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
Applicant’s amendment, filed 26 September 2025, is acknowledged. Claims 1-3, 5-7, 9, 11, 14, 15, and 19 are amended. Claim 20 is new. Claims 1-20 are pending in the instant application.
Response to Arguments
Applicant’s argument, filed 26 September 2025, with respect to the objection to claim 19 has been fully considered and are persuasive. The objection to claim 19 has been withdrawn.
Applicant’s arguments with respect to the rejection(s) of claim 1 under 35 USC 103 have been fully considered and are persuasive as necessitated by the amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sloan (US20190350800A1) and further in view of Tang (US20210186798A1) and Wang (CN217761930U). Examiner respectfully disagrees with the argument “Sloan and Wang did NOT provide any technical inspiration on the need for two different motions of the massage member, and there is NO motivation for those skilled in the art, to replace the "gripper" of Sloan with the occlusion mechanism as taught by Wang.” Examiner views the limitations of claim 1 as a first stimulation unit, as amended to include a first motor, mounted on a second stimulation unit, as amended, to include a second motor, to move the first stimulation unit, including the first motor, in a reciprocal axial direction. Sloan teaches the axial reciprocal motion of a first stimulation unit (the gripper), by a first motor, but does not teach a first motor that would actuate the first stimulation device. Tang teaches a first stimulation unit, to include a motor that rotates a massage sleeve in a circular motion, mounted on a second stimulation unit, to include a second motor, to move the first stimulation device, including the motor, in a reciprocal axial direction. As Tang teaches a massager for male genitalia wherein the device has two motions, one being axial, it would have been obvious to modify Sloan with Wang, wherein the gripper of Sloan is replaced with the occlusion stimulation unit of Wang, as Wang discloses that occlusion stimulation in combination of with axial reciprocal motion is an effective massage therapy.
Applicant's arguments regarding the 35 USC 101 rejection of claims 14-19 have been fully considered but they are not persuasive. The amendments still only recite the actuation of the device. The device, as disclosed in the rejection of claim 1 below, would perform the steps of opening the swinging unit a function of the first stimulation unit, moving the second stimulation unit to a first position, closing the swinging unit a function of the first stimulation unit, and moving the second stimulation unit to a first position. This merely intended use of the device.
Applicant's arguments regarding the 35 USC 103 rejection of claim 14 have been fully considered but they are not persuasive. As disclosed below, Sloan (US20190350800A1) in view of Tang (US20210186798A1) and Wang (CN217761930U) disclose the device of claim 1. Watzlawik (US10307327B1) discloses an effective method of male stimulation, wherein the device is opened allowing for the insertion of the penis, the device moved to a first position, the device is closed, and the device is moved to a second position. As the device of modified Sloan can perform this method, it would have been obvious to use the device of modified Sloan to perform the method disclosed by Watzlawik due to it’s disclosed efficacy.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-19 are rejected under 35 U.S.C. 101 the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it reciting the use of the device of claim 1. As the claim 14, recites basic actuations of the device in claim 1 (actuate the first stimulation unit, actuate the second stimulation unit, actuate the first stimulation unit, and actuate the second stimulation unit) without any intended purpose therefore the steps of claim 14 do not amount to more than a use claim. The limitations of dependent claims 15-19 do not move claim 14 to beyond a use claim.
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.
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.
Claim(s) 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sloan (US20190350800A1) in view of Tang (US20210186798A1) and further in view of Wang (CN217761930U).
Regarding claim 1, Sloan discloses a massage device (Abstract) comprising a chamber configured for accommodating a male penis (Abstract); a first stimulation unit (Figure 1, gripper “109”) wherein the first stimulation unit comprises a mounting seat (Figure 1, bracket “107”); and a second stimulation unit (Paragraph [0065]) comprising a motor (Figure 1, DC motor “102”) connected to the mounting seat of the first stimulation unit in a transmission way (Figure 1), the motor being configured for driving the first stimulation unit to move along an axial direction of the chamber (Paragraph [0065]).
