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 .
Status of Claims
Claims 2-21 are pending and examined on the merits.
Information Disclosure Statement
The references cited by applicants in the information disclosure statements filed from 5/31/2024 to 4/4/2025 have been made of record. Examiner has considered the voluminous references to the best of her ability.
While the statements filed do not comply with the guidelines set forth in MPEP 2004 regarding both the number of references cited and the elimination of clearly irrelevant art and marginally cumulative information, compliance with these guidelines is not mandatory. Furthermore, 37 CFR 1.97 and 1.98 does not require that the information be material; rather, they allow for submission of information regardless of its pertinence to the claimed invention. Also, there is no requirement to explain the materiality of the submitted references. However, the cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with Applicant’s duty of disclosure. See Penn Yan Boats, Inc. v. Sea Lark boats Inc., 359 F. Supp. 948, aff’d 479 F. 2d. 1338.
Applicant is advised that the MPEP states the following with respect to large information disclosure statements:
Although a concise explanation of the relevance of information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted. Concise explanations (especially those that point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more is highly relevant to patentability. MPEP § 609.04(a)(III).
This statement is in accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), states that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. at 1888. This case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references. Id. 1888.
The MPEP provides more support for this position. In a subsection entitled “Aids to Compliance With Duty of Disclosure,” item thirteen states:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant information and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of the most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp 948 (S.D. Fla. 1972) aff’d 479 F.2d 1338 (5th Cir 1974). See also MPEP § 2004.
Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statement is known to be material for patentability as defined by 37 CFR 1.56, Applicant should present a concise statement as to the relevance of that/those particular documents therein cited.
Claim Objections
Claim 5 is objected to because of the following informalities:
Re Claim 5, the limitation “wherein the porous material defines at least a portion of the chamber” is already present in Claim 2, from which Claim 5 depends directly.
Appropriate correction is required.
Claims 16-18 are objected to under 37 CFR 1.75 as being a substantial duplicate of claims 4, 6, & 13, respectively. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,029,678. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 4 recites all limitations in the current claim 2, including a device comprising a porous material, a wicking material, a layer of impermeable material, wherein at least one of said materials define an opening configured to receive a head of a penis, the wicking material directly receives urine from the penis, wherein the device defines a chamber and at least a portion of the wicking material is spaced from the chamber by the porous material.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,029,678 in view of Burns, Jr. et al. (US 2003/0204173). Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 recites all limitations in the current claim 14, including a device comprising a porous material, a wicking material, a layer of impermeable material, wherein at least one of said materials define an opening configured to receive a head of a penis, the wicking material directly receives urine from the penis, wherein the device defines a chamber and at least a portion of the chamber is spaced from and distinct from the port. Said patented claim 1 does not recite the three layers of materials extend parallel to each other in a portion opposite the opening. Burns discloses a urine-receiving pouch having a wicking layer, an absorbent layer, and an impermeable layer forming a thin pad at a bottom of the flat pouch (see e.g., Fig. 3). It would have been obvious to one skilled in the art at the time of filing to modify with Burns as that can store urine at a location farther from the opening and thus less likely to leak through the opening.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-13, 15-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "at least a portion of the chamber is spaced from and distinct from the port" but there is insufficient antecedent basis for this limitation in the claim. For prior art examination, Examiner adds into the claim the limitation “a port configured to be attached to a tube”.
Claims 3-13 & 15-18 are rejected for being dependent from Claim 2.
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.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilcox et al. (US 2011/0077606) in view of Suzuki (US 2006/0015081).
Re Claim 19, Wilcox discloses a device to collect urine from a penis, the device (see e.g., Fig. 3) comprising:
a porous material (first absorbent 18) having a first side (the side that faces the liner 24) and a second side (side that faces moisture barrier 12) opposite the first side;
a wicking material (liner 24, [0030]) positioned adjacent to substantially all of the first side of the porous material (since there is no other layer of material between liner 24 and absorbent 18, the wicking material is considered to be “adjacent to” the porous material even though there is a gap between the two materials; note that liner 22 is optional, see [0034]); and
a layer of impermeable material (moisture barrier 16) positioned adjacent to the second side of the porous material (Fig. 3, [0036]);
wherein at least one of the porous material, the wicking material, and the layer of impermeable material defines an opening configured to receive a head of a penis (Fig. 5), the wicking material positioned to directly receive urine from the head of the penis when the opening receives the head of the penis ([0030]);
wherein the device defines a chamber (32) including at least one substantially unoccupied gap (DG, [0021]), at least a portion of the chamber is directly defined by the porous material (see Figs. 2 & 3).
