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 1-23, in the reply filed on 20 January 2026 is acknowledged. The traversal is on the ground(s) that the cited prior art does not disclose the special features. This is not found persuasive because Applicant fails to argue or point out how the reference fails to include the claimed features (or which features it allegedly fails to teach). Applicant merely makes a conclusory statement.
The requirement is still deemed proper and is therefore made FINAL.
Claims 24-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Germany on 09 June 2020. It is noted, however, that Applicant has not filed a certified copy of the DE102020115262.0 application as required by 37 CFR 1.55.
Claim Objections
Claims 1, 4-6, 12, 13, 16-18, and 20 are objected to because of the following informalities:
In each of these claims, the recitations of “the cavity” should apparently read --the at least one cavity--.
In claim 17, line 4: “region of circumferential” should apparently read --region of the circumferential--.
In claim 20, line 2: “the pressure field” should apparently read --the stimulating pressure field--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a drive device in claim 1. This element is taught to be, for example, a drive/rotary motor and eccentric mechanism.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 5, and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 recites that the circumferential, length-variable structure forms essentially an entire length of the circumferential side wall. While this language appears in the specification, it is not described nor taught in such a way as to convey possession of the claimed invention. Each of the described embodiments and Figures shows the length-variable structure extending only along a portion of the length of the circumferential side wall between the first and second ends of the cavity. There are numerous other components taught by the specification that are in the way of the support structure extending over a full length of the cavity (e.g., the inner section of the spout, the inner annular element, the inner section of the side wall). There is no teaching or description of how the length-variable structure could supplant these components in such a way as to form an entire length of the circumferential side wall while the device still operates in the same manner.
Claim 5 recites that the circumferential side wall has a substantially pressure-resistant and tensile-resistant rigid section between the circumferential, length-variable structure and the second end of the cavity. While this language appears in the specification, it is not described nor taught in such a way as to convey possession of the claimed invention. The specification teaches that inner annular element 15 can be such a section, as well as closure element 18 and connecting element 42. None of these components are positioned between the circumferential, length-variable structure and the second end of the cavity. The closure element forms the second end of the cavity and so cannot be positioned between the circumferential, length-variable structure and the second end. The inner annular element and the connecting element are positioned between the circumferential, length-variable structure and the first end of the cavity.
Claim 18 recites that the support structure extends essentially over a full length of the cavity. While this language appears verbatim in the specification, it is not described nor taught in such a way as to convey possession of the claimed invention. Each of the described embodiments and Figures shows the support structure extending only along the length of the length-variable structure. There are numerous other components taught by the specification that are in the way of the support structure extending over a full length of the cavity (e.g., the inner section of the spout, the inner annular element, the inner section of the side wall). There is no teaching or description of how the support structure could supplant these components in such a way as to extend over a full length of the cavity while the device still operates in the same manner.
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 1-23 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 1 recites the limitation "the sensitive body part" in line 8. It is not clear which body part is being referred to here, as line 1 of the claim recites multiple parts.
Claim 1 also recites the limitation “essentially continuously circumferential length-variable structure” in lines 16-17. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of continuously circumferential-ness to meet the claim are not clear.
Claim 2 recites the limitation “remains essentially unchanged” in line 4. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of unchanged-ness to meet the claim are not clear. What amount of shape change would be enough to not meet the claim?
Claim 3 recites the limitation “essentially an entire length” in line 3. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of the entire length to meet the claim are not clear. Is 80% of the length enough to meet the claim? What about 90% or 95% or 99%?
Claim 4 recites the limitation “substantially pressure-resistant” in line 4. The term “substantially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of pressure-resistance to meet the claim are not clear.
Claim 5 recites the limitation “substantially pressure-resistant” in line 4. The term “substantially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of pressure-resistance to meet the claim are not clear.
Claim 11 recites the limitation “essentially a same width” in line 2. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of same-ness to meet the claim are not clear. How much difference between the widths can there be while still meeting the claim?
Claim 12 recites the limitation “essentially at a right angle” in line 3. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite angle to meet the claim are not clear. Does an angle of 85 or 95 degrees meet the claim? What about 89 or 91 degrees?
Claim 14 recites the limitation “essentially rigid” in line 5. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of rigidity to meet the claim are not clear.
Claim 16 recites the limitation “essentially at a right angle” in line 3. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite angle to meet the claim are not clear. Does an angle of 85 or 95 degrees meet the claim? What about 89 or 91 degrees?
Claim 18 recites the limitation “essentially over a full length” in line 2. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite amount of the full length to meet the claim are not clear. Is 80% of the length enough to meet the claim? What about 90% or 95% or 99%?
