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 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 2, 3, 9, and 19-21 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 2 recites the limitation “without substantially impeding blood flow” in lines 1-2. 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 amount/percentage of impeding required to meet the claim are not readily determinable.
Claim 3 recites the limitations "the base" and “the penis” in line 1. There is insufficient antecedent basis for these limitations in the claim.
Claim 9 recites the limitation “substantially orthogonal to” in line 1. 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 angle between the two planes are not readily determinable (e.g., is an angle of 85 degrees substantially orthogonal? What about 88 degrees or 75 degrees?).
Claim 19 recites the limitation “the penis” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation “a base of the penis” in line 5. It is not clear if this is intended to refer to the base of the penis previously recites in lines 4-5 of claim 19 or to a separate base.
Claim 21 also recites the limitations "the scrotum" in line 7 and “the root” in line 8. There is insufficient antecedent basis for these limitations in the claim.
Claims 20-21 are rejected by virtue of their dependence upon claim 19.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 3 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 3 recites that “the ring constricts the base of the penis,” which positively recites the human body. Suggested language would be --the ring is configured to constrict--.
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.
Claims 1-4, 10, 11, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR 200424079 Y1), in view of Shaw (U.S. Pub. No. 2017/0348136 A1).
Regarding claim 1, Shin discloses a device for use with human male genitalia (Abstract; Figs. 1-4), the device comprising: a ring 1 and a tether 4 coupled to the ring, the tether having a first end proximal the ring, an anchor end 5/6 opposite the first end and distal the ring, and a body spanning the first end and the anchor end (Figs. 1-4; Tech-Solution, Drawing Description). Shin fails to expressly disclose that the ring and tether are both stretchable. Shaw discloses a similar device (Abstract; Figs. 1A, 2E) comprising a ring 10 and a tether 20, wherein the ring and tether are both stretchable, in order to provide tension and enhance erections ([0007]; [0026]-[0038]). 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 Shin with such a stretchable ring and a stretchable tether, as taught by Shaw, in order to provide tension and enhance erections.
Regarding claim 2, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and further discloses that the ring is sized and shaped to be placed fittingly around a base of a penis of the genitalia to restrict blood flow out of the penis without substantially impeding blood flow into the penis (Shin: “almost stop the outflow of penile vein”; Shaw: [0007], [0027]).
Regarding claim 3, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and further discloses that the ring constricts the base of the penis (Shin: Fig. 1; Shaw: [0007], [0027]).
Regarding claim 4, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and Shin further discloses that the anchor end is sized, shaped, and configured for coupling with an anchor 7 wearable by a user.
Regarding claims 10 and 11, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and Shin further discloses that the anchor end of the tether has a thickness different from a thickness of the body of the tether or a width different from a width of the body of the tether (Fig. 1).
Regarding claims 13-15, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and Shin further discloses an attachment device 5/6 mounted at the anchor end of the tether, wherein the attachment device comprises at least a part of a snap system, a hook-and-loop system, or a hook system, where the attachment device is configured to attach to an anchor 7 mountable on a human user (Fig. 1; the attachment device comprises a hook or hook-and-loop system, as the loop/hole is attachable to hooks worn on the waist belt).
Regarding claims 16 and 17, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and Shin further discloses a system comprising the device of claim 15 and the anchor 7 defined by claim 15, wherein the anchor is mountable at a base of a spine or at a tailbone of the user (Fig. 1).
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shin and Shaw as applied to claim 1 above, and further in view of Fielding (U.S. Pub. No. 2019/0060103 A1).
Regarding claim 5, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, but fails to disclose a stretchable loop attached to the ring; wherein the tether is attached to the loop at the first end of the tether. Fielding discloses a similar device (Abstract; Figs. 1-5) comprising a stretchable ring 110/116 and a stretchable loop 120 attached to the ring in order to secure the device to the user ([0016]-[0019]). 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 combination of Shin and Shaw with such a stretchable loop, as taught by Fielding, in order to further secure the device to the user, as well as to maintain separation between the penis and scrotum (taught by Shaw to provide the perception of the penis having greater length: [0038]). This proposed combination is taken to teach that the tether is attached to the loop at the first end of the tether, as Shin teaches the first end of the tether being attached to a ring at the base of the scrotum, and the modifications of Shaw and Fielding now include the recited ring around the penis and the loop around the scrotum.
Regarding claim 6, the combination of Shin, Shaw, and Fielding discloses the invention as claimed, see rejection supra, and Fielding further discloses that the loop is sized and shaped to encompass a root of a scrotum of the genitalia (Fig. 1; [0017]).
Regarding claim 7, the combination of Shin, Shaw, and Fielding discloses the invention as claimed, see rejection supra, and Fielding further discloses that the loop is sized and shaped for placement of a curved portion of the loop behind the scrotum (Figs. 1, 4; [0017]).
