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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “sperm extractor” and “sperm extractor housing” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The specification is objected to for the following reason: The listing of references in the specification such as in Page 1 is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper."
Appropriate correction is required.
Claim Objections
Following claims are objected to because of the following informalities:
Claim 2 lines 1-3 “wherein the circuit board is further provided with an identification chip configured to identify a number of the inner container of the sperm extractor so as to activate a corresponding mode” needs to be corrected. A suggested correction is – wherein the circuit board is further provided with an identification chip configured to identify a number of the inner container of the sperm extractor [[so]] in a manner as to activate a corresponding mode—to avoid intended result/functional limitation interpretation (see MPEP 2111.04) which would raise question as to whether the limitation proceeding “so as to” necessarily follows from preceding limitations and thus unclear as to whether this limitation is even required or not required.
Claim 8 lines 1-4 “wherein a waterproof rubber plug is further arranged at the tail end of the soft rubber channel through the circuit board and the first housing and configured to be taken down during cleaning so as to filter out remaining water inside” needs to be corrected. A suggested correction is – wherein a waterproof rubber plug is further arranged at the tail end of the soft rubber channel through the circuit board and the first housing and configured to be taken down during cleaning [[so]] in a manner as to filter out remaining water inside—to avoid intended result/functional limitation interpretation (see MPEP 2111.04) which would raise question as to whether the limitation proceeding “so as to” necessarily follows from preceding limitations and thus unclear as to whether this limitation is even required or not required.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1-8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 in lines 10-11 recites “to be electrically connected to corresponding parts of a sperm extractor housing loaded with the inner container of the sperm extractor” which renders this claim unclear. More specifically, it is unclear as to which of the structures in claim 1 lines 9-10 is to be electrically connected to corresponding parts of a sperm extractor housing loaded with the inner container of the sperm extractor i.e. metal contacts, circuit board, outer side of the first housing, or the first housing or some other preceding structure.
Each of claims 1-8 recite the term “novel” which renders each of these claims unclear and indefinite. More specifically, here, the term “novel” appears to be an expression of subjective opinion and the frame of reference with respect to which the term “novel” is being used in the context is unclear i.e. is it legally novel and if legally novel which jurisdiction novelty being asserted here or is it Applicant’s opinion or something else. Examiner suggests Applicants delete the term “novel” from the claims.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [a] identification chip features as also disclosed and evidenced in instant application specification as-filed at least [0027]; [b] inner container first and second magnets features as also disclosed and evidenced in instant application specification as-filed at least [0028], [0056]; and [c] barbed member arranged at the opening features as disclosed and evidenced in instant application specification as-filed at least [0029]. Examiner suggests merging claims 2-4, 6 into claim 1 to cure the noted issue.
Claim 1 line 1 recitation is rendered unclear in light of claim 1 lines 2-11 recitation i.e. “inner container of a sperm extractor”. More specifically, it is unclear as to how the mere structures itself and arrangement of structures in claim 1 lines 2-11 actually form a utilitarian “container” of a sperm extractor as recited without and in the absence of second bracket, fixing ring, clamping elements, third bracket, and the waterproof rubber plug arranged cooperatively to form the “container” as also disclosed and evidenced in instant application specification as-filed figured 1-4. Examiner suggests amending to further including the required minimum structures along with the cooperative relationship and arrangement among the elements that would form the “inner container of a sperm extractor” as recited.
Claim 8 recites “and configured to be taken down during cleaning so as to filter out remaining water inside” which renders this claim unclear. More specifically, it is unclear as to which of the preceding structures is configured to be taken down during cleaning so as to filter out remaining water inside i.e. “a waterproof rubber plug” “the soft rubber channel” “the circuit board”, “the first housing” or structures in base claim 1 or something else.
Dependent claims 2-8 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 112(b) because the additional recited limitations fail to cure the 35 U.S.C. 112(b) issue in their respective base claims. Consequently, dependent claims 2-8 are also rejected under 35 U.S.C. 112(b) based on their direct/indirect dependency on their respective base claims.
Claim Interpretation
Claims terms where relevant are being interpreted in light of definitions enumerated in instant application specification as-filed page [0040-0042], [0058].
Please note that USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted "in view of the specification" without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.... The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.").
Contingently Allowable Subject-Matter
As per independent claim 1, independent claim 1 would be contingently allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action in addition to overcoming any other rejections/objections enumerated above.
As per dependent claims 2-8, dependent claims 2-8 would be contingently allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and by further including all of the limitations of the base claims and any intervening claims in addition to overcoming any other rejections/objections enumerated above.
As per dependent claims 2-8, dependent claims 2-8 each is being objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims in addition to overcoming any other rejections/objections enumerated above.
