DETAILED ACTION
Claims 1-5, 7-9, 13-15, 17-24 are pending. Claims 20-24 are amended.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 16, 2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on March 16, 2026. As directed by the amendment: claims 20-24 have been amended. Thus, claims 1-5, 7-9, 13-15, 17-24 are presently pending in this application with claims 13-15 and 17-19 being withdrawn from consideration.
Applicant’s amendment to the claims has overcome the 35 USC §112(b) rejections.
Applicant’s amendments have not overcome the 35 USC §103 rejections.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Henderson does not provide any evidence or reasoning to support the functional capability of its insert without adhesive backing. The Examiner respectfully disagrees. The Examiner is not taking the intimate device itself from Henderson, but rather, the concept of removability from a gusset. Thus, the inclusion of adhesive in Henderson is immaterial because the Examiner is maintaining the insert of Dye, but merely providing removability. In response to applicant's argument that Henderson includes adhesive the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Even if the Examiner were to take the entire structure of the intimate device 100 from Henderson, para. 0035 details that the intimate device 100 may be utilized, successfully, without the requirement of an adhesive because it may be utilized within a gusset.
Next Applicant argues that the material 24 of Dye is permanently stitched and fastened to the privacy garment and that removing the stitching of the garment in Dye would render it inoperable. While the Examiner recognized that in Dye the layer 24 is stitched, the Examiner finds no support that removing the stitching of Dye would render it inoperable for its intended purpose, which is to provide a visual privacy garment that present a smooth appearance over the vaginal area (Dye, Abstract). As detailed in the rejection, permitting the layer 24 to be removable would provide the benefit of permitting the insert to be cleaned, and reused in either the same or different garment (see para. 0036, Henderson, para. 0017, Dye describing use in different garments). Henderson promotes that providing a removable insert would not render Dye inoperable for its intended purpose because Henderson has a similar purpose, to conceal the genitalia of a user (Henderson, abstract).
Next, Applicant argues that neither Henderson nor Laurie teach an insert that can be operatively connected to a storage apparatus. The Examiner disagrees. Henderson explicitly states that the intimate device 100 can be inserted into a gusset 305 without the use of adhesive (para. 0035, Henderson). In response to applicant's argument that Henderson nor Laurie do not solve the problem of use in swimwear and loss of function in moist environments, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Next, Applicant argues that the Examiner aims to modify Dye with the dimensions recited in Hook. The Examiner has not modified Dye with the dimension in Hook. Hook is only utilized as evidence that silicone and neoprene are equivalent materials. Thus, this argument is unpersuasive.
Applicant argues that the examiner cannot “pick and choose” elements without demonstrating the motivation to combine them “in the same way and through the same methods” to achieve the same special technical benefits. Initially, the examiner has provided motivation for each modification. Next, it is unclear what is meant by combining the references “in the same way and through the same methods”. The application is a single application so combining references “in the same way” is unclear. The same way as what? Finally, the recitation of special technical benefits is unclear as this appears to be similar language to special technical features, which is applicable in PCT applications. This statement appears to be attorney argument.
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 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.
Claims 1-5, 7-9, 21, 23, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dye (US 20100175170) in view of Henderson (US 20230248078) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758).
Regarding claim 1, Dye describes a privacy insert apparatus (layer 24) which is operatively connected to a storage apparatus (panel 12, layer 20),
wherein the dimensions of the privacy insert apparatus are defined to allow the privacy insert apparatus to fit securely inside of a storage apparatus (fits within 12, 20),
wherein the privacy insert apparatus has a wider front-facing portion and thinner back-facing portion, wherein the wider front-facing portion of the privacy insert apparatus extends to conceal anatomical lines (see annotated Fig. 3).
Dye does not explicitly describe that the insert has a surface that enables the privacy insert apparatus to slide in and out of a storage apparatus.
In related art for privacy apparatuses Henderson describes an insert 100 that is removable from a pocket (para. 0035, 0036).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the insert and storage apparatus of Dye to be removable in order to permit the insert to be cleaned, and reused in either the same or different garment (see para. 0036, Henderson, para. 0017, Dye describing use in different garments).
Dye as modified does not explicitly describe wherein the back-facing portion decreases in width approaching the edges and wherein a privacy insert apparatus comprises silicone.
In related art for privacy inserts, Laurie describes wherein the back-facing portion decreases in width approaching the edges (see Figs. 6A and 6B depicting tapering) and wherein a privacy insert apparatus comprises silicone (silicone, para. 0045).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the insert of Dye to have tapered edges in order to assist in providing concealment. That is, with tapered edges the appearance of a separate insert would be limited as compared to an insert with sharp edges. It further would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the insert to be formed of silicone as such a modification is a simple substitution of one element (neoprene) for another (silicone) to obtain predictable results. That is, one substituting neoprene for silicone would understand the result, as evidenced by Hook which describes that the insert can be neoprene or silicone (see para. 0020, Hook).
