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 .
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Status of Claims
Claims 1-5 & 7-11 are pending, of which Claims 1, 2, 7, & 11 are amended. Claim 6 is canceled in the Amendment filed on 6/30/2025. All claims are examined on the merits. No new matter is found.
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, 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heyman (US 2015/0209194).
Re Claim 1, Heyman discloses a method for using a disposable penile sheath configured to contain urinary incontinence after voluntary urination comprising the steps of:
urinating voluntarily through a penis (a male user will at some point urinate voluntarily through a penis; note the limitation does not specify when this urination occurs relative to other claimed steps);
providing a receptacle (hygienic article 10, e.g., Fig. 1), said receptacle being an elongated tube (tube 12) and having an opening (at first end 14) therein being distally positioned relative to a closed end (closed second end 16), an elastic band (retaining portion 20, which is formed by a band of elasticized threads 22, [0063]) being coupled to said receptacle and extending around said opening to selectively expand and contract said opening while maintaining a diameter of said elongated tube between said elastic band and said closed end (e.g., [0063]);
inserting said penis into said receptacle (e.g., [0010] “a tube having a first end adapted to receive a limp penis”) wherein said receptacle contains urinary incontinence after voluntary urination (e.g., [0061] “an absorbent material 18 extending at least within the second end of the tube 12 adapted to absorb fluid”), said elastic band contracting around said penis to secure said receptacle to said penis ([0063] “retaining portion 20 extends around the penis and retains the hygienic article 10 on the penis without substantially constricting blood flow”);
removing said penis from said opening of said receptacle (inherent because [0059] discloses of disposing the receptacle, therefore the receptacle can no longer be worn by the user); and
disposing of said receptacle ([0059] “the hygienic article for a male may be configured such as to be easily disposable”).
Re Claim 2, Heyman discloses claim 1, and further discloses wherein the step of providing a receptacle further includes said receptacle including an exterior layer (breathable material 13, e.g., Fig. 1) and an interior layer (absorbent material 18).
Re Claim 3, Heyman discloses claim 2 and further discloses wherein the step of providing a receptacle further includes said exterior layer comprising a liquid impermeable material (e.g., [0073] “waterproof outer coating”).
Re Claim 4, Heyman discloses claim 2 and further discloses wherein the step of providing a receptacle further includes said interior layer comprising an absorbent material ([0061] “an absorbent material 18 extending at least within the second end of the tube 12 adapted to absorb fluid”).
Re Claim 7, Heyman discloses claim 1 and further discloses wherein the step of providing a receptacle further includes said elastic band having a proximal edge (since the retaining portion 20 is shown to end at the opening at the first end 14) and distal edge (where the last elasticized thread 22, closest to closed end 16, is located) relative to said closed end of said receptacle.
Re Claim 8, Heyman discloses claim 7 and further discloses wherein the step of providing a receptacle further includes said proximal edge being coupled to a peripheral edge of said exterior layer (see Fig. 2 and [0063] where the retaining portion’s elasticized threads 22 are interwoven into the tube/exterior layer, therefore the band/retaining portion is coterminous with the peripheral edge of the exterior layer).
Re Claim 9, Heyman discloses claim 7 and further disclosing wherein the step of providing a receptacle further includes said distal edge being coupled to a perimeter edge of interior layer (see Fig. 2 where the distal edge of the band/retaining portion 20 is touching a perimeter edge of absorbent material layer 18, and since both band/retaining portion 20 and absorbent material 18 are coupled to the exterior layer 13, they are at minimum indirectly coupled to each other).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Heyman.
Re Claim 10, Heyman discloses claim 1 but does not teach wherein the step of providing a receptacle further includes said elastic band comprising an elastomeric material. However, since Heyman utilizes a rubber mix ([0062]), which is an elastomeric material, in giving the exterior layer stretchability, Heyman is already familiar with using elastomeric materials in making the receptacle. Therefore it would be reasonable for one skilled in the art to also utilize an elastomeric/rubber mix material for making the elasticized threads that form the elastic band of the receptacle, as utilizing a material already used in the manufacturing process would simplify the manufacturing and likely reduce waste of materials.
Claims 5 & 11 are rejected under 35 U.S.C. 103 as being unpatentable over Heyman in view of Hill (US 2011/0054428).
Re Claim 5, Heyman discloses claim 4 but does not teach wherein the step of providing a receptacle further includes said interior layer comprising a tissue paper. Hill discloses a male urine sheath comprising an absorbent layer on the inside (inner sheath 26), wherein said sheath includes a tissue wrap ([0020]) to increase the absorbent materials’ structural integrity. It would have been obvious to one skilled in the art at the time of filing to modify with Hill to better keep the absorbent material in place and/or more evenly distributed within the receptacle.
Re Claim 11, Heyman discloses a method for using a disposable penile sheath configured to contain urinary incontinence after voluntary urination comprising the steps of:
urinating voluntarily through a penis (a male user will at some point urinate voluntarily through a penis; note the limitation does not specify when this urination occurs relative to other claimed steps);
providing a receptacle (10), said receptacle being an elongated tube (tube 12) and having an opening (at first end 14) therein being distally positioned relative to a closed end (16), said receptacle including an exterior layer (13) and an interior layer (18), said exterior layer comprising a liquid impermeable material (at least [0073]), said interior layer comprising an absorbent material (18), an elastic band (20) being coupled to said receptacle extending around said opening to selectively expand and contract said opening while maintaining a diameter of said elongated tube between said elastic band and said closed end (e.g., [0063]), said elastic band having a proximal edge (at the opening at first end 14) and distal edge (the elasticized thread 22 located closest to closed end 16) relative to said closed end of said receptacle, said proximal edge being coupled to a peripheral edge of said exterior layer (see Fig. 2 and [0063] where the retaining portion’s elasticized threads 22 are interwoven into the tube/exterior layer, therefore the band/retaining portion is coterminous with the peripheral edge of the exterior layer), said distal edge being coupled to a perimeter edge of interior layer (see Fig. 2 where the distal edge of the band/retaining portion 20 is touching a perimeter edge of absorbent material layer 18, and since both band/retaining portion 20 and absorbent material 18 are coupled to the exterior layer 13, they are at minimum indirectly coupled to each other);
inserting said penis into said receptacle (e.g., [0010]) wherein said receptacle contains urinary incontinence after voluntary urination (by absorbent material 18, [0061]), said elastic band contracting around said penis to secure said receptacle to said penis ([0063]);
removing said penis from said opening of said receptacle (implied in [0059]; and
disposing of said receptacle (e.g., [0059]).
Heyman does not disclose said interior layer comprising a tissue paper. Hill discloses a male urine sheath comprising an absorbent layer on the inside (inner sheath 26), wherein said sheath includes a tissue wrap ([0020]) to increase the absorbent materials’ structural integrity. It would have been obvious to one skilled in the art at the time of filing to modify with Hill to better keep the absorbent material in place and/or more evenly distributed within the receptacle.
Heyman also does not expressly disclose said elastic band comprising an elastomeric material. However, since Heyman utilizes a rubber mix ([0062]), which is an elastomeric material, in giving the exterior layer stretchability, Heyman is already familiar with using elastomeric materials in making the receptacle. Therefore it would be reasonable for one skilled in the art to also utilize an elastomeric/rubber mix material for making the elasticized threads that form the elastic band of the receptacle, as utilizing a material already used in the manufacturing process would simplify the manufacturing and likely reduce waste of materials.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SUSAN S SU/ Primary Examiner, Art Unit 3781
22 October 2025