DETAILED ACTION
This Office Action is responsive to the Amendment filed 28 April 2026. Claims 1-5, 8, 21-25, 27, 31 and 32 are now pending. The Examiner acknowledges the amendments to claims 1-4, 21, 22 and 31, as well as the cancellation of claims 7, 9 and 10.
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
3. 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 “sensing region” and “motor…located between the at least two capacitive sensors of the main body upper shell and the main body lower shell” (claim 2 and 22) 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.
Claim Rejections - 35 USC § 112
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
5. Claims 2 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 2 has been amended to recite a sensing region (of the insertion portion and the at least two capacitive sensors” which does not appear to be described or disclosed in the specification as originally filed and therefore constitutes new matter. Claim 2 further recites that the motor is “…located between the at least two capacitive sensors of the main body upper shell and the main body lower shell,” however the specification as originally filed does not appear to disclose this limitation and therefore it also constitutes new matter.
6. 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.
7. Claims 2 and 22 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.
8. Claim 2 at line 3 recites the limitation "the same sensing region". There is insufficient antecedent basis for this limitation in the claim.
9. Claim 2 at lines 4-5 recites the limitation "the at least two capacitive sensors of the main body upper shell and the main body lower shell". There is insufficient antecedent basis for this limitation in the claim. Claim 1 appears to have proper antecedent basis for -- the at least two capacitive sensors--.
10. Claim 22 at line 3 recites the limitation "the same sensing region". There is insufficient antecedent basis for this limitation in the claim.
11. Claim 22 at lines 4-5 recites the limitation "the at least two capacitive sensors of the main body upper shell and the main body lower shell". There is insufficient antecedent basis for this limitation in the claim. Claim 21 appears to have proper antecedent basis for -- the at least two capacitive sensors--.
Allowable Subject Matter
12. Claims 1, 3-5, 8, 21, 23-25, 27, 31 and 32 are allowable over the prior art of record. The following is a statement of reasons for the indication of allowable subject matter: regarding claims 1, 3-5, 8 and 31, while the prior art teaches a sex toy, comprising: a shell comprising a main body upper shell and a main body lower shell, forming an insertion portion that is insertable into a human body;
at least two capacitive sensors, including a first capacitive sensor and a second capacitive sensor, at least one of the capacitive sensors being provided in the main body upper shell, and at least one of the capacitive sensors being provided in the main body lower shell;
a motor operable to cause the sex toy to generate vibrations at a first vibration level in response to the first capacitive sensor and the second capacitive sensor being triggered, and to cause the sex toy to generate vibrations at a second vibration level in response to the first capacitive sensor being triggered while the second capacitive sensor is not triggered, wherein the sex toy generates greater vibrations at the first vibration level than at the second vibration level,
and a silicone case that covers the insertion portion where the at least two capacitive sensors are provided, the prior art of record does not teach or fairly suggest a sex toy as claimed by Applicant, wherein the motor is configured to increase vibration intensity of the sex toy incrementally in response to a number of triggered capacitive sensors increasing.
Regarding claims 21, 23-25, 27 and 32, while the prior art teaches an operation method for a sex toy, the sex toy comprising a shell comprising (i) a main body upper shell and a main body lower shell, forming an insertion portion that is insertable into a human body, (ii) at least two capacitive sensors, including a first capacitive sensor and a second capacitive sensor, at least one of the capacitive sensors being provided in the main body upper shell, and at least one of the capacitive sensors being provided in the main body lower shell, (iii) a motor, and (iv) a silicone case that covers the insertion portion where the at least two capacitive sensors are provided, the method comprising:
driving the motor to cause the sex toy to generate vibrations at a first vibration level in response to the first capacitive sensor and the second capacitive sensor being triggered, and
driving the motor to cause the sex toy to generate vibrations at a second vibration level in response to the first capacitive sensor being triggered while the second capacitive sensor is not triggered,
wherein the sex toy generates greater vibrations at the first vibration level than at the second vibration level, the prior art of record does not teach or fairly suggest an operation method for a sex toy as claimed by Applicant, wherein the driving the motor is performed such that vibration intensity of the sex toy incrementally increases as a number of triggered capacitive sensors increases.
Response to Arguments
18. Applicant’s arguments filed 28 April 2026 with respect to the Drawings have been fully considered and persuasive due to cancellation of claim 9, however new grounds of rejection are presented above in light of the amendments to the claims.
20. Applicant’s arguments filed 28 April 2026 with respect to the rejection of claims 1-5, 7-10, 21-25, 31 and 32 under 35 U.S.C. 112(b) have been fully considered and are persuasive, however new grounds of rejection are presented above in light of the amendments to claims 2 and 22.
21. Applicant’s arguments filed 28 April 2026 with respect to the rejection of claims 1-5, 7-10, 21-25, 31 and 32 under 35 U.S.C. 103 citing Veaux in view of Zipper and Lee have been fully considered and are persuasive in light of the amendments.
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 CHRISTINE HOPKINS MATTHEWS whose telephone number is (571)272-9058. The examiner can normally be reached Monday - Friday, 7:30 am - 4:00 pm.
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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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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
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