-differences-between-light-calcium-and-heavy-calcium
E) https://www.calciumcity.com/what-is-the-difference-between-heavy-calcium-and-light-calcium-in-plastics-.html
It is suggested to just say “calcium carbonate” which still covers both heavy calcium and light calcium.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 13, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ouyang et al (CN 104339485; already of record), in view of Kodemura et al (US PGPub 2023/0088356; herein Kodemura, already of record), as evidenced by Inno Tape (https://www.innotape.de/en/blog/surface-energy#:~:text=Low%2Denergy%20surfaces%2C%20on%20the,31%20mN/m%2C%20respectively.). Regarding claim 1:
Ouyang teaches a polyethylene mold for making a polyurethane condom (Abstract). Since Ouyang teaches a polyethylene mold for making a polyurethane condom the assumption would be that the surface tension is an inherent value of the material, and that the polyethylene of Ouyang has the claimed surface tension. Otherwise, as evidenced by Inno Tape, polyethylene can have a surface tension of 31 mN/m (Overview section). Ouyang is silent to the surface roughness of the polyethylene mold.
In the same field of endeavor Kodemura teaches that condom molds can have a surface roughness of 0.01 to 100 microns (paragraph 0152 and 0161).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have such a surface roughness, since having such a smooth mold is preferable for controlling the thickness of the condom (Kodemura, paragraph 0152).
Regarding claim 13:
Since Ouyang teaches a condom mold, by its very nature it is a solid mold.
Regarding claims 20-22:
See remarks regarding Kodemura and claim 1.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ouyang and Kodemura as applied above, and further in view of Jones (US Patent 4,104,289)
Ouyang and Kodemura are silent to the possible organic modification species of claim 3 or the inorganic modification species of claim 4.
In the same field of using polyethene Jones teaches modifying polyethylene with calcium carbonate and trivinylisocyanurate (a vinyl) (e.g. Abstract).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the modifiers of Jones, since it increases the mechanical properties of polyethylene (Abstract)
Claims 5-9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ouyang and Kodemura, and in further view of Miller et al (U.S. Patent 5,458,936; herein Miller, already of record). Regarding claim 5:
Since Ouyang teaches a condom mold there can then be any desired subdivision of such shape (when there is no further limitation on said divisions). Therefore the condom mold of Ouyang has a head section, and a tail section. However, Ouyang does not teach the taper angle of the head section.
In the same field of endeavor Miller teaches a condom that has a tapered shape (Figure 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the required taper, since Miller shows that a tapered condom can fit a wider range of the population (column 14, lines 60-64). The exact value of the taper is seen as routine optimization of known parameters (see MPEP 2144.05 II A)
Regarding claim 6, Ouyang teaches:
Wherein the head portion has a front end provided with a semen pouch (Figures 1 and 2, where convex head 1 is pointing at)
Regarding claim 7, Ouyang is silent to:
Wherein the head portion has a length of 200-260 mm
In the same field of endeavor Miller teaches a condom that can have a length up to 225 mm (column 14, lines 48-52).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have such a length, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A). As previously discussed the head section can be any part, thus the combination of Ouyang and Miller make obvious the head section of the desired length.
Regarding claim 8:
Since Ouyang teaches a condom mold there can then be any desired subdivision of such shape. Therefore the condom mold of Ouyang has a head section, a tail section, and a transition section therebetween.
Regarding claim 9, Ouyang teaches:
Wherein the tail portion has a columnar shape of constant diameter (As seen in Figures 1 and 2)
Regarding claim 14:
See remarks regarding claim 5 and the taper angle.
Claims 5-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ouyang and Kodemura, and in further view of Li (CN 202200457; already of record, with machine translation). Regarding claim 5:
Since Ouyang teaches a condom mold there can then be any desired subdivision of such shape (when there is no further limitation on said divisions). Therefore the condom mold of Ouyang has a head section, and a tail section. However, Ouyang does not teach the taper angle of the head section.
In the same field of endeavor Li teaches a condom that has a tapered shape (Figure 1).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the required taper, since Li teaches that the disclosed condom does not fall off easily (Abstract). The exact value of the taper is seen as routine optimization of known parameters (see MPEP 2144.05 II A)
Regarding claim 6, Ouyang teaches:
Wherein the head portion has a front end provided with a semen pouch (Figures 1 and 2, where convex head 1 is pointing at)
Regarding claim 7, Ouyang is silent to:
Wherein the head portion has a length of 200-260 mm
In the same field of endeavor Li teaches a condom that can have a threaded region 194.45 mm away from the tip (paragraph 0021), therefore there would be additional length past this section.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have such a length, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A). As previously discussed the head section can be any part, thus the combination of Ouyang and Li make obvious the head section of the desired length.
Regarding claim 8:
Since Ouyang teaches a condom mold there can then be any desired subdivision of such shape. Therefore the condom mold of Ouyang has a head section, a tail section, and a transition section therebetween.
Regarding claim 9, Ouyang teaches:
Wherein the tail portion has a columnar shape of constant diameter (As seen in Figures 1 and 2)
Regarding claim 10, Ouyang is silent to:
Wherein the tail portion has a columnar shape with a gradually increasing diameter, and has a slope greater than 0° and less than or equal to 3°
As seen in Figure 1 of Li a tail section at the base of the condom has a columnar shape which then begins to taper.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have such a shape since the disclosed condom does not fall off easily (Abstract). The exact value of the taper is seen as routine optimization of known parameters (see MPEP 2144.05 II A)
Regarding claim 14:
See remarks regarding claim 5 and the taper angle.
Response to Arguments
Applicant’s arguments, filed 12/23/2025, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KENNEDY whose telephone number is (571)270-7068. The examiner can normally be reached Mon-Fri 8am-5pm..
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/TIMOTHY KENNEDY/Primary Examiner, Art Unit 1743