Regarding claim 8, the combination of Shin, Shaw, and Fielding discloses the invention as claimed, see rejection supra, and Fielding further discloses that the loop is U-shaped and opposing ends of the loop are attached at corresponding diametrically opposite sides of the ring (Fig. 4).
Regarding claim 9, the combination of Shin, Shaw, and Fielding discloses the invention as claimed, see rejection supra, and Fielding further discloses that a plane of the loop is substantially orthogonal to a plane of the ring (Fig. 1; as detailed supra, it is not clear what the exact angle between these planes must be; further, the recited planes are arbitrary, and a plane that intersects the loop may be orthogonal to a plane that intersects the ring).
Claims 12, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shin and Shaw as applied to claims 1 and 16 above, and further in view of Garrett (U.S. No. 5,218,974).
Regarding claim 12, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, but fails to expressly disclose that the tether has a width and a thickness so as to fit within a human intergluteal cleft; though Shin and Shaw both strongly imply this. Garrett discloses a similar device (Abstract; Figs. 1-3) comprising a ring and a tether 14, wherein the tether has a width and thickness so as to fit within a human intergluteal cleft in order to simply anchor the device (col. 1, lines 21-29; col. 2, lines 9-15). 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 combination of Shin and Shaw with such tether dimensions, as taught by Garrett, in order to simply anchor the device.
Regarding claim 19, the combination of Shin and Shaw discloses the invention as claimed, see rejection supra, and further discloses attaching the anchor to the user at a base of the spine or the tailbone of the user (Shin: Fig. 1); placing the ring over a head of the penis and sliding the ring down to a base of the penis (Shin: Figs. 1, 2; Shaw: [0007, [0017]-[0018], [0027]); and stretching the tether and attaching the anchor end of the tether to the anchor (Shin; Fig. 1). The combination of Shin and Shaw fails to expressly disclose that the tether is stretched between buttocks of the user; though Shin and Shaw both strongly imply this. Garrett discloses a similar device and method (Abstract; Figs. 1-3) comprising a ring and a tether 14, wherein the tether is stretched between buttocks of the user in order to simply anchor the device (col. 1, lines 21-29; col. 2, lines 9-15). 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 combination of Shin and Shaw so that the tether is between buttocks of the user, as taught by Garrett, in order to simply anchor the device.
Regarding claim 20, the combination of Shin, Shaw, and Garrett discloses the invention as claimed, see rejection supra, and Shaw further discloses that the device is mounted the tether is in tension and pulls on the ring ([0007]; [0027]; [0036]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Shin, Shaw, and Garrett as applied to claim 19 above, and further in view of Fielding. The combination of Shin, Shaw, and Garrett discloses the invention as claimed, see rejection supra, and further discloses steps of sliding the ring down to a base of the penis and stretching the tether between the buttocks (Shin teaches placing the ring over the penis before the tether is attached to the anchor; thus, in the proposed combination, the tether is stretched between the buttocks after sliding the ring down to a base of the penis). The combination of Shin, Shaw, and Garrett fails to teach that the device further comprises a stretchable loop attached to the ring, wherein the tether is attached to the loop at the first end of the tether, and that the method further comprises drawing the loop below testicles of the genitalia and around the scrotum above the testicles so as to encompass the root of the scrotum, wherein this method step occurs after sliding the ring to the base of the penis and before stretching the tether between the buttocks. Fielding discloses a similar device and method (Abstract; Figs. 1-5) comprising a stretchable ring 110/116 and a stretchable loop 120 attached to the ring, wherein the loop is drawn below testicles of the genitalia and around the scrotum above the testicles so as to encompass the root of the scrotum, in order to secure the device to the user ([0016]-[0019]). 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 combination of Shin, Shaw, and Garrett with such a stretchable loop, as taught by Fielding, in order to further secure the device to the user, as well as to maintain separation between the penis and scrotum (taught by Shaw to provide the perception of the penis having greater length: [0038]). This proposed combination is taken to teach that the tether is attached to the loop at the first end of the tether, as Shin teaches the first end of the tether being attached to a ring at the base of the scrotum, and the modifications of Shaw and Fielding now include the recited ring around the penis and the loop around the scrotum. Further, the proposed combination is also taken to either teach the recited order of steps or that this would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. Again, Shin teaches that the last step is attaching the tether to the anchor. The order of attaching the ring vs. the loop could have either go first or second, so the recited order would have been obvious to try (from such a limited supply of two possible orders). Further, the recited order would likely be more comfortable to avoid stretching of the scrotum/testicles.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Claney (U.S. Pub. No. 2016/0206009 A1) teaches a ring that can be placed over the penis, along with a tether that is pulled between the buttocks of the user and attachable to an anchor via a clip. Yong (U.S. No. 5,728,043) teaches a ring that can be placed over the penis, along with tethers pulled under the groin and attachable to a belt on the user’s back. Chapman (U.S. No. 4,643,175) teaches an arc member that applies pressure to the base of the penis to restrict blood flow, along with tethers pulled under the groin and attachable to a clamp member at the user’s back.
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