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
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1, 3, 6-9, 11-13 and 16-20 are objected to because of the following informalities: at line 3 of claim 1, “memory;” should apparently read –memory; and--; at line 8 of claim 1, “user device;” should apparently read –user device; and--; at line 2 of claim 3, “proximity” should apparently read –and proximity--; at line 6 of claim 6, “condition meet;” should apparently read –condition is met; and--; at line 4 of claim 7, “user device;” should apparently read –user device; and--; at line 8 of claim 7, “a human user of the accessory” should apparently read –the human user--; at line 4 of claim 8, “the accessory;” should apparently read –the accessory; and--; at line 3 of claim 9, “include control signal” should apparently read –include a control signal--; at line 5 of claim 9, “activated;” should apparently read –activated; and--; at line 3 of claim 11, “user device;” should apparently read –user device; and--; at line 2 of claims 12 and 13, “proximity” should apparently read –and proximity--; at line 5 of claim 16, “condition meet;” should apparently read –condition is met; and--; at line 3 of claim 17, “user device;” should apparently read –user device; and--; at line 7 of claim 17, “a human user of the accessory” should apparently read –the human user--; at line 3 of claim 18, “the accessory;” should apparently read –the accessory; and--; at line 2 of claim 19, “include control signal” should apparently read –include a control signal--; at line 5 of claim 19, “activated ;” should apparently read –activated; and--; and at line 6 of claim 20, “user device;” should apparently read –user device; and--. 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 1-19 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 at line 5 recites the limitation "the at least one processor". There is insufficient antecedent basis for this limitation in the claim. (Claim 1 at line 4 only previously recites “a processor”.)
Claim 1 at line 11 recites the limitation "driving the accessory including driving the accessory to perform….". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –driving the accessory includes driving the accessory to perform…--.
At line 12 of claim 1, it is unclear which “the clock information” is being referenced as line 8 of claim 1 recites “one or more clock information”. A suggested amendment is: --the one or more clock information--.
At line 1 of claims 2, 4 and 5, it is unclear which “the clock information” is being referenced as line 8 of claim 1 recites “one or more clock information”. A suggested amendment to claims 2, 4 and 5 is: --the one or more clock information--.
Claim 2 at line 2 recites “…which are associated with each of the one or more alarm clocks”. It is unclear which recited element(s) is/are considered to be “associated with each of the one or more alarm clocks” in claim 2; whether “the clock information,” “activation information,” “the one or more alarm clocks,” or “a predefined condition”.
Claim 4 at line 2 recites “…which are associated with each of the one or more alarm clocks”. It is unclear which recited element(s) is/are considered to be “associated with each of the one or more alarm clocks” in claim 4; whether “the clock information,” “drive signals,” or “one or more predefined sexual stimulation acts”.
Claim 5 at line 3 recites “the driving mode”. It is unclear which “driving mode” is being referenced as line 1 recites “driving modes”.
At line 3 of claim 5, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 11 of claim 1. A suggested amendment to claim 5 is –the one or more predefined sexual stimulation acts--.
Claim 5 at line 4 recites the limitation "the predefined parameters associated with the drive mode". There is insufficient antecedent basis for this limitation in the claim.
Claim 6 at line 3 recites the limitation "the one or more clock information that includes activation information with the predefined condition". There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear what is being “set” with the user device in this limitation; whether it is the activation information or the predefined condition.
At line 7 of claim 6, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 11 of claim 1. A suggested amendment to claim 6 is –the one or more predefined sexual stimulation acts--.
Claim 7 at line 5 recites the limitation "the preset driving mode". There is insufficient antecedent basis for this limitation in the claim.
At line 8 of claim 7, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 11 of claim 1. A suggested amendment to claim 7 is –the one or more predefined sexual stimulation acts--.
At line 9 of claim 7, it is unclear if “one or more predefined parameters associated with the driving mode” is the same as or different than “one or more predefined parameters” recited at line 2 of claim 5, from which claim 7 depends.
Claim 8 at line 3 recites “set the one or more alarm clock information to the accessory from the user device”. It is unclear what recited element is performing the setting or possibly what recited element is being set with the one or more alarm clock information.