Wilcox does not disclose a port configured to be attached to a tube and subsequently does not disclose that at least a portion of the chamber is spaced from and distinct from the port. Suzuki discloses a urine collecting device comprising a receiver (10) interfacing with the genitals of a user, the receiver has an impermeable layer (22B, [0159]), wherein the impermeable layer defines a port configured to receive a tube (Figs. 11 & 13, opening through which urethral tube 11 extends through the impermeable material 22B) and the tube is received in the port. It would have been obvious to one skilled in the art at the time of filing to modify Wilcox with Suzuki for adapting the Wilcox device to receive a larger volume of urine discharge (e.g., if the absorbent layers are saturated, adding the Suzuki port/tube can help channel away excess urine into a receptacle). After the modification, since the port is in the impermeable layer of the combination, it would be distinct and spaced from the chamber because there is a layer of porous material separating the chamber from the port in the impermeable layer.
Re Claim 20, Wilcox and Suzuki combine to disclose claim 19, and Wilcox also discloses wherein a portion of the porous material opposite the opening is a unitary, continuous layer (see e.g., Fig. 3).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Wilcox and Suzuki as applied to claim 19 above, and further in view of Hall et al. (US 6,736,977).
Re Claim 21, Wilcox and Suzuki combine to disclose the invention of claim 19 but they do not teach that the porous material includes a spun plastic material. Wilcox discloses that the porous material is an absorbent layer for retaining fluids ([0031]). Hall discloses that there are commercially available fluid absorbents made of polymers (plastics) that are spun into fibers and then made into textile form (col. 9 lines 57-61). It would have been obvious to one skilled in the art at the time of filing to modify Wilcox with Hall's knowledge since the selection of a material (such as the absorbents known to Hall) suitable for its intended use (for liquid absorption) establishes a prima facie case of obviousness (MPEP 2144.07).
Allowable Subject Matter
Claims 2-18 contain allowable subject matter. Note the nonstatutory double patenting rejection of Claims 2 & 14 and that Claims 16-18 are duplicates of Claims 4, 6 & 13, respectively.
The following is a statement of reasons for the indication of allowable subject matter:
No prior art, alone or in combination, reads on the claimed inventions in Claim 2 or 14.
Wilcox discloses a porous material (18 & 20), a wicking material (24), a layer of impermeable material (12 or 16), an opening defined by at least one of the layers, the opening configured to receive a head of a penis and the wicking material positioned to directly receive urine from the penis, and a chamber (DG) including an unoccupied gap. Wilcox does not disclose a port configured to be connected to a tube or that the wicking material is spaced from the chamber by the porous material. Wilcox also does not disclose that the three materials extend substantially parallel to each other in a portion opposite the opening.
Suzuki discloses inserting a tube between the impermeable layer and the porous material (Fig. 11), thus creating a chamber, but said chamber cannot be spaced from and distinct from the port and is occupied by the tube.
Burns, Jr. et al. (US 2003/0204173) discloses a fecal pouch (see Fig. 3) having a porous material (absorbent material 15) that appears to have a uniform thickness, a wicking material (16, [0067] "being drawn through the liquid-permeable topsheet (16)"), and a layer of impermeable material (11A & 11b). The opening (13) is fully capable of receiving a penis. However, Burns does not disclose a port configured to be attached to a tube, at least a portion of the wicking material being spaced from at least a portion of the chamber by the porous material, or a chamber defined between the impermeable layer and at least one of the wicking and porous materials.
Claims 3-13 & 15-18 are allowable for being dependent from Claim 2.
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
17 June 2026
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