Dye as modified does not explicitly describe
wherein the edges of the privacy insert apparatus have a thickness of between 0.2 mm and 3.0 mm.
However, the only difference between the prior art and the claims is a recitation of relative dimensions. The application under review provides no criticality for any of the claimed ranges, and thus legal precedent as a standalone reasoning may be utilized (MPEP 2144.04). A device having the claimed relative dimensions would not have performed differently than that of Dye and thus the claim is not considered patentably distinct from Dye (see MPEP 2144.04(IV)(A)). That is, the insert of Dye as modified with tapering, but with an unknown exact edge thickness would still provide the same coverage properties as discussed in the specification absent persuasive evidence to the contrary. Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the insert of Dye to have such a thickness to provide minimal impact to the shape of the undergarment and to provide comfort along the edges of the insert.
Dye as modified does not explicitly describe
wherein the length of the privacy insert apparatus is between 7.6 cm and 17.7 cm.
However, the only difference between the prior art and the claims is a recitation of relative dimensions. The application under review provides no criticality for any of the claimed ranges, and thus legal precedent as a standalone reasoning may be utilized (MPEP 2144.04). A device having the claimed relative dimensions would not have performed differently than that of Dye and thus the claim is not considered patentably distinct from Dye (see MPEP 2144.04(IV)(A)). That is, the insert of Dye with unknown length would still provide the same coverage properties as discussed in the specification absent persuasive evidence to the contrary as Dye is utilized for the same reasons (see para. 0012). Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the length to be as claimed in order to provide coverage to prevent a “cameltoe” appearance (see present application, para. 0055, Dye, para. 0012).
Dye as modified does not explicitly describe
wherein the width of the privacy insert apparatus is between 2.5 cm and 12.7 cm.
However, the only difference between the prior art and the claims is a recitation of relative dimensions. The application under review provides no criticality for any of the claimed ranges, and thus legal precedent as a standalone reasoning may be utilized (MPEP 2144.04). A device having the claimed relative dimensions would not have performed differently than that of Dye and thus the claim is not considered patentably distinct from Dye (see MPEP 2144.04(IV)(A)). That is, the insert of Dye with unknown length would still provide the same coverage properties as discussed in the specification absent persuasive evidence to the contrary as Dye is utilized for the same reasons (see para. 0012). Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the width to be as claimed in order to provide coverage to prevent a “cameltoe” appearance (see present application, para. 0055, Dye, para. 0012).
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Regarding claim 2, Dye as modified describes privacy insert apparatus of claim 1, wherein the silicone is a medical grade silicone (is utilized in a garment and thus is considered medical grade inasmuch as claimed).
Regarding claim 3, Dye as modified describes the privacy insert apparatus of claim 1, wherein forming the shape and size of the privacy insert apparatus comprises (what follows is a recitation of product-by-process) pouring a liquid silicone into a pre-made mold (patentable weight has only been given to the structure of the end product, not to the method of manufacture. The end product being considered a privacy insert. Manufacturing steps such as pouring, spraying, heating, are not given patentable weight in the claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.).
Regarding claim 4, Dye as modified describes privacy insert apparatus of claim 3, wherein the liquid silicone is formed by (what follows is a recitation of product-by-process limitations) mixing a silicone base material with a crosslinker, subsequently adding catalysts and additives to create a final mixture, and stirring the final mixture until the final mixture is homogeneous (patentable weight has only been given to the structure of the end product, not to the method of manufacture. The end product being considered a privacy insert. Manufacturing steps such as pouring, mixing, spraying, heating, are not given patentable weight in the claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.)..
Regarding claim 5, Dye as modified describes the privacy insert apparatus of claim 3, wherein the liquid silicone is a medical grade liquid silicone (is considered medical grade silicone inasmuch as claimed as it is in contact with the user’s body), wherein the medical grade liquid silicone is formed by (what follows is a recitation of product-by-process) mixing a silicone base material with a crosslinker, subsequently adding catalysts and additives to create a final mixture, and stirring and heating the final mixture until the final mixture is homogeneous (patentable weight has only been given to the structure of the end product, not to the method of manufacture. The end product being considered a privacy insert. Manufacturing steps such as pouring, mixing, spraying, heating, are not given patentable weight in the claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.).
Regarding claim 7, Dye describes the privacy insert apparatus of claim 1, wherein the privacy insert apparatus is comprised of silicone (silicone, para. 0020, Laurie) and one of thermoplastic polyurethane, thermoplastic copolyester, styrenic block copolymer, polyether block amide, polyurethane (polyurethane, para. 0045, Laurie), liquid silicone rubber, neoprene, polyvinyl chloride, or nitrile.
