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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "312, 314a and 314b," according to paragraph [0029] of the disclosure appear to be directed to the same component (“stimulation device(s)”) but are designated with different reference characters, rendering it unclear if they are all directed to a vibrating device or “electrically and thermally conductive element, as disclosed, for instance. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 4, 5 and 7-20 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 4 at line 2 recites the limitation "the user’s body". There is insufficient antecedent basis for this limitation in the claim.
Claim 4 at lines 2-3 recites the limitation "the one or more erogenous zones". There is insufficient antecedent basis for this limitation in the claim.
Claim 5 at lines 1-2 recites the limitation "the first stimulating member and the second stimulating member substantially coupled to each other". There is insufficient antecedent basis for this limitation in the claim.
Claim 7 at line 4 recites “a first threshold angle”. It is unclear this is the same as or different than “a first threshold angle” recited at line 10 of claim 1.
Claim 7 at line 4 recites “a second threshold angle”. It is unclear this is the same as or different than “a second threshold angle” recited at lines 10-11 of claim 1.
Claim 8 at line 8 recites “relatively static”. It is unclear what the term “relatively” imparts to the claim as it can be construed as a term of degree.
Claim 9 at lines 1-2 recites the limitation “the drive member comprising a first arm”. There is insufficient antecedent basis for this limitation in the claim. A suggested amendment is -- the drive member comprises a first arm--.
Claim 10 at line 1 recites the limitation "the first limiting member". There is insufficient antecedent basis for this limitation in the claim.
Claim 10 at line 3 recites the limitation "the retainer member". There is insufficient antecedent basis for this limitation in the claim.
Claim 13 at line 2 recites the limitation "the rotary motion of the first arm". There is insufficient antecedent basis for this limitation in the claim.
Claim 15 at line 7 recites the limitation "the user’s body". There is insufficient antecedent basis for this limitation in the claim.
Claim 15 at line 8 recites the limitation "the one or more erogenous zones". There is insufficient antecedent basis for this limitation in the claim.
Claims 16-20 at line 1 recite the limitation "The wearable massaging device". There is insufficient antecedent basis for this limitation in the claim. A suggested amendment to claims 16-20 is –The massaging device--.
Regarding claim 17, it is unclear what is implied/defined by “orientedly moves”.
Claim 18 at line 2 recites the limitation "the movement of the first stimulating member". There is insufficient antecedent basis for this limitation in the claim.
Claim 19 at line 2 recites the limitation "the movement of the second stimulating member". There is insufficient antecedent basis for this limitation in the claim.
Claim 20 appears to have several grammatical errors which render it indefinite. For instance, “the second stimulating member inserts the user’s body” (perhaps -- the second stimulating member is configured to be inserted into…--); and “there by resulting the second stimulating member is configured”.
Claim 20 at line 2 recites the limitation "the user’s body". There is insufficient antecedent basis for this limitation in the claim.
Claim 20 at line 2 recites the limitation "the movement of the first stimulating member". There is insufficient antecedent basis for this limitation in the 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 15-18 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dickinson (U.S. Pub. No. 2022/0257457). Regarding claim 1, Dickinson teaches a massaging device for inducing sexual stimulation, comprising:
a first stimulating member 108 (Figs. 1 and 15 and [0033]);
a second stimulating member 105 comprising a drive member, the drive member comprising a first arm 215/210 and a second arm 212 (Figs. 2-3C); and
an actuator 202 operatively coupled to the drive member via pivot beam 215 (Figs. 2-3C and [0036]), the actuator 202 configured to induce a rotary motion to the drive member for operating the first stimulating member 108 in a plurality of stimulation modes (as shown in progression of Figs. 3A-3C); and
wherein the first arm 215/210 is oriented at a predefined angle relative to the second arm 212, and wherein the predefined angle between the first arm and the second arm facilitates the first and second stimulating members 108/105 to operate between a first threshold angle and a second threshold angle while the drive member is operated in the rotary motion ([0035]-[0036]; and as shown in the progression of Figs. 3A-3C, orienting the angle of the second arm 212 relative to the first arm 215/210 would change the angle between the first stimulating member 108 and the second stimulating member 105).
