Detailed Action
Claim Rejections - 35 USC § 102
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) A person shall be entitled to a patent unless—
(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
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by How to Put on a Condom (as evidenced by HTPOAC.pdf and Youtube.com).
Regarding claim 2, HTPOAC discloses a simulated tissue structure (pp. 1-3, simulated phallus) comprising a ring-shaped band having a stretched state and a relaxed unstretched state (p. 1), and an outer layer attached to the ring-shaped band while the ring-shaped band is in the stretched state (p. 3), the outer layer forming a cylindrical shape extending along a longitudinal axis between a proximal end and a distal end (p. 3), wherein the ring-shaped band is configured to return to the relaxed unstretched state (p.1, latex condoms are elastic by nature), wherein the simulated tissue structure has a first diameter and a location along the longitudinal axis of the simulated tissue structure where the ring-shaped band is in the relaxed unstretched state has a second diameter smaller than the first diameter (p. 3).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. If this application names joint inventors, Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over HTPOAC in view of Resnic (US 20110303226 A1).
Regarding claim 3, Resnic suggests—where HTPOAC does not disclose—wherein the outer layer comprises of silicone (claim 1). It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the invention to combine the disclosures of HTPOAC and Resnic in order to make the outer layer more durable.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over HTPOAC in view of Resnic and Watson (US 20040163652 A1).
Regarding claim 4, Watson suggests—where HTPOAC does not disclose— wherein the ring-shaped band comprises of silicone (claim 4). It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the invention to combine the disclosures of HTPOAC, Resnic and Watson in order to make the band more durable.
Regarding claim 5, HTPOAC discloses wherein the location along the longitudinal axis of the simulated tissue structure where the ring-shaped band is in the relaxed unstretched state is at the proximal end of the outer layer (Fig. 3).
Allowable Subject Matter
Claims 6-21 are 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.
Conclusion
The prior art considered pertinent to applicant's disclosure and not relied upon is made of record on the attached PTO-892 form.
Lipinski et al (US 8250672 B2) discloses a nitril-coated simulated tissue structure.
Lesh (US 8250672 B2) discloses a simulated tissue implant.
Melcher (US 4819478) discloses an insertable surgical device.
Sparks (US 3806573) discloses a method for making surgical tissue grafts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE ROWLAND whose telephone number is (469) 295-9129. The examiner can normally be reached on M-Th 10-8. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Dmitry Suhol can be reached at (571) 272-4430. The fax number for the organization where this application or proceeding is assigned is (571) 273-8300.
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.
Applicant may choose, at his or her discretion, to correspond with Examiner via Internet e-mail. A paper copy of any and all email correspondence will be placed in the appropriate patent application file. Email communication must be authorized in advance. Without a written authorization by applicant in place, the USPTO will not respond via e-mail to any correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122.
Authorization may be perfected by submitting, on a separate paper, the following (or similar) disclaimer:
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Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.
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See MPEP 502.03 for more information.
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/STEVE ROWLAND/Primary Examiner, Art Unit 3715
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