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
Applicant's election with traverse of Group I (claims 1-11, 13-14) in the reply filed on December 19, 2025 is acknowledged. The traversal is on the ground(s) that all the limitations of claim 1 are found in claim 12 (Group II). This is not found persuasive because claim 12 (Group II) includes a limitation “a plurality of arms…that extend generally perpendicular from the approximate center of said first end and said second end of said main body” while claim 1 (Group I) includes the limitation “a plurality of arms…that extend from said central area of said second edge of said main body”. These limitations are found to be distinct. For example, the arms of Group I must extend from the second edge anywhere in a central region while the arms of Group II are not required to extend from an edge but must extend from the approximate center between the first end and second end. The “approximate center” is not necessarily an edge but could be anywhere along a center line of symmetry between the first and second ends, for example. These limitations are found to have different scopes and require construing the prior art differently for each group to determine patentability.
The requirement is still deemed proper and is therefore made FINAL.
As such, claim 12 is withdrawn as being directed towards a non-elected invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. See also MPEP 609.
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 1-11, 13-14 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.
Regarding Claim 1, the limitation “said central area of said second edge of said main body” is confusing because antecedent basis has not been established for “said central area of said second edge”. Rather, the term was given as “a central area between said first and second end” in line four. The claim could be amended as “a central area of the second edge between said first and second end” in line four, to resolve the issue.
Regarding Claim 1, the limitation “a plurality of arms having…” is confusing because the listing of dimensional characteristics seems to apply to each arm, not the overall plurality. Should this read “a plurality of arms each having…”?
Regarding Claim 2, the antecedent basis is confusing for “first end to said second end” in both instances. The following can be considered to remedy the issue: “wherein the length of said main body from said first end to said second end of the main body is longer than the length of said arms, from said first end to said second end of the arms.”
Regarding Claim 8, “having two arms” is confusing because the parent claim 1 already requires a “plurality of arms”. Is claim 8 trying to limit the claim to require only two arms? Is so, the suggested language is “the plurality of arms consists of having two arms”.
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 1-4, 6-11, 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210038259 to Langell.
Regarding Claim 1, Langell teaches a gynecological device for tightening the vaginal opening during sexual intercourse (the device as shown in Figure 3 worn on the perineum would cause a tightening effect due to its supporting the perineum and surrounding area of the vagina and be capable of use during sexual intercourse for such tightening function) comprising:
a main body having a front surface, a rear surface, a first end, a second end, a first edge, a second edge, and a central are [of the second edge] between said first and second end (as shown in annotated Figure 4A, 4B, 4c below);
an adhesive on each rear surface of said main body (Abstract, par. 0029, 0056, adhesive layer 16 is applied to the rear surface of the entire pad 12);
a plurality of arms [each] having a front surface, a rear surface, a first end, a second end, a first edge and a second edge that extend from said central area of said second edge of said main body (as shown in the annotated Figure 4A, 4B, 4C below, arms 36a, 36b, 36c extend from the central area of the second edge of the main body); and
an adhesive on said rear surface of said arms (Abstract, par. 0029, 0056, adhesive layer 16 is applied to the rear surface of the entire pad 12).
PNG
media_image1.png
618
717
media_image1.png
Greyscale
Regarding Claim 2, Langell further teaches wherein the length of said main body from said first end to said second end [of the main body] is longer than the length of said arms, from said first end to said second end [of the arms] (par. 0053, Figure 4B).
Regarding Claim 3, Langell further teaches wherein said gynecological device is made from a stretchable material (rubber, par. 0060).
Regarding Claim 4, Langell further teaches wherein said main body has a generally rectangular shape (Figure 4C main body central portion is generally rectangular).
Regarding Claim 6, Langell further teaches wherein said stretchable material is elastic (rubber is inherently elastic, par. 0060).
Regarding Claim 7, Langell further teaches wherein said stretchable material is high-stretch adhesive support tape (a rubber sheet material as used in any of Figures 4A, 4B, 4C is considered a type of high-stretch adhesive support tape, par. 0060).