Claim 8 at line 4 recites “complete the one or more alarm clock information written into the accessory”. It is unclear, based on this recitation, how alarm clock information is being construed as “completed”.
Claim 8 at line 5 recites the limitation "the one or more alarm clock information written into the accessory". There is insufficient antecedent basis for this limitation in the claim.
Claim 8 at line 6 recites the limitation "the one or more alarm". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –the one or more alarm clocks--.
At line 3 of claim 9, it is unclear if “one or more alarm clock information” is the same as or different than “one or more clock information” recited at line 8 of claim 1.
Claim 9 at line 4 recites the limitation "the user devices". There is insufficient antecedent basis for this limitation in the claim.
Claim 9 at line 4 recites the limitation "the one or more alarm". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –the one or more alarm clocks--.
At line 6 of claim 9, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 11 of claim 1. A suggested amendment to claim 9 is –the one or more predefined sexual stimulation acts--.
Claim 10 at line 3 recites the limitation "the alarm loop". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 at line 4 recites the limitation "the one or more alarm clocks associated with the one or more alarm clock information". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 at line 6 recites the limitation "driving the accessory including driving the accessory to perform….". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –driving the accessory includes driving the accessory to perform…--.
At line 7 of claim 11, it is unclear which “the clock information” is being referenced as line 3 of claim 11 recites “one or more clock information”. A suggested amendment is: --the one or more clock information--.
Claim 12 at line 1 recites the limitation "the activation information". There is insufficient antecedent basis for this limitation in the claim.
At line 1 of claims 14 and 15, it is unclear which “the clock information” is being referenced as line 3 of claim 11 recites “one or more clock information”. A suggested amendment to claims 14 and 15 is: --the one or more clock information--.
Claim 14 at line 2 recites “…which are associated with each of the one or more alarm clocks”. It is unclear which recited element(s) is/are considered to be “associated with each of the one or more alarm clocks” in claim 14; whether “the clock information,” “drive signals,” or “one or more predefined sexual stimulation acts”.
Claim 15 at line 3 recites “the driving mode”. It is unclear which “driving mode” is being referenced as line 1 recites “driving modes”.
At line 3 of claim 15, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 6 of claim 11. A suggested amendment to claim 15 is –the one or more predefined sexual stimulation acts--.
Claim 15 at line 4 recites the limitation "the predefined parameters associated with the drive mode". There is insufficient antecedent basis for this limitation in the claim.
Claim 16 at line 2 recites the limitation "the one or more clock information that includes activation information with the predefined condition". There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear what is being “set” with the user device in this limitation; whether it is the activation information or the predefined condition.
At line 2 of claim 16, it is unclear if “activation information” is the same as or different than “the activation information” recited at line 1 of claim 12 from which claim 16 depends.
Claim 16 at line 3 recites the limitation "the predefined condition". There is insufficient antecedent basis for this limitation in the claim.
At line 6 of claim 16, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 6 of claim 11. A suggested amendment to claim 16 is –the one or more predefined sexual stimulation acts--.
Claim 7 at line 4 recites the limitation "the preset driving mode". There is insufficient antecedent basis for this limitation in the claim.
At line 7 of claim 17, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 6 of claim 11. A suggested amendment to claim 17 is –the one or more predefined sexual stimulation acts--.
At line 8 of claim 17, it is unclear if “one or more predefined parameters associated with the driving mode” is the same as or different than “one or more predefined parameters” recited at line 2 of claim 15, from which claim 17 depends.
Claim 18 at line 2 recites “setting the one or more alarm clock information to the accessory from the user device”. It is unclear what recited element is performing the setting or possibly what recited element is being set with the one or more alarm clock information.
Claim 18 at line 3 recites “completing the one or more alarm clock information written into the accessory”. It is unclear, based on this recitation, how alarm clock information is being construed as “completed”.
Claim 18 at line 3 recites the limitation "the one or more alarm clock information written into the accessory". There is insufficient antecedent basis for this limitation in the claim.
Claim 18 at line 5 recites the limitation "the one or more alarm". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –the one or more alarm clocks--.
