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 .
Election/Restrictions
Applicant’s election of Species A in the reply filed on 3/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-4 & 8-12 are examined on the merits. Claims 1 & 9 are independent.
Claims 5-7 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B-D, there being no allowable generic or linking claim.
Claim Objections
Claims 1-4 & 8 are objected to because of the following informalities:
Re Claim 1, in the second clause, “a a main body region” should be “a main body region.” Additionally, Claim 1 recites “[a] tampon applicator, comprising: a tampon…” where it is believed that “a tampon” refers to an absorbent pledget. However, a tampon applicator is generally understood to be a hollow tubular device, and an absorbent pledget is not part of the applicator. Examiner recommends changing “tampon applicator” to “tampon assembly.”
Subsequently, the “tampon applicator” in the preamble of Claims 2-4 & 8 should also be changed to “tampon assembly.”
Appropriate correction is required.
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 9-10, 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 11 of U.S. Patent No. 10,898,391 in view of Seki (US 2011/0273727). Said patented claims 1, 6, & 11 recite all details of the current claim 9, except that the outer sleeve having an outer sleeve coupler and the inner outer sleeve having an inner sleeve coupler that includes a flange. Seki discloses a tampon applicator having telescoping plunger formed of outer and inner sleeves wherein the outer sleeve has an outer sleeve coupler and the inner sleeve has an inner sleeve coupler (details of the coupling are shown in Fig. 3). It would have been obvious to one skilled in the art at the time of filing to modify with Seki since it is necessary to have a plunger that is strong enough and long enough to push a tampon pledget out of the tampon applicator barrel. Patented claim 6 also recites the limitation in current claim 10. Limitations of current claim 12, regarding the structures of the outer sleeve couple and the inner sleeve coupler, can be found in Seki’s Fig. 3.
Claims 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 11 of U.S. Patent No. 11,911,245 in view of Seki. Said patented claims 1, 6, & 11 recite all details of the current claim 9, except that the outer sleeve having an outer sleeve coupler and the inner outer sleeve having an inner sleeve coupler that includes a flange. Seki discloses a tampon applicator having telescoping plunger formed of outer and inner sleeves wherein the outer sleeve has an outer sleeve coupler and the inner sleeve has an inner sleeve coupler (details of the coupling are shown in Fig. 3). It would have been obvious to one skilled in the art at the time of filing to modify with Seki since it is necessary to have a plunger that is strong enough and long enough to push a tampon pledget out of the tampon applicator barrel. Patented claim 6 also recites the limitation in current claim 10. Patented claim 1 also recites the limitation in current claim 11. Limitations of current Claim 12, regarding the structures of the outer sleeve couple and the inner sleeve coupler, can be found in Seki’s Fig. 3.
Claim Rejections - 35 USC § 102
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 9 & 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seki et al. (US 2011/0273727).
Re Claim 9, Seki discloses a tampon applicator (Figs. 1-2), comprising:
a barrel (outer cylinder 40) barrel extending lengthwise between a plunger end (at annular rib 46) and an insertion end (where leading side opening 43 is located), the barrel including a grip region (minor diameter part 42), a main body region (major diameter part 41), a plurality of petals (petaloid parts 44) disposed between the insertion end and the main body region (Figs. 1-2) and an interior cavity (where cotton body 21 is located, e.g., Fig. 1); and
a telescoping two-piece plunger (inner cylinder 50) that includes an outer sleeve (first inner cylinder 51) and an inner sleeve (second inner cylinder 52), the outer sleeve having an outer sleeve coupler (annular protrusion 51b, best seen in Fig. 3), the outer sleeve coupler including a tab (the protrusion is broadly interpreted to be a tab), and the inner sleeve having an inner sleeve coupler (arcuate flange part 52a & protruded part 52b), the inner sleeve coupler including a flange (52a) wherein the sleeves are selectively actuable into a deployed configuration in which the inner and outer sleeves are combined into a unitary member (as shown in Fig. 2) such that the sleeves are locked together ([0089]), and wherein the inner sleeve has a stem portion with a length (portion of 52 excluding the flared part 52c) and a digit portion (flared part 52c).
Re Claim 12, Seki discloses claim 9, and further disclosing wherein the inner sleeve coupler further comprises a second flange (52b), wherein the sleeves are selectively actuable into a deployed configuration in which the inner and outer sleeves are combined into a unitary member such that the tab is between the flange and the second flange (clearly shown in Fig. 3).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Seki.
Re Claim 11, Seki discloses claim 9 and further discloses a tampon (cotton body 21) but does not expressly disclose the tampon having a length that is substantially equal to the length of the stem portion of the inner sleeve. However, as long as the tampon can still be pushed out by the plunger, mere changes to either the tampon length or the inner sleeve stem portion length requires only routine skills in the art. Since the only difference between the Seki and the claim is a recitation of relative dimensions, and the claim does not recite how the claimed device would perform differently than the Seki device, the claimed relative dimensions would not patentably distinguish the claimed device from that of Seki. See MPEP 2144.04 (IV)(A).
Allowable Subject Matter
Claims 1-4 & 8 are allowed.
Claim 10 contains allowable subject matter. Please note the nonstatutory double patenting rejection of Claim 10, as explained supra.
The following is a statement of reasons for the indication of allowable subject matter:
Re Claim 1, Seki discloses a tampon assembly that is similar to the claimed invention. However, Seki fails to disclose that an inner sleeve of a telescopic plunger has a stem portion length that is substantially equal to the length of the tampon pledget and wherein a full stroke travel of the plunger is equal to the stem portion length. While it may be obvious to modify Seki such that the inner sleeve stem portion has a length equal to that of the tampon, Seki fails to disclose, inter alia, wherein a full stroke travel of the plunger is equal to the stem portion length. Looking at Fig. 2 of Seki, it is shown that a full stroke (distance of plunger travel in order to push the tampon out of the barrel) is approximately equal to the outer sleeve length plug the inner sleeve stem portion length, because inner sleeve flare end (52c) would be stopped by grip region (42) of the barrel, thus completing a full stroke. If the full stroke of Seki is modified/shortened to be only the stem portion length of the inner sleeve, the tampon would still be partially retained within the applicator barrel and thus rendering the applicator ineffective for its intended purposes.
Claims 2-4 & 8 are allowable for being dependent from Claim 1.
Claim 10 is allowable for the same reason as stated in Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN S SU whose telephone number is (408)918-7575. The examiner can normally be reached M-F 9:00 - 5:00 Pacific.
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/SUSAN S SU/Primary Examiner, Art Unit 3781 27 March 2026
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