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 .
Claim Objections
Claim 9 is objected to because of the following informalities:
Applicant is advised that should claim 9 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Appropriate correction is required.
Claims 8 and 10-12 are objected to because of the following informalities: as best understood it appears claims 8 and 12 should have depend on independent claim 7 and claims 9-11 should have depend on claim 8. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 depends on claim 2; both claims subject matter are substantially duplicates and is considered an improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lee U.S. Publication No. (2013/0062226 A1) in view of Rhodes U.S. Publication No. (2014/0076329 A1).
With respect to claim 1, Lee substantially discloses a kit comprising: at least three male condoms or prophylactics (122a, 122b, 122c, 122d fig.3) and [0028]; wherein the at least three male condoms (122a, 122b, 122c, 122d fig.3) are individually packaged in separate compartments (118, as shown in figs.1-2). Note: a kit is a combination of multiple components or elements sold together as a package or kit.
Lee substantially discloses the invention as claimed except at least three wearable constriction devices that are physically separate from the condoms; and, the at least three wearable constriction devices are packaged together in a single compartment that is separate from the three male condom compartments.
Rhodes however, teaches a male condom skin dressing, a kit and a method of using it (abstract) comprising a package having two compartments; a first compartment for storing a condom and a second compartment for storing strips having constriction devices (30); in [0030, Rhodes further teaches while a single strip may be used, two or more overlapping strips may also be employed, for extra protection and security].
In view of the teachings of Rhodes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the kit of Lee by incorporating at least three wearable constriction devices that are physically separate from the condoms; and, the at least three wearable constriction devices are packaged together in a single compartment that is separate from the three male condom compartments in order to make both items available in a single sealed package which can be provided and sold as a single unit, such as in dispensing machines.
With respect to claim 7, Lee substantially discloses a kit comprising: at least three male condoms or prophylactics (122a, 122b, 122c, 122d fig.3) and [0028]; wherein the at least three male condoms or prophylactics (122a, 122b, 122c, 122d fig.3) are individually packaged in separate compartments (118, as shown in figs.1-2) and a separate lubricant compartment (116, figs.1-4) comprising individually packed lubricants and each sealed packages are separated by perforations [0027] and (124a, fig.1) and [0022]. Note: a kit is a combination of multiple components or elements sold together as a package or kit.
Lee substantially discloses the invention as claimed except at least three wearable constriction devices that are physically separate from the condoms; and, the at least three wearable constriction devices are packaged individually in separate compartments that are also separate from the three male condom compartments.
Rhodes however, teaches a male condom skin dressing, a kit and a method of using it (abstract) comprising a package having two compartments; a first compartment for storing a condom and a second compartment for storing strips having constriction devices (30); in [0030, Rhodes further teaches while a single strip may be used, two or more overlapping strips may also be employed, for extra protection and security].
In view of the teachings of Rhodes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute one known element for another to obtain predictable results; substituting the individually packed lubricant for the at least three wearable constriction devices packaged individually in separate compartments would yield the predictable results of so that each sealed package can be stripped off one at a time.
Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509 (BPAI, 2007) (citing KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007). Accordingly, Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1395 (2007).
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) 2-3 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee/Rhodes as applied to claim 1 above, and further in view of Strauss et al. U.S. Patent No. (6,135,112).
With respect to claims 2 and 8, the combination of Lee/Rhodes substantially discloses the invention as claimed except the at least three constriction devices each comprise a single ring.
Strauss et al. however, teaches at least three constriction devices (5, 7, 9, fig.1) comprising rings.
In view of the teachings of Strauss et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the constriction devices of Rhodes/Lee by incorporating a single ring in order to reduce slippage (Abstract) of Strauss et al.
With respect to claims 3 and 9, the combination of Lee/Rhodes/Strauss et al. substantially discloses the invention as claimed. Strauss et al. further teaches each ring has an internal diameter that is different than the internal diameter of the other rings ([Col.4], lines 1-7).
Claim(s) 4-5 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee/Rhodes/Strauss et al. as applied to claim 2 above, and further in view of Antrag (DE 4409721 A1).
With respect to claims 4 and 10, the combination of Lee/Rhodes/Strauss et al. substantially discloses the invention as claimed except the at least three wearable rings are detachably coupled to each other by at least one extension.
Antrag however, teaches a penis ring (P, fig.1) having a structure or an extension (K) through slot (S). The structure is made of the same material as, in one piece with, the penis ring. The structure can be attached to the penis ring by screws, hooks, snap closure, adhesive etc., and can be made of a different material from that of the ring. The fixture strip can be made of rubber band, tubing, threads, non-elastic strip, of plastics, textile, leather etc. (abstract).
In view of the teachings of Antrag, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the kit of Lee/Rhodes/Strauss et al. by incorporating a fastener, such as, hooks which would allow the at least two wearable rings to be detachably coupled to each other by at least one extension in order to removably couple the at least two wearable rings.
With respect to claims 5 and 11, the combination of Lee/Rhodes/Strauss et al./Antrag substantially discloses the invention as claimed except at least three wearable rings are detachably coupled to each other by at least two extensions. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a second extension in order to removably couple the at least three wearable rings, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee/Rhodes as applied to claim 1 above, and further in view of Hess U.S. Patent No. (5,370,131).
With respect to claims 6 and 12, the combination of Lee/Rhodes substantially discloses the invention as claimed except the at least three wearable constriction devices are made from silicone.
Hess however, teaches condom retainer ring structure (20, fig.4) made of a silicon elastomer ([Col.4], lines 23-29).
In view of the teachings of Hess, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the at least three wearable constriction devices of Lee/Rhodes to be formed from silicone since the material content makes the condom retainer ring structure highly elastic and stretchable to be received comfortably over scrotoms of a wide range of sizes and shafts of penises of a range of diameters ([Col.4], lines 24-29) of Hess.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 21-22 of U.S. Patent No. (12,390, 360 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patent application.
Claim 7 of the instant application recites: a kit comprising: a) at least three male condoms; and b) at least three wearable constriction devices that are physically separate from the condoms; wherein the at least three male condoms are individually packaged in separate compartments, and, the at least three wearable constriction devices are packaged individually in separate compartments that are also separate from the three male condom compartments.
Claim 18 of U.S. Patent No. (12,390, 360 B2) recites: a kit comprising: a) at least one male condom, the at least one male condom having: i) a condom base; and ii) at least one tubular sheath; b) at least one wearable constriction device that is physically separate from the condom, wherein the at least one wearable constriction device are physically separate from each other; and c) a single package comprising at least one internal compartment, wherein the at least one condom and the at least one wearable constriction device are contained in the at least one internal compartment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 7 of the current application and claim 18 of U.S. Patent No. (12,390, 360 B2) lies in the fact that the patented claims includes many more elements and is thus much more specific. Thus the invention of claim 18 of U.S. Patent No. (12,390, 360 B2) is in effect a “species” of the “generic” invention of current application claim 7. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 7 of the current application is anticipated by claim 18 of U.S. Patent No. (12,390, 360 B2), it is not patentably distinct from claim 18 of U.S. Patent No. (12,390, 360 B2).
All of the limitations of claim 8 can be found in claim 22 of U.S. Patent No. (12,390, 360 B2).
All of the limitations of claim 9 can be found in claim 21 of U.S. Patent No. (12,390, 360 B2).
Conclusion
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786