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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Taiwan on 5/13/2024. It is noted, however, that applicant has not filed a certified copy of the TW113204864 application as required by 37 CFR 1.55.
Drawings
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 “a thickness of the membrane around the two through-holes is thicker than a thickness of any other portion of the membrane” (claims 9-10, the only thickness shown in the drawings is in Figure 7 which appears to show the thickness around the through-holes being less thick than the membrane 1) 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
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.
Claims 1-10 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.
Regarding claim 1, the term “high-density elasticity” in claim 1 is a relative term which renders the claim indefinite. The term “high-density” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Furthermore regarding claim 1 reciting “a membrane… having high-density elasticity”, the claim language is unclear as if this “high-density elasticity” is a specific type of elasticity of which examiner is not clear what type of property that would entail as that is not a normal term in the art when discussing elasticity and the specification does not provide any light on what a “high-density elasticity” would be, or if this is claiming the membrane both has high-density in its material weight/construction and is also elastic. At which point as already discussed above for either option, the term “high-density” is unclear to what the scope of the high-density would be referring for its relativity to other membranes.
Applicant’s specification does provide that in paragraph [0016] that “The membrane 1 may made by latex, synthetic rubber, or polyurethane” thus it will be presumed that this “high-density elasticity” characteristic is inherent within these materials when considering prior art.
Regarding claims 1 and 5-6, the Applicant uses the term “stereoscopic” wherein as defined by The Britannica Dictionary [https://www.britannica.com/dictionary/stereoscopic], “stereoscopic” is defined as “used to describe an image that appears to have depth and solidness and that is created by using a special device (called a stereoscope) to look at two slightly different photographs of something at the same time” and “technical : able to see depth and solidness”, wherein neither of these definitions relate to structure that can be seen in the drawings or discussed in the specification. The specification simply calls the invention having a “stereoscopic pocketed structure 2” in paragraph [0019] and there is no discussion on what it means for this structure being “stereoscopic” and as such the scope of the claim is unclear. For interpretation purposes, a pocketed structure in the prior art that substantially matches that of the pocket in the drawings of the instant application will be presumed to be a “stereoscopic pocketed structure”.
Claims 2-4 and 7-10 rejected as being depending on a rejected claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosogai (US 20220023093 A1).
Regarding claim 1, Hosogai discloses an oral condom 100 (Fig. 1-4) configured to be worn on a user's mouth, lips and tongue (Fig. 1-4, see Abstract worn to engage tongue and thus worn on a mouth and user’s lips), and the oral condom 100 comprising:
a membrane 101 (Fig. 1-4 and [0015] mask body 101 being a membrane) being an elongated film (Fig. 1-4 is an elongated body being thin thus is a “film”, [0015] is “very thin latex”) and having high-density elasticity (see [0015] the mask body 101 being latex provides it being a “high-density elasticity”, see 112b above, wherein it is presumed that as Applicant’s invention is formed of latex to have the property of “high-density elasticity” then so does the invention of Hosogai being a thin latex oral condom have this property), and
the membrane 101 capable of being wrapped around a backside of the user's head (Fig. 1-4 and [0017], the ear loops 105 being a part of the membrane 101 wrap around the back of the ears being a backside of the user’s head, see further [0015] ear loops are formed of latex thus are capable of even being stretched further behind the backside of the user’s head);
the membrane 101 comprising:
two through-holes 105 respectively formed at two ends of the membrane 101 (Fig. 1-4, the two ends of the membrane 101 have ear loops 105 formed therein which are two through holes);
a stereoscopic pocketed structure 104 protruding from the membrane 101 (Fig. 1-4, and [0017], see 112b above regarding “stereoscopic”, wherein the pocket 104 herein substantially matches the drawn pocket structure of the instant application)
the stereoscopic pocketed structure 104 located in a center of the membrane 101 (Fig. 3) and being capable of covering the user's mouth, lips and tongue (see [0017] pocket 104 is fitted for a human tongue, as the invention is formed of stretchable latex thus capable of covering the user’s mouth and lips therein as shown in Figure 4).
Regarding claim 3, Hosogai discloses the invention of claim 1 above.
Hosogai further discloses an upper edge 108 of the membrane 101 (Fig. 3) is configured to cover the user's nose ([0022] the upper edge may cover the user’s nose) and a lower edge 109 of the membrane 101 is configured to cover the user's chin to secure the oral condom without rolling upward ([0020] boundary 109 runs under and thus covers the user’s chin, which will inherently secure the condom such that it doesn’t roll upward).
Regarding claim 5, Hosogai discloses the invention of claim 1 above.