Regarding claim 2, the actuator 202 is positioned in the second stimulating member 105 and coupled to the second arm 212 via pivot beam 215 (Figs. 3A-3C and [0036]).
Regarding claim 3, in an alternate interpretation of the first stimulating member and the second stimulating member, wherein the first stimulating member is construed as 105 and the second stimulating member as pivot beam 215, a first arm 210 of pivot beam 215 is configured to enable a coupling between the first stimulating member 105 and the second stimulating member 105 (“soft silicone sheath” [0043 and [0033]).
Regarding claim 4, the first stimulating member 108 is adapted to be placed outside the user's body and be in contact with glans region of the one or more erogenous zones [0033], and the second stimulating member 105 is adapted to be insertable at least within a vaginal area and a prostate region of the one or more erogenous zones ([0033]-[0044] and Fig. 1).
Regarding claim 5, the first stimulating member 108 and the second stimulating member 105 coupled to each other substantially forms at least one of a V-shaped configuration and an L-shaped configuration (see Figs. 1, 3C and 15).
Regarding claim 6, the plurality of stimulation modes comprises a first stimulation mode, a second stimulation mode, and a third stimulation mode (Figs. 3A, 3B and 3C, for instance).
Regarding claim 15, Dickinson teaches a massaging device for inducing sexual stimulation, comprising:
a first stimulating member 108 (Figs. 1 and 15 and [0033]);
a second stimulating member 105 comprising a drive member, the drive member comprising a first arm 215/210/212 (Figs. 2-3C); and
an actuator 202 operatively coupled to the drive member via pivot beam 215 (Figs. 2-3C and [0036]), the actuator 202 configured to induce a power output to the drive member for operating the first stimulating member 108 (as shown in progression of Figs. 3A-3C and [0036]); and
wherein the first stimulating member 108 is adapted to be placed outside the user's body and be in contact with glans region of the one or more erogenous zones [0033], and the second stimulating member 105 is adapted to be insertable at least within a vaginal area and a prostate region of the one or more erogenous zones ([0033]-[0044] and Fig. 1).
Regarding claim 16, the first stimulating member 108 is a flat shape as shown in Fig. 1.
Regarding claim 17, and in view of its indefinite nature, the orientation changes between the first stimulating member 108 and the second stimulating member 105 due to the actuator 202 inducing the rotary motion to the drive member 215/210/212 as shown in the progression of Figs. 3A-3C ([0035]-[0037]).
Regarding claim 18, the second stimulating member 105 is configured to move towards the first stimulating member 108 (as shown in the progression of Figs. 3A-3C) as the movement of the first stimulating member 108 is hindered (as it is stationary) [0033].
Regarding claim 20 and in view of its indefinite nature, the second stimulating member 105 is configured to be inserted into the user's body [0033], the movement of the first stimulating member 108 is hindered as the user is sitting (as it is stationary) [0033], there by resulting the second stimulating member 105 is configured to move towards the first stimulating member 108 (as shown in the progression of Figs. 3A-3C).
Claims 8, 9, 14, 15 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sedic (U.S. Patent No. 11,071,681). Regarding claim 8, Sedic teaches a massaging device for inducing sexual stimulation, comprising:
a first stimulating member 103 (Figs. 1-2B);
a second stimulating member 101 comprising a drive member 258 (Fig. 1-2B); and
an actuator 260 positioned in the second stimulating member 101 and operatively coupled to the drive member 258, the actuator 260 configured to induce a power output to the drive member 258 for operating at least one of the first stimulating member 103 (col. 3, lines 49-66) and the second stimulating member in a plurality of stimulation modes (col. 4, lines 13-18 and Figs. 3-4), and
wherein the actuator 260 and the second stimulating member 101 remain relatively static as the actuator induces a rotary motion to the drive member (interpreted as actuator 260 and the second stimulating member 101 remaining in place with respect to each other – col. 3, lines 52-56).