Sloan fails to disclose the first stimulation unit comprises a first motor set in the mounting seat, a stimulation device is rotatably or movably connected to the mounting seat, and the first motor configured for driving the stimulation device and a second stimulation unit comprising a second motor. Tang discloses a massager for male genitalia (Abstract) wherein the massager includes a rotation unit comprising a first motor for rotating the massage sleeve (Paragarph [0007], Figure 2, first motor “152”, massage sleeve “13”) wherein the rotation unit is mounted on a connecting seat (Figure 2, “151”) which is mounted on slide rods (Figure 2 “147”) which allow a second motor (Figure 2 “142”) to drive the massage sleeve and rotation unit in a reciprocal axial motion (Paragraph [0026]). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massage device as taught by Sloan, with the first stimulation unit comprising a first motor set in the mounting seat, a stimulation device is rotatably or movably connected to the mounting seat, and the first motor configured for driving the stimulation device, wherein the first stimulation unit, including the first motor, is driving in an reciproxal axial direction by a second motor as taught by Tang, since such a modification would provide the predictable results of an all-around automatic massage of a user's penis and treat male hypoactive sexual desire disorder, premature ejaculation, erectile dysfunction, sexual dysfunction, and the like (Paragraph [0005]).
Modified Sloan fails to disclose a swinging unit comprising a plurality of swinging bars and the first stimulation unit being connected to the swinging bars, configured for driving the swinging bars to move towards or away from a central axis of the chamber. Wang discloses a health device which comprises a swinging unit comprising a plurality of swinging bars (Figure 7, “21” and “22”) and the first stimulation unit (Figure 8 “17”) being connected to the swinging bars (Figure 8), configured for driving the swinging bars to move towards or away from a central axis of the chamber (Abstract). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify massage device as taught by modified Sloan, replacing the rotational first stimulation unit with the health device as taught by Wang, since such a modification would provide the predictable results of providing a greater occlusion effect that can be controlled by the user for greater stimulation (Page 5).
Regarding claim 2, Wang further discloses each of the swinging bars is rotatably connected to the mounting seat (Figure 8), and the first motor is configured for driving the swinging bars to swing towards or away from the central axis of the chamber (Figure 8).
Regarding claim 3, Wang further discloses one end of the swinging bar is configured as a connecting end (Figure 8 “2231” and “2131”) and another end of the swinging bar is configured as a swinging end (Figure 8), the connecting ends of the swinging bars are connected to the first motor in a transmission way (Figure 8), and the swinging ends of the swinging bars extend out of the mounting seat for clamping the male penis (Figure 8).
Regarding claim 4, Wang further discloses a middle portion of each of the swinging bars is rotatably connected to the mounting seat through a pivot that extends perpendicular to the central axis of the chamber (Figure 8).
Regarding claim 5, Wang further discloses the first stimulation unit further comprises a connecting base (Figure 8 “12”) configured for moving along the central axis of the chamber under the driving of the first motor (Figure 8), and the connecting ends of the swinging bars are rotatably connected to the connecting base (Figure 8).
Regarding claim 6, Wang further discloses the first stimulation unit further comprises a screw rod (Figure 8 “11”) configured with one end being connected to the first motor and another end being threadedly engaged into the connecting base (Figure 8).
Regarding claim 7, Wang further discloses the first motor is a rotary motor (Figure 8, “17”) and discloses openings for control buttons (Figure 6) but fails to explicitly disclose a controller is provided inside the mounting seat for controlling a rotary direction of the rotary motor. Tang discloses a controller is provided inside the mounting seat of the second stimulation unit for controlling a linear direction of the linear motor (Figure 2, “16” control unit). As Wang provides space for an integrated circuit and control buttons inside the mounting seat for controlling a rotary direction of the rotary motor it would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the first stimulation unit as taught by Wang further modifying modified Sloan, with a control unit being provided inside the mounting seat for controlling a rotary direction of the rotary motor as taught by Tang, since such a modification would provide the predictable results of controlling the first stimulation unit in manner easily to access by the user.
