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 .
Specification
The amendment filed 10/28/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “a maximum lateral dimension” of the neck and “the maximum lateral dimension” of the main body and clamping part are not supported by the specification as originally filed. While the figures as originally filed show a neck, now labeled -2117- having a lateral dimension which is smaller than the lateral dimension of the main body and clamping part, the specification does not provide support for the dimensions shown in the figure to be a “maximum lateral dimension” in either case.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
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.
Claims 1, 6, 7, and 17-24 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. The specification as originally filed does not describe “a maximum lateral dimension” of the neck, main body or clamping part.
Claim Rejections - 35 USC § 103
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 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, 6, 7 and 17-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosetoy(Rose Tongue Vibrator with Bullet Vibrator Pro)(Bottom left of page 2)(hereinafter Rose) in view of Guo 11,806,306(cited by applicant).
Claim 1 – Rose teaches a massager having a first end with a tongue in a cavity defined between a first engagement portion and a second engagement portion; a positioning portion, bullet end, which performs as a massaging portion; and a driving member, vibrator, provided in the positioning portion to drive the positioning portion to vibrate.
Rose does not teach a clamping part, formed from the first engagement portion and the second engagement portion opposite to each other and having a driving mechanism, comprising at least one swing arm which is disposed in at least one of the first engagement portion and the second engagement portion for driving the at least one of the first engagement portion and the second engagement portion to move toward or away from the other.
Guo teaches a stimulation device including a clamping part -110- housing swing arms -410- and -420- opposite each other, forming a cavity holding element -212-, a main body -100-, a driving mechanism including at least swing arms -410- and -420-. Guo teaches a connecting position, unnumbered, see figure 3, the position shown under lead line -200- connecting main body -100- and clamping part -110-. The connection position has a lateral dimension less than the lateral dimension of main body -100- and clamping part -110-.
It would have been obvious to one of ordinary skill in the medical arts at the time the invention was effectively filed to use the stimulation device of Guo in place of the tongue massager taught by Rose to gain the advantage of having clamping portion -110- having pivot arms -410- and -420- that provide moving(toward and away) from each other for stimulation as taught by Guo.
Such a modification would produce predictable results of the device of Rose using the stimulation device taught by Guo in place of the massager(tongue end) of Rose and have a high expectation of success because Guo teaches clamping portion including two pivot arms -410- and -420- are old and well known in the medical arts.
Claim 6 – Rose teaches a main body(lip/tongue end) and a connecting portion(flexible middle portion), the clamping part(lips) is connected to the main body, the connecting portion is made of a flexible material(see different positions shown in the figures of Rose), the connecting portion is disposed between the main body(at lips and tongue) and the positioning portion(bullet end), and the connecting portion is bendable(see different positions in the figures of Rose), the connecting portion of Rose is “a soft tube” because it is bendable as shown in the figures of Rose.
Claim 7 – Rose teaches the connecting portion is a long and small cylinder, and a length of the connecting portion is larger than a length of any of the main body and the positioning portion, see figures in Rose.
Claim 17 - Rose as modified by Guo teaches the at least one swing arm -410- consists of a first swing arm -410- , the first swing arm is disposed in the first engagement portion, -110-, and the first swing arm -410- is configured to drive the first engagement portion to move toward or away from the second engagement portion, portion of -110- covering -420-.
Claim 18 – Rose as modified by Guo teaches a device as claimed including the structure of the stimulation device as taught by Guo shown in figure 8 wherein the driving mechanism comprises a driving source -480-, an eccentric wheel –470- through -472- connected to a driving shaft -481- of the driving source -480-, and a swing member -410- that is connected to the eccentric wheel -470-; an eccentric connection hole -432- is defined in one side of the eccentric wheel -470- for connecting with the driving shaft -481- of the driving source -480-; the swing member -410- comprises a mounting post -411-, a collar -450- and the first swing arm -410- respectively connected to two sides of the mounting post, the -410- side and the -450- side, the mounting post is rotatably supported through a rotation shaft -411-; the collar -450- has a slide groove -412- so that it can be arranged around the eccentric wheel -470-, and the eccentric wheel -470- is slidably received in the slide groove -412- by element -433-.
Claim 19 – see figure 8 of Guo.
Claim 20 – Rose as modified by Guo teaches at least one circuit board –130- and a battery -140- connected to switch -120-, the massager further comprises an inner housing, unnumbered holding the battery and circuit board made of a rigid material(inherent to hold the elements), the inner housing is configured to receive the battery and the circuit board. As taught by Guo the battery -140- is housed in element -100- and there is a vibrator in the second end as shown in Rose as such it would be inherently required to connect the battery -140- to the vibrating element in the opposite end with a wire(cable) through the connecting portion.
Claim 21 – Rose as modified by Guo teaches the clamping part further comprises, as shown in figure 3 of Guo a protrusion -212- located in the cavity(unnumbered) and between the first engagement portion, -110- at -410- and the second engagement portion -110- at -420-, and the protrusion -212- is made of a flexible material, soft material -212-, see column 13, lines 34-60 of Guo; the massager further comprises at least one vibration member -211-, and the at least one vibration member is disposed in at least one of the first engagement portion, the second engagement portion and the protrusion.
Claim 22 – Rose as modified by Guo teaches two ends of the first engagement portion are respectively connected to two ends of the second engagement portion to define two opposite connection portions, and the first engagement portion and the second engagement portion enclose the cavity, as shown in figures 1 and 3 of Guo.
Claim 23 - Rose as modified by Guo teaches the massaging portion -212- is an ellipsoid; the driving member -480- in the positioning portion -100- comprises a vibration motor -211- to vibrate the positioning portion, an axis of the vibration motor and a long axis of the ellipsoid are coaxial as shown in figure 3 of Guo, when the device of Rose is in a straight configuration.
Claim 24 – as shown in Rose, figure 1, the clamping part, the positioning portion, and the main body are formed in one piece.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 6 and 17-24 have been considered but are moot because the new ground of rejection is based on Rose in view of Guo not Rose as modified by Chen, these rejections have been withdrawn. Wherein Guo teaches a connecting position having a lateral diameter smaller than the lateral diameter of the clamping part and the main body as set forth above, as newly included in the claims as amended on 10/28/2025.
Regarding Claim 23, it is the position of the office that the distal end of element -212- is ellipsoidal, see figure 3.
The applicant further argues that new claim 24 should be allowable because new claim 24 requires construction “made in a single undivided piece”. However, no such language is presented in claim 24. Claim 24 does include the parts of the device are formed in one piece. It is the position of the office that Rose teaches a stimulation device formed in one piece and that Rose modified by Guo would produce a modified Rose that is formed in one piece.
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 SAMUEL G GILBERT whose telephone number is (571)272-4725. The examiner can normally be reached MaxiFlex; M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Marmor can be reached at 571-272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMUEL G GILBERT/Primary Examiner, Art Unit 3791