At line 2 of claim 19, it is unclear if “one or more alarm clock information” is the same as or different than “one or more clock information” recited at line 3 of claim 11.
Claim 19 at line 4 recites the limitation "the one or more alarm". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –the one or more alarm clocks--.
At line 6 of claim 19, it is unclear if “one or more predefined sexual stimulation acts” is the same as or different than “one or more predefined sexual stimulation acts” recited at line 6 of claim 11. A suggested amendment to claim 19 is –the one or more predefined sexual stimulation acts--.
Claim 20 at line 7 recites the limitation "the one or more alarm clocks". There is insufficient antecedent basis for this limitation in the claim.
Claim 20 at line 9 recites the limitation "driving the accessory including driving the accessory to perform….". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is –driving the accessory includes driving the accessory to perform…--.
At line 10 of claim 20, it is unclear which “the clock information” is being referenced as line 6 of claim 20 recites “one or more clock information”. A suggested amendment is: --the one or more clock information--.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 essentially mirrors claim 12 and therefore does not further limits its subject matter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ludlow et al. (U.S. Pub. No. 2014/0276270). Regarding claim 1, Ludlow et al. (hereinafter Ludlow) teaches a system, comprising: an accessory control module, comprising computer-executable code stored in non-volatile memory; and a processor ([0080]-[0083], [0091], [0105]);
wherein, the computer-executable code, when operating on the at least one processor, cause the system to:
connect an accessory (stimulators) with a user device (smart phone) of a human user (via wireless communication - [0080]-[0081], [0105], [0059], [0077]);
set one or more alarm clock information using the user device ([0105] and [0130]); and
drive the accessory when one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory includes driving the accessory to perform one or more predefined sexual stimulation acts (vibration, which is deemed a sexual stimulation act) to stimulate the human user based on the clock information ([0080]-[0082], [0087], [0104]-[0106], [0059], [0075]).
Regarding claims 2 and 3, the one or more clock information includes activation information for activating the one or more alarm clocks in a predefined condition, which are associated with each of the one or more alarm clocks, wherein, the activation information for activating the one or more alarm clocks includes at least one of location information, time information, proximity communication information (“time information” – [0130]-[0132]; wherein the time information could be a delay based on sensor input - [0084], [0105] and [0127]; or “proximity communication information” such as information from an accelerometric movement sensor - [0017] and [0059]).
Regarding claim 4, the one or more clock information includes drive signals for the one or more predefined sexual stimulation acts, which are associated with each of the one or more alarm clocks (vibration is induced via signals [0018], [0103], [0107], [0130]).
Regarding claim 5 and in view of its indefinite nature, the one or more clock information includes driving modes for driving the accessory in response of one or more predefined parameters; wherein, driving the accessory includes driving the accessory in the driving mode to perform one or more predefined sexual stimulation acts to stimulate the human user based on the predefined parameters associated with the driving mode (this limitation is construed as the clock information including data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130]).
Regarding claim 6 and in view of its indefinite nature, the computer-executable code, when operating on the at least one processor, further cause the system to:
set the one or more alarm clock information that includes activation information with the predefined condition using the user device (construed as setting to initiate swallowing on a periodic basis to inhibit/prevent drooling/aspiration [0130]);
activate the one or more alarm clocks associated with the one or more alarm clock information when the predefined condition is met; and drive the accessory to perform one or more predefined sexual stimulation acts when the one or more alarm clocks associated with the one or more alarm clock information are activated ([0084]: “For example, if a breathing sensor senses that a subject is breathing in, stimulation may be delayed (e.g., until the subject stops breathing in or is breathing out) to reduce the risk of aspiration from swallowing and breathing in at the same time. For example, if a heart rate sensor senses that a subject diastole, stimulation may be delayed until the subject is systole, or vice versa. Stimulation coordination may be useful, for example when the device 150 is in automatic mode, for example when the subject has little or no control over when the elicitation of swallowing may occur.”).