Regarding claim 8, Wang further discloses at least one connecting rod (Figure 8 “26” and “27”) is hinged between each of the swinging bars (Figure 8 “21” and “22”) and the connecting base (Figure 8 “12”).
Regarding claim 9, Sloan, as modified in claim 1, further discloses wherein the second stimulation unit comprises a sliding member (Figure 1 “107” bracket) and a second driving member configured for driving the sliding member to move linearly (Figure 1 “102” motor).
Modified Sloan does not disclose the mounting seat is fixed to the sliding member in the axial direction of the chamber. As Sloan discloses the portion to grip the users (gripper “109”) is mounted to the sliding member and Wang discloses the housing as the mounting seat, it would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massager as taught by modified Sloan, with the mounting seat being fixed to the sliding member in the axial direction of the chamber since such a modification would provide the predictable results of allowing the first stimulation unit as disclosed by Wang to move in a direction that would provide appropriate stimulation to a user.
Regarding claim 10, Sloan, as modified in claim 9, does not disclose in the embodiment of Figure 1, one of the sliding member and the mounting seat is provided with a plug-in hole, and another one of the sliding member and the mounting seat is provided with a protrusion that is engaged into the plug-in hole. Sloan, in a second embodiment in Figure 18, discloses the mounting seat is provided with a plug-in hole (Figure 18, brackets “1810a-d”) and the sliding member is provided with a protrusion that is engaged into the plug-in hole (Figure 18, guide rods “1820” and “1830”). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massager as taught by modified Sloan, with the mounting seat being provided with a plug-in hole and the sliding member being provided with a protrusion that is engaged into the plug-in hole as taught by a second embodiment of Sloan, since such a modification would provide the predictable results of providing a rotation motion in addition to the linear motion for greater stimulation (Paragraph [0078]).
Regarding claim 11, Sloan as modified in claim 9, further discloses the second stimulation unit further comprises a rotary member (Figure 1, screw shaft “104”) being rotatable about an axis which is collinear with or parallel to the central axis of the chamber under the driving of the second driving member (Figure 1, screw shaft “104”), a spiral-shaped first sliding groove is provided on the rotary member (Figure 1, screw shaft “104”), and a first sliding portion is provided on the sliding member and engaged into the first sliding groove in a movable manner (Figure 1, nut “106”).
Regarding claim 12, Sloan as modified in claim 11, further discloses the first sliding groove is axisymmetric (Figure 1, screw shaft “104”, a screw shaft has a thread that is symmetric around the axis).
Regarding claim 13, Sloan as modified in claim 11, further discloses the second stimulation unit further comprises a guide member being fixedly set inside the massage device (Figure 1, guide rods “108”), the guide member is provided with a second sliding groove that extends axially (Figure 1, guide rods “108” the circumference of the guide rods is the sliding groove that the sliding portion moves along), and a second sliding portion (Figure 1, bracket “107”), is provided on the sliding member and engaged into the second sliding groove in a movable manner (Figure 1).
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sloan (US20190350800A1), Tang (US20210186798A1), and Wang (CN217761930U), as applied to claim 1 above, and further in view of Watzlawik (US10307327B1).
