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
The amendment filed 12/4/2025 has been received and made of record. As requested, claims 1-5 and 7 are currently pending and are being examined.
Response to Arguments
Applicant’s amendments filed 12/4/2025 have overcome the previous rejections under 35 USC 112. These rejections have therefore been withdrawn.
Applicant's arguments filed 12/4/2025 have been fully considered but they are not persuasive. Applicant argues that claim 1 requires “the variable gap is formed by a specific structural and functional characteristic of the fastener itself: it must be ‘designed to be unbent to place the folded condom ring inside and then taking initial geometer’”. It is first noted that applicant argues “specific structural” characteristics but then the claims do not actually recite specific structure. It is also noted that how the condom is placed inside is a product by process limitations. The device of Felitsyn appears to be substantially identical to the device claimed, although produce by a different process, therefore the burden is upon the applicant to come forward with evidence establishing an unobvious difference between the two. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The device of Felitsyn has fasteners (7) that are unbent (as shown in Figure 6) and bent (in Figure 5) and is thus is capable of having the condom ring placed in the gap by moving the fasteners to be unbent (in Figure 6), placing the condom in and then returning the fasteners to the initial geometry (in Figure 5; [0144]).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., elastically and plastically returning to its initial geometry) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 102
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 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 1, 3, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Felitsyn (US 2010/0127445 A1).
Regarding claim 1, Felitsyn discloses packing for a condom comprising a covering (packaging [0153]; [0004], [0008]) with a holder (1) inside (Figure 3; [0153]; [0004], [0008]), and the holder is equipped with fasteners (7) designed to hold the condom in a folded state to form a folded condom and located on an inner and outer side of the folded condom (Figure 3), wherein in each fastener and between at least one pair consisting of an inner and an outer fastener a gap of variable size is formed (gap between two fasteners 7 expand when handles 15, 16 are brought together causing the band 2 to expand; [0141], Figures 3 and 7) and the fasteners are designed to be unbent (Figure 6) to place the folded condom ring inside and then taking initial geometry (Figure 5; [0144]).
Regarding claim 3, Felitsyn discloses that the holder includes at least two parts, and each part has the fasteners (5, 6; Figure 3).
Regarding claim 5, Felitsyn discloses wherein the fasteners are made hook-shaped (7; Figure 3).
Regarding claim 7, Felitsyn discloses that the fastener is designed to open (Figure 4) to place the folded condom ring inside and then close (Figure 3), taking initial position (Figures 3-4 and 7).
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 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Felitsyn (US 2010/0127445 A1) in view of Lepilin (RU 2515852 C1 and machine translation).
Regarding claim 2, Felitsyn discloses that as applied above including a covering (packaging [0153]; [0004], [0008]) but does not disclose the covering is provided with an opening line. Lepilin teaches a condom with a covering (1) having an opening line (5). It would have been obvious to one of ordinary skill in the art at the time of filing to provide the device of Felitsyn wherein the covering has an opening line as taught by Lepilin for facilitating ease of opening the packaging.
Regarding claim 4, Felitsyn discloses that as applied above including wherein the holder is provided with side grippers (15, 16) located on two opposite sides of the holder (left and right sides) and designed to be held with hand fingers when opening (Figures 3 and 7). Felitsyn does not disclose the holder has side grippers designed to be held with hand fingers when opening the packing. Lepilin teaches a condom that the holder provided with side grippers (3) located on two opposite sides of the holder and designed to be held with hand fingers when opening the packing (Figures 1-4). It would have been obvious to one of ordinary skill in the art at the time of filing to provide the device of Felitsyn wherein the side grippers are designed to be held with hand fingers when opening the packing as taught by Lepilin for facilitating ease of opening the packaging.
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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/KARI K RODRIQUEZ/Primary Patent Examiner, Art Unit 3786