Regarding claim 7 and in view of its indefinite nature, the computer-executable code, when operating on the at least one processor, further cause the system to:
set the one or more alarm clock information that includes driving modes for driving the accessory in response of one or more predefined parameters using the user device; and
drive the accessory in the preset driving mode when the one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory in the preset driving mode includes driving the accessory to perform one or more predefined sexual stimulation acts to stimulate a human user of the accessory based on one or more predefined parameters associated with the driving mode (these limitations are construed as setting/programming the clock information - [0090], [0105], [0132], wherein the clock information can include data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130]).
Regarding claim 8 and in view of its indefinite nature, the computer-executable code, when operating on the at least one processor, further cause the system to:
set the one or more alarm clock information to the accessory from the user device; complete the one or more alarm clock information written into the accessory (these limitations being construed as setting/programming the clock information - [0090], [0105], [0132]); and
drive the accessory based on the one or more alarm clock information written into the accessory when the one or more alarm associated with the one or more alarm clock information are activated ([0130] – swallowing is initiated by the vibrational stimulators based on the clock information, which can include data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130].
Regarding claim 9 and in view of its indefinite nature, the computer-executable code, when operating on the at least one processor, further cause the system to:
set one or more alarm clock information that include a control signal using the user device (this limitation is construed as setting/programming the clock information - [0090], [0105], [0132]) via the user device/smart phone [0081], [0105]);
send the control signal to the accessory from the user device when the one or more alarm clocks associated with the one or more alarm clock information are activated; and drive the accessory based on the control signal to perform one or more predefined sexual stimulation acts to stimulate the human user (a signal, originating from a sensor and the phone for instance, activates the stimulator to vibrate ([0084] and [0130]).
Regarding claim 10 and in view of its indefinite nature, the one or more alarm clock information includes at least one selected from the group of a ring duration of the one or more alarm clocks, a number of alarm repeats, an interval time of the alarm loop, and combinations thereof (“an interval time” [0130] and [0090]).
Regarding claim 11, Ludlow teaches a method, comprising:
connecting an accessory (stimulators) with a user device (smart phone) of a human user (via wireless communication - [0080]-[0081], [0105], [0059], [0077]);
setting one or more alarm clock information using the user device ([0105] and [0130]); and
driving the accessory when the one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory includes driving the accessory to perform one or more predefined sexual stimulation acts to stimulate the human user based on the clock information (the “driving” limitations not being required by the claim due to the conditional phrase of “when the one or more alarm clocks…are activated”).
Regarding claims 12 and 13, the one or more clock information includes activation information for activating the one or more alarm clocks, wherein, the activation information for activating the one or more alarm clocks includes at least one of location information, time information, proximity communication information (“time information” – [0130]-[0132]; wherein the time information could be a delay based on sensor input - [0084], [0105] and [0127]; or “proximity communication information” such as information from an accelerometric movement sensor - [0017] and [0059]).
Regarding claim 14, the one or more clock information includes drive signals for the one or more predefined sexual stimulation acts, which are associated with each of the one or more alarm clocks (vibration is induced via signals [0018], [0103], [0107], [0130]).
Regarding claim 15 and in view of its indefinite nature, the one or more clock information includes driving modes for driving the accessory in response of one or more predefined parameters; wherein, driving the accessory includes driving the accessory in the driving mode to perform one or more predefined sexual stimulation acts to stimulate the human user based on the predefined parameters associated with the driving mode (this limitation is construed as the clock information including data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130]).
Regarding claim 16 and in view of its indefinite nature, the method further comprises:
setting the one or more alarm clock information that includes activation information with the predefined condition using the user device (construed as setting to initiate swallowing on a periodic basis to inhibit/prevent drooling/aspiration [0130]);
activating the one or more alarm clocks associated with the one or more alarm clock information when the predefined condition is met; and driving the accessory to perform one or more predefined sexual stimulation acts when the one or more alarm clocks associated with the one or more alarm clock information are activated ([0084]: “For example, if a breathing sensor senses that a subject is breathing in, stimulation may be delayed (e.g., until the subject stops breathing in or is breathing out) to reduce the risk of aspiration from swallowing and breathing in at the same time. For example, if a heart rate sensor senses that a subject diastole, stimulation may be delayed until the subject is systole, or vice versa. Stimulation coordination may be useful, for example when the device 150 is in automatic mode, for example when the subject has little or no control over when the elicitation of swallowing may occur.”). Of note, while the steps of “activating” and “driving” are taught as disclosed above, they are not positively recited by claim 16.