Regarding Claim 8, Langell further teaches wherein the [the plurality of arms consists of] having two arms (any of Figures 4A, 4B, 4C show exactly two arms extending from the main body, as annotated above).
Regarding Claim 9, Langell further teaches wherein said main body has a generally crescent shape (at least Figure 4A, 4B show a main body with a generally crescent shape, as highlighted in the annotated figure above).
Regarding Claim 10, Langell further teaches wherein said adhesive is selected from the group consisting of medical grade tape, acrylic adhesive, silicone adhesive and hydrocolloid adhesive (silicone, hydrocolloid, polymers, hydrogels are specifically mentioned in par. 0063).
Regarding Claim 11, Langell further teaches wherein said two arms are spaced apart on said second edge of said main body (all of Figures 4A, 4B, 4C show the two arms spaced apart, see annotated figure above).
Regarding Claim 13, Langell further teaches wherein said arms extend generally perpendicular from said central area of said main body (in Figure 4B, the arms are considered generally perpendicular from said central area of said main body since the main body is curving, as seen better in the annotated figure above).
Claims 1, 5, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20150313636 to Shen.
Regarding Claim 1, Shen teaches a gynecological device for tightening the vaginal opening during sexual intercourse (the device as shown in Figure 1 worn on the perineum would cause a tightening effect due to its supporting the perineum and surrounding area of the vagina and be capable of use during sexual intercourse for such tightening function) comprising:
a main body having a front surface, a rear surface, a first end, a second end, a first edge, a second edge, and a central are [of the second edge] between said first and second end (as shown in annotated Figure 1 below);
an adhesive on each rear surface of said main body (adhesive for use on skin implies the adhesive is applied to the rear surface, par. 0013);
a plurality of arms [each] having a front surface, a rear surface, a first end, a second end, a first edge and a second edge that extend from said central area of said second edge of said main body (arms 110, 115 as shown in Figure 1; at least a portion of the arms is extended from a central area of said second edge of said main body); and
an adhesive on said rear surface of said arms (adhesive for use on skin implies the adhesive is applied to the rear surface, par. 0013).
PNG
media_image2.png
97
267
media_image2.png
Greyscale
Regarding Claim 5, Shen further teaches wherein said arms have a generally curved first edge and second edge and a uniform width extending from said first edge to said second edge (as shown in Figure 1, arms 110, 115 are curved).
Regarding Claim 14, Shen further teaches wherein said first edge of said first arm is convex and said second edge is parallel to said first edge, and said first edge of said second arm is convex and said second edge is parallel to said first edge, wherein said first arm and said second arm are a mirror image of each other (the inner edges of the arms 110, 115 are convex with second edges parallel; the arms 110, 115 mirror each other, as shown in Figure 1).
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 1-11, 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11490928. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are narrower in scope than the instant claims and therefore necessarily anticipate the claimed invention. In particular, the patented claims teach a method of using the instantly claimed device. The following is a mapping of how the patented claims anticipate the instant claims:
Instant claim
Patented claim
1 (note that “extend from said central area of said second edge” of instant claim 1 is broader in scope than the patented claim 1 “extend generally perpendicular from an approximate center of said second edge”
1
2, 3
1
4
3
5
4
6, 7
5
8
9
9
6
10
7
11
8
13
1
14
10
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20240424248 to Boursiquot teaches a labial retention device and provides a similar effect as to the claimed invention; US 20230055793, 12201544 to Thomas and US 20110022056, 8657836 to Haadem, 20090148503 to Trieu teach a perineal bandage that provides support/tightening to the vaginal area; US 20170049602 to Kuehl teaches a support that is similar in structure to the claimed invention (see Figures 10A, 10B in particular); US 20160262943 to Arbesman teaches a support tape that is similar in structure to the claimed invention (see Figures 1, 17 in particular). US 20140213956 to Atbesman (e.g. Figures 10, 11, 13), US 20130334084 to Arbesman (e.g. Figures 1, 4) also teach a support tape that reads on the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA MARIE HOFFA whose telephone number is (571)270-7408. The examiner can normally be reached Monday - Friday 9:30 am - 6:00 pm.
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, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/Primary Examiner, Art Unit 3799