Regarding claim 14, Sloan, as modified in claim 1, discloses the device of claim 1 but fails to explicitly disclose a method of using the device of claim 1. Watzlawik discloses a method of operation of an ergonomic device for exercising a male genital organ (Figure 11, Abstract). Watzlawik discloses enabling the swinging unit of the massage device at a first position and in an open state and at a first position wherein distal ends of the swinging bars are adjacent to a glans penis (Figure 10, Figure 11, “80” the device, as shown in Figures 1-3 is in an open state by default. As penis is inserted into the open device the glans penis would be adjacent to the swinging bars, which would be the silicone sleeves “24” and “28” in figure 5); driving the swinging unit to move along the axial direction of the chamber from the first position to a second position wherein at the second position, the male penis is accommodated into the chamber of the swinging unit (Figure 11, “82”, as steps “86” and “88” require the device to move along the shaft to the head of the male genitals, a user would have to move the device in an axial direction from the first position in step “80” in order to insert the male genital organ place the device at the organ base in step “82”); enabling the swinging unit at the second position in a clamping state to make the distal ends of the swinging bars clamp a root of the male penis (Figure 10, Figure 11, “84”); and driving the swinging unit to move along the axial direction of the chamber from the second position to the first position (Figure 11 “86”). As the modified device of Sloan is configured to accomplish the steps 1-4, it would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to use the massage device as taught by modified Sloan, with the method as taught by Watzlawik, since the method disclosed would provide the desired stimulation to the user by the modified device disclosed by Sloan while providing exercise for the male genital organ as disclosed by Watzlawik (Col 1, lines 16-17).
Regarding claim 15, Watzlawik further discloses the swinging unit is always kept in the clamping state (Figure 11 “84” and “86”) to make the distal ends of the swinging bars clamp the penis (This would be a function of the modified Sloan device as disclosed in claim 1).
Regarding claim 16, Sloan, as modified in claim 14, does not explicitly disclose in step S4, the swinging bars of the swinging unit are driven to move towards or away from the central axis of the chamber to change the state of the swinging unit. Wang discloses the swinging bars can be adjusted as needed by the user (Page 10). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by modified Sloan, with in step S4, the swinging bars of the swinging unit are driven to move towards or away from the central axis of the chamber to change the state of the swinging unit as taught by Wang, since such a modification would provide the predictable results of providing the desired stimulation for the user.
Regarding claim 17, Watzlawik further discloses in step S2, the swinging unit is always kept in the open state (Figure 11, “80” the device, as shown in Figures 1-3 is in an open state by default and would be required to be open for insertion of the genital).
Regarding claim 18, Sloan, as modified in claim 14, does not explicitly disclose in step S2, the swinging bars of the swinging unit are driven to move towards or away from the central axis of the chamber to change the state of the swinging unit. Wang discloses the swinging bars can be adjusted as needed by the user (Page 10). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by modified Sloan, with in step S2, the swinging bars of the swinging unit are driven to move towards or away from the central axis of the chamber to change the state of the swinging unit as taught by Wang, since such a modification would provide the predictable results of providing the desired stimulation for the user.
Regarding claim 19, Watzlawik further discloses in the open state, distal ends of the swinging bars of the swinging unit are relatively away from each other, so as to release the male penis inside the chamber (Figure 3, silicone sleeves “24” and “28”); and in the clamping state, distal ends of the swinging bars are relatively adjacent to each other, so as to clamp the male penis inside the chamber (Figure 8).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sloan (US20190350800A1), Tang (US20210186798A1), and Wang (CN217761930U), as applied to claim 1 above, and further in view of Lan (CN211584149U).
Regarding claim 20, Sloan, as modified in claim 1, fails to disclose the swinging bars comprises at least three swinging bars arranged along a circumferential direction of the mounting seat. Lan discloses a massage device, wherein the massage device comprises three to five swinging massage fingers uniformly distributed on the circumference (Page 2, Figures 1-3, “7”) of the mounting seat (Figures 1 and 3, Moving block “5”). It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the massage device as taught by modified Sloan, with the swinging bars comprises at least three swinging bars arranged along a circumferential direction of the mounting seat as taught by Lan, since such a modification would provide the predictable results of even distributing the massage effect (Page 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shahoain (US20180140502) discloses a stimulation device with two motors, one for axial motion and the other for constriction by rotation.
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 Marc D Honrath whose telephone number is (571)272-6219. The examiner can normally be reached M-F 7:30-5:00.
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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 at (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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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/M.D.H./Examiner, Art Unit 3791
Prosecution Insights