Hosogai further discloses the stereoscopic pocketed structure 104 comprises a smooth surface (Fig. 1-4, the shown pocket structure 104 is smooth, see [0019] wherein the material is “thin and flexible”), or the stereoscopic pocketed structure comprises an uneven texture or a grained texture.
Regarding claim 7, Hosogai discloses the invention of claim 1 above.
Hosogai further discloses being colored or flavored ([0023] flavors may be added to the mask material).
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) 2, 4, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosogai (US 20220023093 A1) in view of Bloodsaw (US 6418931 B1).
Regarding claim 2, Hosogai discloses the invention of claim 1 above.
Hosogai does not disclose a hook detachably mounted through the two through-holes, such that the membrane is capable of being wrapped around the backside of the user's head.
However, Bloodsaw teaches an analogous oral condom 10/110/210 (title, Fig. 1-3) having an analogous membrane 14 (Fig. 1-3) and having analogous two through-holes 220 respectively formed at two ends 218 of the membrane 14, and the membrane being capable of being wrapped around a backside of the user's head (Fig. 3 and 13, the ends 218 wrap to meet each other to be connected via fastener 30), wherein Bloodsaw provides a hook 30 (Fig. 10 and 13) detachably mounted through the two through-holes 218 (Fig. 13), such that the membrane is capable of being wrapped around the backside of the user's head (Fig. 3 and 13) (Col. 6 lines 14-28).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have substituted the two through-holes 105 of Hosogai to be that of the two through-holes 220 and the hook 30 as taught by Bloodsaw in order to enable the oral condom to be used by people that are physically challenged (Bloodsaw Col. 6 lines 14-28).
Regarding claim 4, Hosogai in view of Bloodsaw discloses the invention of claim 2 above.
Hosogai further discloses an upper edge 108 of the membrane 101 (Fig. 3) is configured to cover the user's nose ([0022] the upper edge may cover the user’s nose) and a lower edge 109 of the membrane 101 is configured to cover the user's chin to secure the oral condom without rolling upward ([0020] boundary 109 runs under and thus covers the user’s chin, which will inherently secure the condom such that it doesn’t roll upward).
Regarding claim 6, Hosogai in view of Bloodsaw discloses the invention of claim 4 above.
Hosogai further discloses the stereoscopic pocketed structure 104 comprises a smooth surface (Fig. 1-4, the shown pocket structure 104 is smooth, see [0019] wherein the material is “thin and flexible”), or the stereoscopic pocketed structure comprises an uneven texture or a grained texture.
Regarding claim 8, Hosogai discloses the invention of claim 6 above.
Hosogai further discloses being colored or flavored ([0023] flavors may be added to the mask material).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosogai (US 20220023093 A1) in view of Morissette (US 20090205668 A1).
Regarding claim 9, Hosogai discloses the invention of claim 1 above.
Hosogai does not disclose a thickness of the membrane around the two through-holes is thicker than a thickness of any other portion of the membrane.
However, in the same field of endeavor, Morissette teaches an analogous condom (title) have analogous through holes 23 (see [0030]), wherein the periphery of the holes 23 may have an increased thickness in order to reduce the tearing of analogous thin latex material of the condom (see [0030-0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided an increased thickness to the periphery of the through holes 105 of Hosogai in order to reduce the potential of tearing as taught by Morissette in order to reduce the tearing of thin latex material (Morissette [0030-0031]), wherein this thickness would be thicker than a thickness of any other portion of the membrane as Hosogai [0015] provides before modification that the ear loops 105 are the same thickness as the mask body being “very thin”.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosogai (US 20220023093 A1) in view of Bloodsaw (US 6418931 B1), in view of Morissette (US 20090205668 A1).
Regarding claim 10, Hosogai in view of Bloodsaw discloses the invention of claim 8 above.
Hosogai as combined with Bloodsaw does not disclose a thickness of the membrane around the two through-holes is thicker than a thickness of any other portion of the membrane.
However, in the same field of endeavor, Morissette teaches an analogous condom (title) have analogous through holes 23 (see [0030]), wherein the periphery of the holes 23 may have an increased thickness in order to reduce the tearing of analogous thin latex material of the condom (see [0030-0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided an increased thickness to the periphery of the through holes 105 of Hosogai / holes 220 of Bloodsaw in order to reduce the potential of tearing as taught by Morissette in order to reduce the tearing of thin latex material (Morissette [0030-0031]), wherein this thickness would be thicker than a thickness of any other portion of the membrane as Hosogai [0015] provides before modification that the ear loops 105 are the same thickness as the mask body being “very thin”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 4949731 A – texture and flavor
US 4815456 A – planar oral condom
US 1986988 A – through holes 3 with thickness
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN S ALBERS whose telephone number is (571)272-0139. The examiner can normally be reached Monday-Friday 7:30 am to 5:00 pm.
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/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786