Regarding claim 8, Dye as modified describes privacy insert apparatus of claim 1, wherein the middle of the privacy insert apparatus is the thickest portion, and wherein the edges taper out and become thinner (as modified, the edges taper and thus are thinner).
Regarding claim 9, Dye as modified describes the privacy insert apparatus of claim 1, wherein the middle portion of the privacy insert apparatus has a thickness of between 1.0 mm and 6.0 mm (1/32 to 1/16 of an inch, 0.8 mm to 1.6 mm which overlaps the range claimed and thus is prima facie obvious, para. 0016).
Regarding claim 21, Dye as modified describes the privacy insert apparatus of claim 1, wherein the privacy insert apparatus is configured to slide in and out of a storage apparatus (removable, Henderson, is configured inasmuch as claimed, formed of the same materials as the claimed apparatus and thus is capable of performing in the same manner), wherein the material of the storage apparatus comprises at least one of the properties of durability, elasticity, quick-dry (quick drying, para. 0015), ultraviolet resistance, or chlorine resistance.
Regarding claim 23, Dye as modified describes the privacy insert apparatus of claim 1, describe wherein the privacy insert apparatus is configured to slide in and out of a storage apparatus (removable, Henderson, is configured inasmuch as claimed, formed of the same materials as the claimed apparatus and thus is capable of performing in the same manner), but does not explicitly wherein the length of the storage apparatus is between 7.62 cm and 22.86 cm.
However, the only difference between the prior art and the claims is a recitation of relative dimensions. The application under review provides no criticality for any of the claimed ranges, and thus legal precedent as a standalone reasoning may be utilized (MPEP 2144.04). A device having the claimed relative dimensions would not have performed differently than that of Dye and thus the claim is not considered patentably distinct from Dye (see MPEP 2144.04(IV)(A)). That is, the storage apparatus of Dye with unknown length would still provide the same enclosure properties as discussed in the specification absent persuasive evidence to the contrary as Dye is utilized for the same reasons (see para. 0012). Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the length to be as claimed in order to provide a place for the insert to be located within.
Regarding claim 24, Dye as modified describes privacy insert apparatus of claim 1, wherein the privacy insert apparatus is configured to slide in and out of a storage apparatus (removable, Henderson, is configured inasmuch as claimed, formed of the same materials as the claimed apparatus and thus is capable of performing in the same manner), but does not explicitly describe wherein the width of the storage apparatus is between 5.08 cm and 17.78 cm.
However, the only difference between the prior art and the claims is a recitation of relative dimensions. The application under review provides no criticality for any of the claimed ranges, and thus legal precedent as a standalone reasoning may be utilized (MPEP 2144.04). A device having the claimed relative dimensions would not have performed differently than that of Dye and thus the claim is not considered patentably distinct from Dye (see MPEP 2144.04(IV)(A)). That is, the storage apparatus of Dye with unknown width would still provide the same enclosure properties as discussed in the specification absent persuasive evidence to the contrary as Dye is utilized for the same reasons (see para. 0012). Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the width to be as claimed in order to provide a place for the insert to be located within an accommodate the width of the insert.
Claim 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dye (US 20100175170) in view of Henderson (US 20230248078) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758), in further view of Krupa (US 20220408848).
Regarding claim 20, Dye as modified describes the privacy insert apparatus of claim 1, wherein the privacy insert apparatus is configured to slide in and out of a storage apparatus (removable, Henderson, is configured inasmuch as claimed, formed of the same materials as the claimed apparatus and thus is capable of performing in the same manner), but does not explicitly describe wherein the material of the storage apparatus is comprised of at least one of nylon, polyester, elastane, polybutylene terephthalate, neoprene, power mesh, or cotton.
In related art for apparatuses, Krupa describes wherein the material of the storage apparatus is comprised of at least one of nylon, polyester, elastane, polybutylene terephthalate, neoprene, power mesh, or cotton (elastane, cotton, para. 0037).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the material of the storage apparatus to be cotton or elastane in order to provide for optimum feminine health and hygiene (para. 0037)
Claims 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dye (US 20100175170) in view of Henderson (US 20230248078) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758), in further view of Beauvais (US 20110036359).
Regarding claim 22. Dye as modified describes the privacy insert apparatus of claim 1, wherein the privacy insert apparatus is configured to slide in and out of a storage apparatus (removable, Henderson, is configured inasmuch as claimed, formed of the same materials as the claimed apparatus and thus is capable of performing in the same manner), wherein the storage apparatus is held together by thread (stitching 28, para. 0014).
Dye does not explicitly describe the thread is one or more of polyester, nylon, or cotton.
In related art for garments, Beauvais describes wherein the thread is one or more of polyester, nylon, or cotton (polyester/cotton blend thread, para. 0041).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the stitching to be made of the thread of Beauvais in order to provide a finished look of the garment (see para. 0031 describing utilizing particular thread for finished look).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Ostrup can be reached on 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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