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
This office action is responsive to an amendment filed on 3/12/2026. As directed by the amendment, claims 1, 6-9, 12, 16 were amended, claim 11 was cancelled and new claims 17-19 were added. Thus, claims 1-10 and 12-19 are presently pending in this application.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the limitations “a driving member…configured to cause the massage member to swing in opposite directions” (claim 1, lines 9-11, the term “member” is a generic placeholder and the function is “driving” and “configured to cause the massage member to swing in opposite directions”), “the driving member” (claim 3, line 4), “a driving member…the driving member causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside of the lateral wall of the shell” (claim 9, lines 6 and 9-11, the term “member” is a generic placeholder and the function is “driving” and “causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside of the lateral wall of the shell”), “the driving member” (claim 14, lines 2-3, claim 15, line 3).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
It is noted that the limitation “the driving member” in claim 4 no longer invokes 112(f) because sufficient structure is present in the claim.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
“a driving member”: driving member 20 may be a motor, a cylinder and the like, see paragraph 0080 in the specification.
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 9 and 13-16 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 pre-AIA the applicant regards as the invention.
Regarding claim 9, the limitation “a first position…a third position” (lines 12 and 17) is unclear if a second position is being claimed or not, to claim a first and a third positions without claiming a second position makes it unclear if there should be a second position.
Regarding claim 13, the limitation “the vagina” (lines 4 and 6) lacks proper antecedent basis.
Regarding claim 16, the limitation “the elastomer does not contact left and right sides of the moving space in the predetermined direction” (lines 1-2) is unclear and confusing if the applicant is trying to claim a space as a physical structure, the claim is claiming the term “moving space”, however, to claim that the elastomer does not contact left and right sides of the moving space is implying that the moving space is a physical structure that can be contacted.
Any remaining claims are rejected for their dependency on a rejected base claim.
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 16 as best understood 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. The limitation “the elastomer does not contact left and right sides of the moving space in the predetermined direction” (lines 1-2) does not further limit subject matter of the claim upon which it depends on, claim 9 claims “an opening that defines a moving space” in line 4, a moving space of an opening is a space, which would not be in contact with the elastomer since a space cannot be in contact with any physical structure, therefore, by claiming “the elastomer does not contact left and right sides of the moving space in the predetermined direction” in claim 16, claim 16 is stating an inherent character of claims 9 and 15, therefore, does not further limit claims 9 and 15. 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 § 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.
Claims 6-8 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin (CN 206492000).
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Regarding claim 6, Lin discloses a massage device (entire device in fig. 1, paragraphs 0001-0002, 0006-0007 and 0019-0022 of the English translation), comprising: a shell (shell is sleeve of 1 and shell of 2 (see 21 and 25 of 2), see the annotated-Lin fig. 1 above, paragraph 0022) including a first portion and a second portion extends from the first portion along a longitudinal direction of the shell (see the annotated-Lin fig. 1 above), a motor (24, fig. 2, paragraph 0023) arranged in the shell (see figs. 1-2); a connecting shaft (23, fig. 2, paragraph 0024, the connecting shaft is 23) connected to the motor and movable by a drive of the motor (see paragraph 0024) and an elastic body (a paddle of 22, see figs. 1-2 and paragraph 0024, Lin discloses that 22 is a silicone sheet, which is elastic) within the first portion and coupled to the connecting shaft (see figs. 102), wherein the elastic body extends along the longitudinal direction of the shell (see the annotated-Lin figs. 1-2 above, the elastic body is three dimensional and extends along the longitudinal direction of the shell), the first portion has a configuration that defines a moving space (see the annotated-Lin figs. 1-2 above, the moving space is the space within the shell of 2 that 22 moves within), and comprises a first wall extending along the longitudinal direction of the shell and a second wall extending along the longitudinal direction of the shell and opposite to the first wall, the moving space is located between the first wall and the second wall, the elastic body is, at least partially, positioned within the moving space and is movable within the moving space, such that opposite lateral walls of the elastic body do not contact the shell (see the annotated-Lin figs. 1-2 above and paragraphs 0022-0029, as shown, when a blade of 22 is within the moving space that is positioned in the largest space of 2, the lateral walls of the elastic body do not contact the shell, it is noted, that the lateral walls can be interpreted as any walls that are not in contact with 2, alternatively, the moving space is the space within 2 and outside of 2 where the blades of 22 are being present and moves through, therefore, when exposed, the blade of 22 comprising lateral walls that do not contact the shell).
