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 .
Amendment filed August 22, 2025 has been acknowledged. Newly presented claims 17-18 have been entered. Claims 1-18 remain pending in the application.
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.
Claim(s) 1-12 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burke (20180345314) in view of McCarthy et al. (20110224482) and Pulch et al. (20070034650).
Regarding claim 1, Burke discloses an ejaculate dispensing device comprising:
a reservoir (14) for containing a fluid;
a pump (12) having an inlet and an outlet, wherein the outlet is in fluid communication with a tubing (32) and the inlet is in fluid communication with the reservoir; and
a trigger (16) for actuating the pump to cause a fluid to flow from the reservoir through the tubing.
Burke DIFFERS in that it does not disclose an elongated male member having a distal end and a proximate end opposite and spaced apart from the distal end, the elongated male member defining a longitudinally extending channel having a first end and a second end opposite and spaced apart from the first end, wherein the longitudinally extending channel extends from the first end at the distal end toward the second end at the proximate end, wherein the pump is configured to distribute a predetermined volume of fluid per trigger actuation.
Regarding the elongated member, attention is directed to the McCarthy reference, which discloses an elongated male member (Figs. 3-4 and 7-8) having a distal end and a proximate end opposite and spaced apart from the distal end (Figs. 3-4 and 7-8), the elongated male member defining a longitudinally extending channel (Figs. 3-4 and 7-8) having a first end and a second end opposite and spaced apart from the first end, wherein the longitudinally extending channel extends from the first end at the distal end toward the second end at the proximate end (Figs. 3-4 and 7-8). McCarthy teaches that an elongated male member with a longitudinally extending channel is useful for sexual stimulation and artificial insemination (par. 0022 and 0056; claim 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Burke reference in view of the teachings of the McCarthy reference by employing an elongated male member with a longitudinally extending channel for the purpose of providing sexual stimulation or artificial insemination.
Regarding the pump, attention is directed to the Pulch reference, which teaches that conventional dispensers comprise a pump that is configured to distribute a predetermined volume of fluid per trigger actuation (par. 0027).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the Burke reference in view of the teachings of the Pulch reference by employing a pump configured to distribute a predetermined volume of fluid per trigger actuation because it is a well-known mechanism for dispensing fluid and would allow a user to dispense precise amounts of fluid.
Regarding claim 2, the elongated male member has a phallic shape (Figs. 3-4 and 7-8 of McCarthy).
Regarding claim 3, the elongated male member includes a testicle portion shaped to resemble testicles (Figs. 3-4 of McCarthy).
Regarding claim 4, the elongated male member comprises a polymer (par. 0073 of McCarthy).
Regarding claim 5, the polymer is a resilient polymer (par. 0073 of McCarthy).
Regarding claim 6, the longitudinally extending channel extends from the distal end to the proximate end (Figs. 3-4 and 7-8 of McCarthy).
Regarding claim 7, the elongated member has a side wall extending from the distal end to the proximate end (Figs. 3-4 and 7-8 of McCarthy), wherein the longitudinally extending channel extends from the distal end to the side wall (Figs. 3-4 and 7-8 of McCarthy).
Regarding claim 8, the device further comprising a pump head (12 of Burke) including a pump trigger (16 of Burke) hingedly associated with the pump head, the pump head comprising a threaded lower end (22 of Burke) and an outlet end (20 of Burke).
Regarding claim 9, the device further comprising a dip tube (26 of Burke) coupled to the outlet of the pump, wherein the inlet of the pump is in fluid communication with the reservoir through the dip tube (par. 0024 of Burke).
Regarding claim 10, the elongated male member is removably coupled to the outlet of the pump (par. 0029 of McCarthy).
Regarding claim 11, the device further comprising a flexible tubing extending through the longitudinally extending channel of the elongated male member, wherein the outlet of the pump is in fluid communication with the flexible tubing (par. 0027 and 0074 of McCarthy).
Regarding claim 12, the elongated male member and the flexible tubing comprise different materials (par. 0025 and 0073 of McCarthy).
Regarding claim 15, the reservoir comprises a bottle having a threadable upper end shaped to engage a threaded lower end of the pump (Fig. 1 of Burke; par. 0023 of Burke).
Regarding claim 16, the bottle has a volume of less than six ounces (par. 0023 of Burke).
Regarding claim 17, Burke discloses the claimed invention except for the predetermined volume of fluid per trigger actuation is 1 mL or less. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to set the predetermined volume of fluid per trigger actuation to 1 mL or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burke in view of McCarthy et al. and Pulch et al. as applied to claim 1 above, and further in view of Howsam (EP2735299).
Regarding claim 13, Burke DIFFERS in that it does not disclose the device further comprising a nozzle in fluid communication with the first end of the longitudinally extending channel and disposed adjacent the distal end of the elongated male member. Attention, however, is directed to the Howsam reference, which discloses a nozzle (172) in fluid communication with the first end of a longitudinally extending channel and disposed adjacent a distal end of an elongated male member. Howsam teaches that the nozzle provides security and protection for the termination point of a tube (par. 0022).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the Burke reference in view of the teachings of the Howsam reference by including a nozzle for the purpose of providing security and protection for the termination point of a tube (par. 0006 of McCarthy; par. 0022 of Howsam).
Regarding claim 14, the device further comprising a flexible tubing extending through the longitudinally extending channel of the elongated male member, wherein the nozzle is coupled to the flexible tubing (par. 0022 and 0028 of Howsam).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burke in view of McCarthy et al. and Pulch et al. as applied to claim 1 above, and further in view of Paasch et al. (8056764).
Regarding claim 18, Burke DIFFERS in that it does not disclose the predetermined volume of fluid per trigger actuation is adjustable. Attention, however, is directed to the Paasch reference, which discloses a predetermined volume of fluid per trigger actuation is adjustable (col. 5, lines 4-23).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the Burke reference in view of the teachings of the Paasch reference by providing a volume adjuster for the purpose of allowing a user to adjust the predetermined volume of fluid per trigger actuation to obtain a desired amount of fluid.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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.
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.
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/DONNELL A LONG/Primary Examiner, Art Unit 3754