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 .
Response to Amendment
This action is responsive to communication filed on 12/01/2025. Claims 1, 4, 6, 10, and 12-20 remain pending.
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 (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 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.
Claim(s) 1, 4, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 7,798,907 (hereinafter Piccionelli).
Regarding claim 1, Piccionelli discloses a toilet ‘gag gift’ device comprising: a body (12) comprised of a leg (14) and a receiving area (26), the receiving area is comprised of an indicia (col. 4, ln. 26-29), and the leg (14) is comprised of a bendable leg (22) (col. 3, ln. 60-63). Piccionelli fails to show the indicia is an image indicia relating humorously to the condition of scrotal ptosis. Matters pertaining to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. Applicant has not demonstrated criticality on the specific limitation since it is presented as one among several aesthetic design choices (a word, phrase, a joke, a symbol, or an image that relates humorously to the condition of scrotal ptosis – see original claim 1). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to select an ornamental design depending on a user’s personal preference, and to select an image indicia relating humorously to the condition of scrotal ptosis falls within the purview of the invention since an image provides no mechanical function and is for entertainment or aesthetic purposes only. (See MPEP 2144.04 (I) Aesthetic Design Changes In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)).
Regarding claim 4, Piccionelli discloses the body is scented (col. 4, ln. 29-32).
Regarding claim 16, Piccionelli discloses a method of using a toilet ‘gag gift’ device, the method comprising the following steps: providing a toilet gag gift device comprised of a body (12) having a mesh (paper is a type of mesh; see also fig. 1 which shows a mesh pattern) receiving area (26) and a leg (14); and placing the toilet gag gift device within a toilet bowl as a humorous joke (col. 3, ln. 3-16 discuss the humorous joke aspects of the invention); and the leg (14) is comprised of a bendable leg (22) (col. 3, ln. 60-63). Piccionelli fails to show the indicia is an image indicia relating humorously to the condition of scrotal ptosis. Matters pertaining to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. Applicant has not demonstrated criticality on the specific limitation since it is presented as one among several aesthetic design choices (a word, phrase, a joke, a symbol, or an image that relates humorously to the condition of scrotal ptosis – see original claim 1). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to select an ornamental design depending on a user’s personal preference, and to select an image indicia relating humorously to the condition of scrotal ptosis falls within the purview of the invention since an image provides no mechanical function and is for entertainment or aesthetic purposes only. (See MPEP 2144.04 (I) Aesthetic Design Changes In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)).
Regarding claim 17, further comprised of a step of attaching the leg to the toilet bowl via a fastener (20) (col. 4, ln. 7-17).
Regarding claim 18, wherein the fastener (20) is comprised of a suction cup, an adhesive (“bonding material” col. 3, ln. 57-59), or
Regarding claim 19, wherein the toilet gag gift device is comprised of a speaker (col. 7, ln. 6-12) and a motion sensor (col. 2, ln. 14-15).
Regarding claim 20, wherein activation of the motion sensor activates the speaker to play a phrase, a song, a word, or a joke that humorously relates to the condition of scrotal ptosis (a whizzing bullet sound or bomb exploding is considered humorously related to the condition of scrotal ptosis; col. 7, ln. 9-12).
Claim(s) 6, 10, and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piccionelli in view of US Patent 11,255,081 (hereinafter Oh) and US Patent Application Publication 2013/0318698 (hereinafter Schilpp).
Regarding claim 6, Piccionelli discloses a toilet ‘gag gift’ device comprising: a body (12) comprised of a receiving area (26); a leg (14) comprised of a fastener (20, 22); a speaker (col. 7, ln. 6-12); and a sensor (26), the receiving area is comprised of an indicia (col. 4, ln. 26-29), and the leg (14) is comprised of a bendable leg (22) (col. 3, ln. 60-63).
Piccionelli fails to show the indicia is a phrase indicia relating humorously to the condition of scrotal ptosis. Matters pertaining to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. Applicant has not demonstrated criticality on the specific limitation since it is presented as one among several aesthetic design choices (a word, phrase, a joke, a symbol, or an image that relates humorously to the condition of scrotal ptosis – see original claim 1). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to select an ornamental design depending on a user’s personal preference, and to select a phrase indicia relating humorously to the condition of scrotal ptosis falls within the purview of the invention since a phrase provides no mechanical function and is for entertainment or aesthetic purposes only. (See MPEP 2144.04 (I) Aesthetic Design Changes In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)).
Picconelli shows the receiving area is a ‘basket’ (the receiving area is considered a basket since it is capable of being concave shaped; col. 3, ln. 17-22) but fails to show the basket is a woven basket. Attention is turned to Oh, in the same field of endeavor of color changing urine receivers, which shows a woven fabric is a suitable material choice (col. 4, ln. 15-19). It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to select a woven material for the receiving area since the selection of a known material suitable for its intended use involves only routine skill in the art as evidenced by the teachings above.
Piccionelli shows the fastener is a suction cup and fails to show the fastener is a magnetic fastener. Attention is turned to Noyes, in the same field of endeavor of mounting accessories for plumbing fixtures, which shows that magnetic fasteners are functionally equivalent to suction cups for attaching an accessory to a plumbing fixture (par. 36). It would have been obvious to one having ordinary skill in the art before the effective filing of the claimed invention to substitute a magnetic fastener for the suction cup fastener of Piccionelli since the substitution of one functionally equivalent structure for another that produces the same expected result involves only routine skill in the art as evidenced by the teachings above.
Regarding claim 10, Piccionelli discloses the body is scented (col. 4, ln. 29-32).
Regarding claim 12, Piccionelli discloses the sensor is comprised of a motion sensor (col. 2, ln. 14-15).
Regarding claim 13, Piccionelli discloses the activation of the sensor activates the speaker (col. 7, ln. 6-12).
Regarding claim 14, Piccionelli discloses upon activation the speaker plays a phrase, a song, a word, or a joke that humorously relates to the condition of scrotal ptosis (a whizzing bullet sound or bomb exploding is considered humorously related to the condition of scrotal ptosis; col. 7, ln. 9-12).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piccionelli, Oh, and Schilpp as applied to claim 6 above, and further in view of US Patent 5,890,242 (hereinafter Minter).
Regarding claim 15, Piccionelli shows the toilet gag gift device of claim 6 but fails to show further comprised of a battery. Attention is turned to Minter which shows it is common practice to include a battery in a device mounted in a toilet system that relies on sensors, lights, and speakers to power the device (col. 4, ln. 46-52). It would have been obvious to include a power source such a battery in order to operate the electronics in the device as is well-known in the art.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive. Applicant argues that the coupling member (14) and attachment member (22) do not constitute a bendable leg. Examiner respectfully disagrees. A ‘leg’ can be defined as a branch or part of an object of system, or a usually long narrow part serving as a support or prop. A rope or chord is long and narrow and serves to support the receiving area (26). Furthermore, a rope or chord is bendable. The rejection is deemed proper and maintained.
Applicant’s arguments pertaining to the receiving area comprising an image or phrase indicia relating humorously to the condition of scrotal ptosis, the receiving area is a woven basket, the fastener is a magnetic fastener, and the receiving area is mesh are moot in light of the new grounds of rejection set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JANIE M LOEPPKE whose telephone number is (571)270-5208. The examiner can normally be reached M-F 9AM-5PM ET.
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/JANIE M LOEPPKE/Primary Examiner, Art Unit 3754