The following is a statement of reasons for the indication of allowable subject matter:
As per independent Claim 1, the prior art of record fails to disclose or render obvious an inner container of a sperm extractor, comprising… and a butt joint assembly mounted at a tail end of the soft rubber channel, wherein the butt joint assembly comprises a first bracket, a circuit board, and a first housing, the first bracket is embedded into the tail end of the soft rubber channel, the circuit board is mounted on the first bracket, the first housing is located on an outer side of the circuit board and mounted at the tail end of the soft rubber channel, and three metal contacts are arranged on the circuit board and extend to an outer side of the first housing to be electrically connected to corresponding parts of a sperm extractor housing loaded with the inner container of the sperm extractor including all the other features, structures, specific arrangement and combination of features and structures in independent Claim 1.
Prior art US 20230371932 A1 to Chen discloses a multi-layer nested sperm extractor easy to disassemble and clean. More specifically, Chen discloses a multi-layer nested inner container easy to disassemble and clean and a sperm extractor comprising the same. A soft cup is arranged in a cavity of a hard inner long cylinder in an interference fit manner to form a detachable assembly; the soft cup can be well fixed by means of the hard inner long cylinder, and the soft material of the soft cup makes the interference fit structure easy to assemble and stable; and an outer surface of the hard inner long cylinder is provided with stoppers, and the stoppers abut against an outer cylinder to form interference fit. In this way, when the soft cup is pulled out, the hard inner long cylinder can be used as an acting point, which facilitates assembly and cleaning. In addition, the snap fit assembly mode is simple, so assembly efficiency is improved.
Prior art US 20040039248 A1 to Vayer discloses a device for collecting seminal liquid including at least one housing capable of accommodating a penis and a trigger for ejaculation, wherein ejaculation trigger includes a mechanism to subject the walls of the housing to pulses intended for stimulating the penis.
Prior art US 20130253458 A1 to Wu discloses sperm collector with squeezing function. More specifically, Wu discloses sperm collector that includes an insert having a penis insertion passage. The sperm collector also includes a container having an outer shell forming an inside chamber. The outer shell has at least one opening. The inside chamber is configured to accommodate the insert. The sperm collector also includes a top end cover capable of being engaged with the container. The sperm collector further includes an elastic pressing unit disposed on the outer shell and coupled to the insert through the opening on the outer shell. The elastic pressing unit is configured to transmit pressure to the insert through the opening on the outer shell.
Prior art US 20080065033 A1 to Matsuura discloses a sperm collecting apparatus that includes a container having a non-cylindrical container main unit whose one end face in a longitudinal direction is open and a cap that is attachable the container main unit. A core member made from a gel-like material, which is located in the container main unit and has an insertion room extending to an inner portion of the core member from an insertion port at one end face in the core member. A sponge layer which is interposed between the core member and an inner wall of the container main unit, the container main unit is a non-cylindrical member whose intermediate portion in a longitudinal direction thereof has an outer diameter smaller than those in both end portions.
Prior art US 20080004577 A1 to Matsuura discloses a sperm collecting apparatus. More specifically, Matsuura discloses sperm collecting apparatus that includes a container including a cylindrical container main unit that has an opening portion on at least one end face in a longitudinal direction thereof and a cap that is attached to and detached from the opening portion of the container main unit to close and open the opening portion, and a core member which is accommodated in said container and has an insertion room extending from an insertion port at one end face in a longitudinal direction therein. The core member includes a core main unit having said insertion port and the insertion room and a plurality of ribs provided upright from an outer face of the core main unit to cross one another, and sealed rooms are formed through the outer face of the core main unit.
However, patentable subject-matter of independent device claim 1 i.e. an inner container of a sperm extractor, comprising a butt joint assembly mounted at a tail end of the soft rubber channel, wherein the butt joint assembly comprises a first bracket, a circuit board, and a first housing, the first bracket is embedded into the tail end of the soft rubber channel, the circuit board is mounted on the first bracket, the first housing is located on an outer side of the circuit board and mounted at the tail end of the soft rubber channel, and three metal contacts are arranged on the circuit board and extend to an outer side of the first housing to be electrically connected to corresponding parts of a sperm extractor housing loaded with the inner container of the sperm extractor including all the other features, structures, specific arrangement and combination of features and structures in independent claim 1 has neither been disclosed nor is rendered obvious by the prior art of record.
Additionally, as per dependent claims 2-8, dependent claims 2-8 would be contingently allowable based on their direct/indirect dependency on contingently allowable respective base claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and/or the claims.
Prior art US 20130012766 A1 to Bayliss discloses reproductive aid similar to that disclosed. More specifically, Bayliss discloses sperm delivery device with a cup shaped sperm storage vessel, the side walls of the vessel having plurality of retaining receptacles, a resilient disk shaped portion integral with and parallel to the base of the sperm storage vessel, a thin closure membrane that dissolves at body temperature in a moist environment, and a closure ring having downwardly extending prongs that penetrate the retaining receptacles of said side walls of said sperm storage vessel that traps said closure membrane between the top of said sperm containing vessel and the underside of said closure ring.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNITA REDDY whose telephone number is (571)270-5151. The examiner can normally be reached on M-Thu 10-4 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHARLES A MARMOR II can be reached on (571)272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNITA REDDY/Primary Examiner, Art Unit 3791
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