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 .
Election/Restrictions
Claims 1-6 and 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 March 2026.
Applicant’s election without traverse of Invention II, claims 7-11 in the reply filed on 12 March 2026 is acknowledged.
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 9-11 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 9 recites “a layer of parylene” while parent claim 7 recites “coated with parylene”. It is unclear whether the parylene of claim 9 is the same as that of the coating of claim 7.
The same issue appears in claims 10 and 11.
Claim 11 recites “the silicone components” yet previously recites “one or more silicone components. Since “one or more” encompasses one, at least one, or a plurality, it is unclear how many silicone component(s) applicant intends to reference and require.
Claim Rejections - 35 USC § 102
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.
Claims 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2004/010906 (Forsell, see attached).
Regarding claim 7, Forsell teaches an adult novelty item (device for treating impotence, pg. 2, lines 6-11; pg. 22, lines 22-26; Figure 1), comprising: a. an adult novelty substrate (12) (“tubular layer 12 of…hard silicone”, pg. 22, lines 26-34; Figure 2).
Regarding claim 8, Forsell teaches the adult novelty item is a penis ring (pg. 2, lines 6-11; pg. 22, lines 22-26; Figure 1).
Regarding claims 9 and 10, Forsell teaches a layer of parylene (14) is applied to the adult novelty substrate (12) at a location on the adult novelty substrate that is designed for contact with a human body and contact with a mucus membrane of the human body (parylene coating 14 makes “the composite structure resistant to aggressive body fluids and to give the composite structure good anti-friction properties”, pg. 7, line 34 – pg. 8, line 4; The limitations “for contact with a human body” and “for contact with a mucus membrane of the human body” are functional language. Forsell teaches the device is implanted, thus is in contact with a human body. Forsell teaches the parylene coating makes the structure “resistant to aggressive body fluids”, thus is configured for contact with a mucus membrane.).
Regarding claim 11, Forsell teaches the adult novelty item including one or more silicone components (8, 10) (“tubular layer 8 of hard silicone”, “soft layer 10 of…silicone gel”, pg. 22, lines 26-34; Figure 2), wherein a layer of parylene (14) is applied to the silicone components (8, 10) thereby allowing the adult novelty item to be compatible with silicone lubricant (The limitation “allowing the adult novelty item to be compatible with silicone lubricant” is functional language. Since the parylene layer 14 is applied adjacent a silicone layer 12, the parylene-coated item 2 would be compatible with a silicone lubricant. See pg. 22, lines 26-34.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-5pm.
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/CARRIE R DORNA/Primary Examiner, Art Unit 3791