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 .
Election/Restrictions
Claims 1-8 and 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/25. It is noted that applicant elected Figures 8A-C, claim 19 is directed to non-elected Figure 6C detailing an indentation region and angled tip, therefore claim 19 is withdrawn from consideration at this time.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the language “Disclosed herein” and “Other embodiments are described herein” is not clear and concise language. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claim 18 and the claims that depend therefrom 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. It is unclear what additional method steps are being claimed, Claim 9 from which claim 18 depends, already claims the traversing, unrolling, and engaging steps, are these steps being performed again? How many condoms are required for the method of claim 18 one or two? Is “an opening” of the cylindrical-shaped extension region a second opening different from the cylindrical-shaped extension region opening of claim 1? The Examiner is interpreting claim 18 to be detailing the method of claim 9 with the opening of the cylindrical-shaped extension region being a silicon or latex ring.
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) 9-10, 15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berns (US 2014/0317821) in view of Jaicks (US 4,664,104).
In regard to claim 9, Berns teaches a method for wearing a protective undergarment for prevention of sexually transmitted disease and infections in conjunction with a condom (paragraph 0020), the method comprising: wearing the protective undergarment made of an impermeable material over a pelvic area of the user (see figure 1, paragraph 0014), wherein the protective undergarment includes a raised central and cylindrical-shaped extension region having an opening configured to receive a user's penis (extension region is area surrounding opening and/or the condom coupling member: 145); traversing the penis of the user through the opening of the extension region such that a base region of the user's penis rests with the extension region (figure 2, paragraph 0019); putting a condom over the user's penis from a distal end of the user's penis towards and over the extension region (figure 2 and paragraph 0020), wherein an interface between the condom and the extension region creates a seal containing the user's penis (see figures 3 and 4, paragraphs 0020-0021); and engaging in sexual activity with the condom sealed via the extension region to the protective undergarment worn over the pelvic area of the user (see figures 2-4 and paragraph 0020).
However, Berns fails to teach unrolling a condom over the user's penis from a distal end of the user's penis towards and over the extension region.
Jaicks teaches the method step of unrolling a condom to place it over the user’s penis from a distal end of the user’s penis toward the garment (see figure 4 and column 3, lines 54-61).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the method of wearing a protective undergarment as taught by Berns, with the unrolling condom application as taught by Jaicks, since the protective undergarment of Berns provided with the method step of unrolling the condom to apply to the user’s penis would provide a method to easily apply the condom from the package to the user’s penis without pulling or tugging.
In regard to claim 10, Berns teaches further comprising the undergarment covering one more of: a scrotum, buttocks, anus, perineum, inguinal region, and upper thighs of the user (Figure 1 and paragraph 0022).
In regard to claim 15, Berns teaches wherein the impermeable material is a latex material (paragraph 0017-0018).
In regard to claim 18, Berns teaches wherein the raised central and cylindrical-shaped extension region having an opening configured to receive a user's penis is a ring comprised of one or more of silicon and latex material (ring: the condom coupling member 145, paragraph 0019); traversing the penis of the user through the opening of the ring such that a base region of the user's penis rests with the ring (figure 2, paragraph 0019); putting a condom over the user's penis from a distal end of the user's penis towards and over at least a portion of the ring (figures 2-4 and paragraph 0020), wherein an interface between the condom and the ring creates a seal containing the user's penis (see figures 3 and 4, paragraphs 0020-0021); and engaging in sexual activity with the condom sealed over the ring of the protective undergarment worn over the pelvic area of the user (see figures 2-4 and paragraph 0020).
However, Berns fails to teach unrolling a condom over the user's penis from a distal end of the user's penis towards and over the ring.
Jaicks teaches the method step of unrolling a condom to place it over the user’s penis from a distal end of the user’s penis toward the garment (see figure 4 and column 3, lines 54-61).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the method of wearing a protective undergarment as taught by Berns, with the unrolling condom application as taught by Jaicks, since the protective undergarment of Berns provided with the method step of unrolling the condom to apply to the user’s penis would provide a method to easily apply the condom from the package to the user’s penis without pulling or tugging.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berns (US 2014/0317821) and Jaicks (US 4,664,104) as applied to claim 9 above, and further in view of Wells (US 2010/0300453).
Berns and Jaicks fail to specifically teach the diameter opening of the extension region and the extension region being radially extending to accommodate variable sizes of the user’s penis shaft.
