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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 2 states “a user glans” but should read –a user’s glans--.
Claim 1, line 5 states “a user foreskin” but should read –a user’s foreskin --.
Claims 1, lines 2-3, 6, 8 and claim 5, line 3, recite the limitation “, in use”, but examiner suggests removing the limitation for clarity of the claims. The limitation does not further limit the claims and may add some confusion to intention of the claims.
Appropriate correction is required.
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.
(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 1-6 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. The claims of the instant application can be found in the product “Pecker Packer” which has a website published date of February 20, 2021, see attached capture from the Internet Archive Wayback Machine. The products sold on the website are the same as the invention of the instant application, wherein the base and outer sleeve are in one component and the compression sleeve is a separate component. Each of the components are made of silicone, and each component features an aligned opening. The sleeve outer ring of the publicly available product can fold between two position to allow for insertion of the foreskin. The compression sleeve of the publicly available product is configured to fit around the outside of the outer sleeve and the outer sleeve is configured to connect to weight accessories or an air kit. Examiner acknowledges that the owner of the publicly available product is the same as the listed Inventor of the instant application.
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.
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.
For the purposes of compact prosecution, in the case that the Inventor’s product was not publicly available before 28 September 2021, Examiner is presenting additional prior art that is obvious over the claims of the instant application.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Blau (US 20220401174 A1) in view of Marx (US 5662631 A).
Regarding claim 1, Blau discloses a restoration device for foreskin (Abstract) comprising a base defining a glans cone configured to receive a user glans (Figure 2C), in use and an outer sleeve comprising an inner portion that matingly couples with the base and a sleeve outer ring configured to press on a user foreskin (Figure 2C), in use.
Blau fails to disclose a compression sleeve configured to wrap around an outer surface of the sleeve outer ring, in use. Marx discloses a male external catheter attachment assembly, wherein the catheter attachment includes elastic bands to aid in retention of the device on penis (Col 3, lines 60-65). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the device as taught by Blau, with external elastic bands around the outer surface of the sleeve outer ring as taught by Marx, since such a modification would provide the predictable results of aid in retention of the device on penis (Col 3, lines 60-65).
Regarding claim 2, Blau, as modified in claim 1, further discloses the base, the outer sleeve, and the compression sleeve comprise a pliable material (Blau, Paragraph [0044]; Marx, Col 3, lines 60-65, elastic rings).
Regarding claim 3, Blau, as modified in claim 1, further discloses the base defines a cone opening and the outer sleeve defines an outer sleeve opening that aligns with the cone opening (Figure 2C).
Regarding claim 4, Blau, as modified in claim 1, further discloses the sleeve outer ring is operable to fold between a first position, where a distal end thereof is distal the inner portion, and a second position, where the distal end thereof is proximal the inner portion (Figures 1E and 1F).
Regarding claim 5, Blau, as modified in claim 1, further discloses the compression sleeve is operable to apply a compression force to the outer surface of the sleeve outer ring, in use (Marx, Col 3, lines 60-65, elastic rings).
Regarding claim 6, Blau, as modified in claim 1, further discloses a distal end of the outer sleeve is configured to connect to one of a plurality of accessories (Blau, Paragraph {0043]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Haughey (US 20010049468 A1) discloses a similar device with a base and outer sleeve. Goulter (US 5618277 A) discloses a condom catheter with an external elastic band for providing additional compression to hold the device on. Heimreid (US 4388923 A) discloses a similar device with a base and outer sleeve.
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