Regarding claim 17 and in view of its indefinite nature, the method further comprises:
setting the one or more alarm clock information that includes driving modes for driving the accessory in response of one or more predefined parameters using the user device; and
driving the accessory in the preset driving mode when the one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory in the preset driving mode includes driving the accessory to perform one or more predefined sexual stimulation acts to stimulate a human user of the accessory based on one or more predefined parameters associated with the driving mode (these limitations are construed as setting/programming the clock information - [0090], [0105], [0132], wherein the clock information can include data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130]).
Regarding claim 18 and in view of its indefinite nature, the method further comprises:
setting the one or more alarm clock information to the accessory from the user device; completing the one or more alarm clock information written into the accessory (these limitations being construed as setting/programming the clock information - [0090], [0105], [0132]); and
driving the accessory based on the one or more alarm clock information written into the accessory when the one or more alarm associated with the one or more alarm clock information are activated ([0130] – swallowing is initiated by the vibrational stimulators based on the clock information, which can include data for pulsing the stimulator at a particular rate, to last for a particular interval, to produce vibrations at a desired frequency or frequencies and/or pressure as disclosed at [0130] (though not positively recited due to recitation of “when the one or more alarm….are activated”).
Regarding claim 19 and in view of its indefinite nature, the method further comprises:
setting one or more alarm clock information that include a control signal using the user device (this limitation is construed as setting/programming the clock information - [0090], [0105], [0132]) via the user device/smart phone [0081], [0105]);
sending the control signal to the accessory from the user device when the one or more alarm clocks associated with the one or more alarm clock information are activated; and driving the accessory based on the control signal to perform one or more predefined sexual stimulation acts to stimulate the human user (a signal, originating from a sensor and the phone for instance, activates the stimulator to vibrate ([0084] and [0130]).
Regarding claim 20, Ludlow teaches a non-transitory computer-readable storage medium, comprising: machine-readable instructions, the machine-readable instructions when executed by a processor of a controller ([0080]-[0083], [0091], [0105]), enable the controller to:
connect an accessory (stimulators) with a user device (smart phone) of a human user (via wireless communication - [0080]-[0081], [0105], [0059], [0077]);
set one or more alarm clock information using the user device ([0105] and [0130]); and
drive the accessory when one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory includes driving the accessory to perform one or more predefined sexual stimulation acts (vibration, which is deemed a sexual stimulation act) to stimulate the human user based on the clock information ([0080]-[0082], [0087], [0104]-[0106], [0059], [0075]).
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 1-4, 8-14 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, 10-12 and 15-17 of U.S. Patent No. 11,793,712. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of the patent disclose:
a system, comprising: an accessory control module, comprising computer-executable code stored in non-volatile memory; a processor; wherein, the computer-executable code, when operating on the at least one processor, cause the system to: connect an accessory with a user device of a human user; set one or more alarm clock information using the user device; drive the accessory when one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory including driving the accessory to perform one or more predefined sexual stimulation acts to stimulate the human user based on the clock information;
a method, comprising: connecting an accessory with a user device of a human user; setting one or more alarm clock information using the user device; driving the accessory when the one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory including driving the accessory to perform one or more predefined sexual stimulation acts to stimulate the human user based on the clock information; and
non-transitory computer-readable storage medium, comprising: machine-readable instructions, the machine-readable instructions when executed by a processor of a controller, enable the controller to: connect an accessory with a user device of a human user; set one or more alarm clock information using the user device; drive the accessory when the one or more alarm clocks associated with the one or more alarm clock information are activated; wherein, driving the accessory including driving the accessory to perform one or more predefined sexual stimulation acts to stimulate the human user based on the clock information.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent No. 6,436,029; U.S. Pub. No. 2019/0167514; U.S. Pub. No 2009/0318753; and U.S. Pub. No. 2013/0165747.
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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
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