In regard to claim 11, Wells teaches a garment with a latex penis opening/extension region wherein a diameter of the opening of the extension region is 1-2 inches in length (paragraph 0046).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the latex extension region opening of Berns and Jaicks having a diameter of 1-2 inches as taught by Wells, since the opening of the extension region of Berns being 1-2 inches would provide an opening that is of a sufficient size to retain a penis therein with some give to accommodate shafts of different sizes (paragraph 0046 of Wells).
In regard to claim 12, Wells teaches further comprising radially extending the opening of the extension region to accommodate variable sizes of the shaft of the user's penis (paragraph 0046).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the latex extension region opening of Berns and Jaicks to accommodate variable shaft sizes as taught by Wells, since the opening of the extension region of Berns being variable in size would provide an opening that is sufficient to retain a penis therein with some give to accommodate shafts of different sizes (paragraph 0046 of Wells).
In regard to claim 13, Wells teaches further comprising increasing the thickness of the extension region to bolster girth of the shaft of the user's penis for one or more of: (i) enhanced sexual stimulation and (ii) the seal between the extension region and the condom placed over the user's penis and the extension region (paragraph 0039).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the extension region of Berns and Jaicks with a means to bolster the girth of the shaft to enhance sexual stimulation as taught by Wells, since the extension region of Berns provided with an increasing thickness to bolster girth of the shaft would provide a garment to protect from STD’s during intercourse while also providing enhanced sexual stimulation.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berns (US 2014/0317821) and Jaicks (US 4,664,104) as applied to claim 9 above, and further in view of Wells (US 2010/0300453) and Jones (US 2015/0096569).
Berns and Jaicks fail to teach the garment being made from an impermeable breathable fabric and the latex opening of the extension region being attached in a specific manner.
In regard to claim 16, the combined references teach wherein the extension region is comprised of an impermeable latex material (Berns: paragraph 0019) and other regions of the undergarment are comprised of an impermeable breathable fabric material configured for user comfort during wear (Jones: see claim 1), further wherein the latex material of the extension region is affixed to the breathable fabric material of the other regions via one or more of: (i) adhesive material, (ii) electro-sealing, and (iii) stitching (Wells: paragraph 0040).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the material of the extension region and the attaching means of the opening of Berns and Jaicks to be a breathable impermeable material as taught by Jones, since the extension region having a breathable impermeable material would provide a garment that is comfortable, appears traditional, but is protective against STD’s.
It would have been further obvious before the effective filing date to one having ordinary skill in the art to have provided the attachment of the latex impermeable opening to the remainder of the extension region via adhesive/glue as taught by Wells, since the latex opening of the extension region being attached by glue/adhesive would provide a secure means to attach the latex extension opening to the remainer of the garment without having to penetrate the garment lessening the protective properties against STD’s.
Claim(s) 14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berns (US 2014/0317821) and Jaicks (US 4,664,104) as applied to claim 9 above, and further in view of Jones (US 2015/0096569).
Berns and Jaicks fail to specifically teach wherein the impermeable material is a breathable fabric material, wherein the breathable fabric material is configured for user comfort during wear.
In regard to claim 14, Jones teaches wherein the impermeable material is a breathable fabric material, wherein the breathable fabric material is configured for user comfort during wear (see claim 1 and paragraph 0021).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the material of the garment of Berns and Jaicks to be a breathable impermeable material as taught by Jones, since the garment of Berns and Jaicks comprising a breathable impermeable material would provide a garment that is comfortable, appears traditional, but is protective against STD’s.
In regard to claim 17, the combined references teach wherein the extension region is an impermeable breathable fabric material configured for user comfort during wear (Jones: paragraph 0021); and an added latex material including one or more of: (i) a latex coating, (ii) stitched latex, and (iii) threaded latex (Berns teaches latex extension region opened that is made of latex and applied to the opening in the extension region of the garment), wherein the added latex material is configured to enhance one or more of: (a) stretchability of the extension region, (b) impermeability of the extension region, and (c) the seal between the extension region and the condom placed over user's penis and the extension region (see figures 3 and 4 and paragraphs 0020-0021); wherein the added latex material forms a ridge around the circumference of the extension region (Berns: 145, figures 2-4).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the extension region of Berns and Jaicks having a breathable impermeable fabric material as taught by Jones, since the extension region of Berns and Jaicks comprising a breathable impermeable material would provide an extension region surrounding the opening that is comfortable, appears traditional, but is protective against STD’s.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be found cited on PTO-892 form submitted herewith. The cited prior art to Shah (US 2015/0128958) is of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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, Clinton T Ostrup can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732