Claim 19 recites the limitation “essentially tube shaped” in lines 2-3. The term “essentially” is a relative term which renders the claim indefinite. The term is 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. The metes and bounds of the requisite shapes to meet the claim are not clear.
Claim 21 recites the limitation “a normal pressure” in lines 2-3. It is not clear if this is intended to refer to the reference pressure previously recited in claim 20 or to be a separate pressure.
Claims 2-23 are rejected by virtue of their dependence upon at least one rejected base claim.
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.
Claims 1, 2, 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Witt (U.S. Pub. No. 2017/0281457 A1).
Regarding claim 1, Witt discloses a stimulation device for stimulating sensitive body parts (Abstract; Figs. 3, 4), the device comprisinq: a pressure field generating device 10 having at least one cavity 12 with a first end 12a and a second end 12b remote from the first end, wherein the cavity is delimited by a circumferential side wall 12c connecting the first end and the second end to one another, and the first end of the cavity having an application opening 8 for placement on the sensitive body part and a drive device 20/22 operable to change a volume of the cavity to generate a stimulating pressure field in the application opening, wherein the cavity is closed on the second end, wherein the second end is moved by the drive device alternately in a first direction of the application opening and in a second direction opposite thereto, wherein at least one section of the circumferential side wall has an essentially continuously circumferential length-variable structure wherein a first distance at any given point between the second end and the first end of the cavity is variable between a minimum value and a maximum value, respectively ([0009]-[0010]; [0031]-[0038]). Witt teaches that the membrane is moved by the drive device between a position with the shortest distance from the application opening and a position with the greatest distance from the application opening. Witt also teaches that the membrane, as well as the entire circumferential side wall, can comprise a soft and flexible material such as silicone (the text says “silicon” but in this context it clearly means silicone). Accordingly, such movement of such a soft/flexible membrane and wall is taken to provide such a length-variable structure for at least one point near the second end of the cavity.
Regarding claim 2, Witt discloses that a shape of the circumferential side wall remains essentially unchanged, other than during an elongation when the distance between the second end and the first end of the cavity changes from the minimum value to the maximum value and a compression when the distance between the second end and the first end changes from the maximum value to the minimum value (Witt’s structure will not have any shape change during operation of the device; further, the claim recites that a shape change can occur during elongation/compression; Witt’s device will also not have any shape change outside of operation).
Regarding claim 6, Witt discloses that the circumferential, length-variable structure is one of arranged adjacent to the second end of the cavity or adjoins the second end of the cavity (Fig. 4; this is exactly where the portion/section of the circumferential wall forming the circumferential, length-variable structure is positioned).
Regarding claim 7, Witt discloses that the circumferential, length-variable structure has an expandable wall which can be expanded, expandable at least in sections, in a longitudinal direction between the first end and the second end of the cavity (formed of soft, flexible material and taken to be expandable in such a way via movement of the membrane).
Regarding claim 8, Witt discloses that the expandable wall comprises elastic material (soft, flexible material such as silicone).
Regarding claim 9, Witt discloses that the expandable wall remains under tension when the first distance between the first end and the second end is at the minimum value (taken to be capable of such, as it comprises a soft, flexible material such as silicone and would stretch back and forth as the membrane is moved back and forth).
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Witt as applied to claim 1 above, and further in view of Pahl et al. (U.S. Pub. No. 2020/0214932 A1; hereinafter known as “Pahl”). Witt discloses the invention as claimed, see rejection supra, and further discloses that the circumferential, length-variable structure is arranged at a second distance from the first end of the cavity, as well as a section 16 between the circumferential, length-variable structure and the first end of the cavity ([0032]; Fig. 4). Witt fails to expressly disclose that this section is a substantially pressure-resistant and tensile-resistant rigid section. Pahl discloses a similar device (Abstract; Fig. 1) comprising a flexible membrane 14/42 connected to a substantially pressure-resistant and tensile-resistant rigid section 16 in order to provide dimensional stability ([0013]; [0059]; [0066]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Witt with such a rigid section, as taught by Pahl, in order to provide dimensional stability.
Allowable Subject Matter
Claims 3, 5, and 18 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(a) and 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 10-17 and 19-23 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: regarding claim 3, none of the prior art of record teaches or reasonably suggests such a device with a circumferential, length-variable structure that forms essentially an entire length of such a circumferential side wall. Regarding claim 5, none of the prior art of record teaches or reasonably suggests such a device with a substantially pressure-resistant and tensile-resistant rigid section between the circumferential, length-variable structure and the second end of the cavity. Regarding claims 10-23, none of the prior art of record teaches or reasonably suggests such a device with a circumferential, length-variable structure that has a zigzag-shaped wall with circumferential wall sections directed alternately inwards and outwards and connected to one another via respective fold lines.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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/THADDEUS B COX/Primary Examiner, Art Unit 3791