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 § 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dills (U.S. Pub. No. 2017/0119619). Regarding claim 1, Dills teaches a wearable massager [0008] comprising:
a main body having a bottom portion and a convex portion (see first reproduction of Fig. 9 below), the convex portion being configured to be in contact with an erogenous zone of a user while the wearable massager is being worn [0050],
and the bottom portion having a first surface 13 with a first magnet member 19 disposed therein or thereon (Fig. 9 and [0043]-[0044]); and
a second magnet member 11 having a second surface corresponding to at least a portion of the first surface 13 ([0043]-[0044] and Figs. 7-10), wherein:
the second magnet member 11 is removably attachable to an outer surface of the bottom portion (see second reproduction below of Fig. 9 below) via attraction of the second magnet member 11 to the first magnet member 19 by an attractive force acting in a direction normal to the outer surface of the bottom portion (when hinge section 15 is flipped over as in Fig. 7), and
the main body encases a vibrational component 25 (Fig. 12 and [0048]) and a printed circuit board 23 (Fig. 12 and [0047]).
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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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,839,582. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claim and claim 1 of the patent disclose a wearable massager comprising: a main body having a bottom portion and a convex portion, the convex portion being configured to be in contact with an erogenous zone of a user while the wearable massager is being worn, and the bottom portion having a first surface with a first magnet member disposed therein or thereon; and a second magnet member having a second surface corresponding to at least a portion of the first surface, wherein: the second magnet member is removably attachable to an outer surface of the bottom portion via attraction of the second magnet member to the first magnet member by an attractive force acting in a direction normal to the outer surface of the bottom portion, and the main body encases a vibrational component and a printed circuit board.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent No. 9,889,064; U.S. Patent No. 11,452,669; U.S. Patent No. 12,193,987; U.S. Patent No. 12,201,577; U.S. Patent No. 12,318,340; and U.S. Patent No. 12,350,221.
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.
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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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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
