DETAILED ACTION
Claims 1-5, 7, 8, 13-15, 17-24 are pending. Claims 1, 23, and 24 are amended. Claim 9 is cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 20, 2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on June 20, 2026. As directed by the amendment: claims 1, 23, and 24 have been amended and claim 9 has been cancelled. Thus, claims 1-5, 7, 8, 13-15, 17-24 are presently pending in this application with claims 13-15 and 17-19 being withdrawn from consideration.
Applicant’s amendments have not overcome the 35 USC §103 rejections.
Response to Arguments
Applicant’s arguments with respect to claims rejected in combination with Henderson have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the Dye’s explanation that different materials could be used which would therefore require different thickness of material supposed supports Applicant’s position on the criticality of dimension considerations for operability of Applicant’s claimed invention. The Examiner finds no such connection. Applicant further argues that the particular dimensions are not recited in the cited references, which the Examiner does not dispute. Applicant argues that the insert “relies on carefully selected dimensional relationships to remain securely positioned while still being readily removable”. Independent claim 1 provides no dimensional relationship to permit proper positioning. How can the size of the insert, by itself, assist in securely positioning the removable insert? At claim 1 there is no dimension of the storage apparatus, which could be any size. Applicant simply states that the dimensions contribute to the principle of operation, but lacks any detail regarding why or how this is the case. At best claims 23 and 24 are the first time any dimensional relationship comes into play, but this does not assist in Applicant’s argument. Per Applicant’s claim, the length of the privacy insert apparatus could be 7.6 cm, and then (per claim 23) the storage apparatus could be 19.05 cm. Similarly, the width of the insert apparatus could be 2.5 cm and the width of the storage apparatus could be 15.24 cm. How does this assist in contributing to the principle of operation? The storage apparatus would be much larger than the insert apparatus. Applicant has provided no evidence that the claimed dimensions are a critical feature of the invention.
Applicant argues that the Office Action provides no reason for the various modifications. Specifically:
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The Examiner disagrees. Each any every modification includes a reason for the modification, the reasons, in the previous rejections as well as this one are as follows:
in order to permit the insert to be replaced, or cleaned and reused in either the same or different garment (Dye describing use in different garments, see Henderson, para. 0036 describing cleaning).
in order to permit the insert to be replaced, or cleaned and reused in either the same or different garment (Dye describing use in different garments, see Henderson, para. 0036 describing cleaning).
edges in order to assist in providing concealment (see Henderson, para. 0025, describing seamless fit due to feathered edge of the insert).
modification is a simple substitution of one element (neoprene) for another (silicone) to obtain predictable results (see MPEP 2143(I)(B)). 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). Furthermore, Dye expressly recites that other materials may be utilized (para. 0016) thus providing evidence that neoprene is not a required material.
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)). Each dimensional modification still providing another reason, although not necessary for the rejection as MPEP 2144.01(IV)(A) already provides sufficient reasoning.
in order to provide for optimum feminine health and hygiene (Krupa, para. 0037).
in order to provide a finished look of the garment (see Beauvais, para. 0031 describing utilizing particular thread for finished look).
Applicant’s argument regarding “little, if anything, remains of Dye’s original disclosure” is unpersuasive. The standard for obviousness is not how much of the original reference remains, but rather whether it would be obvious to modify the reference. The Examiner sets forth that each of the modifications are obvious for the reasons set forth in the rejection below.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “a privacy insert apparatus” in line 2 which should be “the privacy insert apparatus”; and includes “a storage apparatus” which should be “the storage apparatus”. Appropriate correction is required.
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 Adams (US 20200237021) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758) and evidenced by Henderson (US 20230248078).
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 Adams describes an insert 18 that is removable from a pocket (removably and interchangeably sliding the gusset insert into the pocket, para. 0019).
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 replaced, or cleaned and reused in either the same or different garment (Dye describing use in different garments, see Henderson, para. 0036 describing cleaning).
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 (see Henderson, para. 0025, describing seamless fit due to feathered edge of the insert). 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 (see MPEP 2143(I)(B)). 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). Furthermore, Dye expressly recites that other materials may be utilized (para. 0016) thus providing evidence that neoprene is not a required material.
Dye as modified does not explicitly describe
wherein the middle portion of the privacy insert apparatus has a thickness of between 2.0 mm and 6.0 mm.
Dye does describe that the thickness of approximately 1/32-1/16 inch which is between 0.8 and 1.6 mm. Per MPEP 2144.05 a prima facie case of obviousness exist even where the ranges do not overlap but a merely close. The Examiner submits that 1.6 mm is so close to 2 mm that one having ordinary skill in the art would have expected the inserts to have the same properties.
Furthermore, 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 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 thickness 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 edges of the privacy insert apparatus have a thickness of between 0.2 mm and 2.0 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.
Furthermore, Dye teaches that thickness is a result effective variable wherein the thickness is selected depending on the particular material utilized (para. 0016).
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 19.05 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 15.24 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 Adams (US 20200237021) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758) and evidenced by Henderson (US 20230248078), 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 (Krupa, para. 0037).
Claims 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dye (US 20100175170) in view of Adams (US 20200237021) and Laurie (US 20120210496) as evidenced by Hook (US 20120237758) and evidenced by Henderson (US 20230248078), 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 Beauvais, para. 0031 describing utilizing particular thread for finished look).
Claims 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Henderson (US 20230248078), in view of Han (US 20160029703) and Adams (US 20200237021).
Regarding claim 1, Henderson describes a privacy insert apparatus (intimate device 100) which is operatively connected to a storage apparatus (undergarment 300),
wherein a privacy insert apparatus (100) comprises silicone (silicone, para. 0006),
wherein the silicone has a surface that enables the privacy insert apparatus to slide in and out of a storage apparatus (insert into gusset 305, para, 0035, removing, para. 0036),
wherein the dimensions of the privacy insert apparatus are defined to allow the privacy insert apparatus to fit securely inside of a storage apparatus (is secure),
wherein the privacy insert apparatus has a wider front-facing portion (front end 120) and thinner back-facing portion (tapered end 110),
wherein the wider front-facing portion of the privacy insert apparatus extends to conceal anatomical lines (conceals genitalia, abstract), wherein the back-facing portion decreases in width approaching the edges (edge 430),
wherein the length of the privacy insert apparatus is between 7.6 cm and 17.7 cm (6 cm to 12 cm which overlaps the claimed range and is prima facie obvious, para. 0026), and wherein the width of the privacy insert apparatus is between 2.5 cm and 12.7 cm (3 cm to 8 cm, which overlaps the claimed range and is prima facie obvious, para. 0026).
Henderson does not explicitly describe wherein the middle portion of the privacy insert apparatus has a thickness of between 2.0 mm and 6.0 mm or wherein the edges of the privacy insert apparatus have a thickness of between 0.2 mm and 2.0 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 Henderson with unknown thickness and the middle or edges would not perform differently than that of the present application absent persuasive evidence to the contrary.
Furthermore, Han describes a similar garment that includes a modesty panel of between 1 mm and 4 mm which overlaps the claims 2.0 mm to 6.0 mm and is prima facie obvious. 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 thickness of the insert of Henderson to be that of Han in order to provide privacy to the user so that others may not know that the user is wearing the intimate device (Henderson, para. 0025).
Additionally, Adams describes wherein the edges of the privacy insert apparatus have a thickness of between 0.2 mm and 2.0 mm (thickness C of 1/32 of an inch, 0.8 mm).
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 taper to extend to 0.8 mm as suggested in Adams in order to enable reinforcement of the area of the garment while still permitting bending at the tapered edges (Adams, para. 0014).
Conclusion
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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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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