Regarding claim 9, the drive member 258 comprises a first arm (top part of 258 above hinged portion - Figs. 2A-B and col. 3, lines 60-66) configured with a retainer member (shell 208) and a second arm (bottom part of 258 below hinged portion - Figs. 2A-B and col. 3, lines 60- 66), and wherein the retainer member (shell 208) of the first arm is secured to a first limiting member 232 configured in the first stimulating member 103 (Fig. 2A and col. 3, lines 21-28), thereby enabling a coupling between the first stimulating member 103 and the second stimulating member 101 (Figs. 1-2B and col. 3, lines 21-28).
Regarding claim 14, the first stimulating member 103 and the second stimulating member 101 are adapted to be in contact with one or more erogenous zones of a user and are adapted to be operable in the plurality of stimulation modes to induce sexual stimulation to the one or more erogenous zones of the user (col. 4, lines 19-59).
Regarding claim 15, Sedic teaches a massaging device for inducing sexual stimulation, comprising:
a first stimulating member 103 (Fig. 2B);
a second stimulating member 101 comprising a drive member 258 (Fig. 2B); and
an actuator 260 operatively coupled to the drive member (Fig. 2B), the actuator 260 configured to induce a power output to the drive member for operating the second stimulating member 101 (col. 3, lines 49-66), and
wherein the first stimulating member 103 is adapted to be placed outside the user's body and be in contact with glans region of the one or more erogenous zones, and the second stimulating member 101 is adapted to be insertable at least within a vaginal area and a prostate region of the one or more erogenous zones (col. 4, lines 19-59).
Regarding claim 17, and in view of its indefinite nature, the orientation changes between the first stimulating member 103 and the second stimulating member 101 due to the actuator 260 inducing the power output to the drive member 258 as shown in the progression of Figs. 3-4.
Regarding claim 18, the second stimulating member 101 is configured to move towards the first stimulating member 103 (as shown in the progression of Figs. 3-4) as the movement of the first stimulating member 103 is hindered (as it can remain stationary).
Regarding claim 19, the first stimulating member 103 is configured to move towards the second stimulating member 101 as the movement of the second stimulating member is hindered (due to the flexibility of first stimulating member 103 – col. 2, lines 60-67 – col. 3, lines 1-10).
Allowable Subject Matter
Claims 10-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 1-7, 15 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8 of U.S. Patent No. 11,801,196. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the patent disclose:
a massaging device for inducing sexual stimulation, comprising: a first stimulating member; a second stimulating member comprising a drive member, the drive member comprising a first arm and a second arm; and an actuator operatively coupled to the drive member, configured to induce a rotary motion to the drive member for operating at least one of the first stimulating member and the second stimulating member in a plurality of stimulation modes; and wherein the first arm is oriented at a predefined angle relative to the second arm, and wherein the predefined angle between the first arm and the second arm facilitates the first and second stimulating members to operate between a first threshold angle and a second threshold angle while the drive member is operated in the rotary motion; and
a massaging device for inducing sexual stimulation, comprising: a first stimulating member; a second stimulating member comprising a drive member; and an actuator operatively coupled to the drive member, the actuator configured to induce a power output to the drive member for operating at least one of the first stimulating member and the second stimulating member, and wherein the first stimulating member is adapted to be placed outside the user's body and be in contact with glans region of the one or more erogenous zones, and the second stimulating member is adapted to be insertable at least within a vaginal area and a prostate region of the one or more erogenous zones.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Pub. No. 2007/0179336; U.S. Pub. No. 2009/0069730; and U.S. Pub. No. 2018/0289585.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE HOPKINS MATTHEWS whose telephone number is (571)272-9058. The examiner can normally be reached Monday - Friday, 7:30 am - 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
Prosecution Insights