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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
The “DETAILED DESCRIPTION OF THE INVENTION” requires revision. The term “thru” should be “through”. Nouns require proper articles of speech, “a”, “an”, and “the”. For example, “Casing of plastic 1 holds small/micro water pump 2, inlet pipe 12 goes inside casing to take in water to small/micro water pump 2” should be --A casing of plastic 1 holds a small/micro water pump 2. An inlet pipe 12 goes inside the casing to take in water to the small/micro water pump 2.—
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
Claim 1, line 6 recites “thru” but should read --through--.
Claim 1, line 10 recites “case” but should read --casing--.
Claim 2, line 1 recites “A sex toy as in claim 1” but should read --The sex toy as claimed in claim 1,--.
Appropriate correction is required.
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 and 2 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claims 1 and 2 lack proper articles, “a”, “an”, “the”, that set antecedent basis for the limitations and provide grammatical clarity. Claims 1 and 2 contain grammatical errors, for example, claim 1 states “casing 1 consist of inlet pipe” but should read --casing 1 consists of an inlet pipe--. Other issues include lack of clarity, for example, claim 1 recites “each water stream” in reference to the manual valve and spray nozzle, but the claim never positively recites the “each water stream”, where the “each water stream is connected or how it functions in the device”. Another example of lack of clarity is in lines 12 and 13, where in line 12 recites “bottom surface of casing 1” and line 13 recites “suction to surface”, which makes it unclear if surface is the same as the bottom surface of the casing 1. Additionally, the term “small/micro” have two different interpretations in the art and therefore only one should be used, rendering claim 1 unclear. The examiner is providing examples of issues, but there are additional antecedent basis and lack of clarity issues that can be addressed when the claims are in better condition for examination.
Examiner suggests the following structure for claim 1. Note that the suggested claim structure has not been examined against prior art, but is being presented merely as an example to clarify expectations:
1. A sex toy comprising:
a first and second casing;
at least one stream of water;
the first casing comprises:
a small/micro water pump; an inlet pipe configured to receive water from a water source, wherein an inlet of the small/micro water pump is connected to the inlet pipe; an outlet pipe configured to be connected to an outlet of the small/micro water pump and the at least one stream of water; a manual valve connected to the outlet pipe configured to divert water into a diverter outlet pipe to control the flow of water in the outlet pipe; an electrical connection configured to connect the small/micro water pump to the second case; a suction cup on a surface of the first casing, wherein the suction cup is configured to engage and disengage suction to a surface;
the second casing comprises:
a battery compartment and a power switch, wherein the power switch is configured to control power from the battery compartment to the small/micro water pump through the electrical connection; and
the at least one stream of water comprises;
at least one manual valve configured to adjust the water flow in the at least one stream of water and at least one spray nozzle at the end of the at least one stream of water, wherein the spray nozzle is configured to be adjustable for different spray effects.
Claim 1 uses the term “consists” which means the component as claimed only has the limitations that are listed. Claim 1 recites “casing 2 consist of a battery compartment; on/off switch; electrical wire from small/micro water pump in case 1 to on/off switch in casing 2 for turning on and off water pump” but lacks a power source in the battery compartment and a connection between battery compartment and the on/off switch rendering the claim unclear. The term “comprises” allows for the interpretation of inclusion of components not listed in limitations.
Claim 2 is in a narrative form that recites the limitation “can be” which does not positively recite the limitations that follow, such as “can be moved by hand to point at erogenous areas”, “can be position stationary to stay focus on the part of erogenous area of the body wanting stimulated by stream(s)”, and “can be positioned to point at erogenous areas of a person in different positions whether lying down, kneeling, squatting or standing; in lying down, kneeling, or squatting position...” The term “can be” may be amended with “configured to” to positively recite the limitation, but the specification must provide support as to how the component is configured to accomplish the limitation without adding new matter.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Wang-sik (KR 200326683 Y1) in view of Jillette (US 5920923 A) and further in view of Heilman (US 20090038069 A1).
Regarding claim 1, Wang-sik discloses a sex toy (Abstract, “portable underwater massage device), comprising: two casings (Figure 1 switch “8”, case “5”); the first comprising an inlet pipe for receiving water from a water source (figure 1, suction part “13”) leading into a small/micro water pump contained inside (Figure 1, underwater motor pump “10”); outlet pipe from small/micro water pump where water pumps out from the pump then runs through the rest of outlet pipe (Figure 1, elbow “16”) to a manual valve at beginning of each small stream of water coming off outlet pipe (Figure 1, valve “19”) and the manual valve on each small stream of water near outlet pipe will control the amount of water flow from outlet pipe and into each corresponding water stream leading to their corresponding spray nozzle end (Page 3, “valve 19 to adjust the pressure of the water discharged from the pipe”, Figure 2 nozzle “N1”); electrical wire attaches from small/micro water pump in case 1 to on/off switch in casing 2 for turning on and off water pump (Figure 1); spray nozzle at end of each water stream (Figure 2 nozzle “N1”); and casing 2 comprising electrical wire from small/micro water pump in case 1 to on/off switch in casing 2 for turning on and off water pump (Figure 1).
Wang-sik fails to disclose a manual diverter valve that controls the out flow of water from the pump by diverting the water to a bypass pipe. Jillette discloses a device for stimulating a female with a water stream (Jillette, Abstract), wherein the system comprises a pump (Jillette, Figure 1, “29”) and the water is pumped out an outlet pipe (Jillette, Figure 1, “30”) wherein the outlet pipe comprises a mechanical fluid diverter valve (Jillette, Figure 1, “44”) for diverting water from the outlet pipe to the nozzle (Jillette, Figure 2, “40”). Jillette further discloses the valve is used to control the flow rate to the nozzle (Jillette, Col 4, lines 41-45). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the toy as taught by Wang-Sik, with the outlet pipe comprising a diverter valve to control the flow rate as taught by Jillette, since such a modification would provide the predictable results of providing an additional level of adjustment for the user in combination with manual valve, to provide the correct amount of flow to achieve enjoyment.
Wang-Sik, as modified by Jillette, teaches a device powered by AC power and therefore is silent as to the second casing comprising a battery compartment. Modified Wang-Sik is also silent as to a suction cup on the bottom surface of the casing to engage and disengage suction to surface. Heilman discloses a portable hydro-therapeutic stimulation device for massage therapy to a user's genital region (Heilman, Paragraph [0002]), wherein the battery and power switch are housed in a separate case than the pump system (Heilman, Figure 16, battery pack “59”, sealed waterproof switch “62”) in order to improve portability (Heilman, Paragraph [0064]). Heilman further discloses using suction cups for attaching the device to the bottom of a bath tub (Heilman, Paragraph [0052]). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the toy as taught by modified Wang-Sik, with the second casing comprising the battery compartment and power switch and a suction cup for attaching a device to a bathtub as taught by Heilman, since such a modification would provide the predictable results of increasing the portability of the device (Heilman, Paragraph [0064]).
Regarding claim 2, the limitations preceded by “can be” are not positively recited and therefore do not further limit the claim. As such, modified Wang-Sik discloses each small stream of water has a spray nozzle at the end of stream (Wang-Sik , Figure 2, “N1”) wherein the spray nozzle may also be adjustable for different spray effects (Wang-Sik, Figures 2, 3b, 4a, and 5a show interchangeable nozzles that can provide different spray effects).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang-sik (KR 200338216 Y1) teaches an underwater massager where in each nozzle has a valve for control.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc D Honrath whose telephone number is (571)272-6219. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A Marmor II can be reached at (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/M.D.H./Examiner, Art Unit 3791