Regarding claim 7, Lin discloses that the first portion includes an opening which is open to a first outside environment above the shell, the elastic body is movable between a first position outside the shell and a second position inside the shell (see paragraphs 0022-0029 and see the annotated-Lin figs. 1-2 above, as shown, the first portion comprises an opening that define a part of the moving space, furthermore, when 22 rotate, the elastic body (a paddle of 22) is movable between a first position outside the shell and a second position inside the shell).
Regarding claim 8, Lin discloses that the opening is further open to a second outside environment below the shell (see the annotated-Lin figs. 1-2 above, the device can be oriented such that the bottom opening formed by 2 is positioned below the shell), the elastic body is movable between the first position outside the shell, the second position inside the shell, and a third position outside the shell, in the first position, the elastic body protrudes past the first portion of the shell toward the first outside environment and is configured to touch a first body part outside the moving space, and in the third position, the elastic body protrudes past the first portion of the shell toward the second outside environment and is configured to touch a second body part outside the moving space that is opposite the first body part (paragraphs 0022-0029 and see the annotated-Lin figs. 1-2 above, since the elastic body of 22 can be rotated to be inside and outside, the elastic body is movable between the first position outside the shell, the second position inside the shell, and a third position outside the shell, in the first position, the elastic body protrudes past the first portion of the shell toward the first outside environment and is configured to touch a first body part outside the moving space, and in the third position, the elastic body protrudes past the first portion of the shell toward the second outside environment and is configured to touch a second body part outside the moving space that is opposite the first body part).
Regarding claim 17, Lin discloses that the shell is made of a soft materials, and the elastic body is separate element from the shell (see the annotated-Lin figs. 1-2 above, the shell is interpreted as the sleeve of 1 and shell of 2, see paragraphs 0007, 0015 and 0022-0023, therefore, the shell is made of soft materials, materials formed by soft sleeve 1).
Claim 6 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cirillo-Schmidt (2023/0355463).
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Regarding claim 6, Cirillo-Schmidt discloses a massage device (entire device in fig. 1), comprising: a shell (11 is the shell, fig. 1, paragraph 0041) including a first portion and a second portion extends from the first portion along a longitudinal direction of the shell (see the annotated-Cirillo-Schmidt fig. 1 above) (see paragraph 0014), a motor (4, fig. 1, paragraph 0042) arranged in the shell (see fig. 1), a connecting shaft (31, 32, 34, fig. 1, paragraphs 0041, 0043, 0044, 0045) connected to the motor and movable by a drive of the motor (fig. 1), an elastic body (21 that covers 34, see paragraphs 0043 and 0048 with table 1, the deformable contact surface region is part of 2 which is a rubber-elastic sleeve) within the first portion and coupled to the connecting shaft (see the annotated-Cirillo-Schmidt fig. 1 above), wherein; the elastic body extends along the longitudinal direction of the shell (see the annotated-Cirillo-Schmidt fig. 1 above), the first portion has a configuration that defines a moving space, and comprises a first wall extending along the longitudinal direction of the shell and a second wall extending along the longitudinal direction of the shell and opposite to the first wall, the moving space is located between the first wall and the second wall (see the annotated-Cirillo-Schmidt fig. 1 above), the elastic body is, at least partially, positioned within the moving space and is movable within the moving space, such that opposite lateral walls of the elastic body do not contact the shell (see the annotated-Cirillo-Schmidt fig. 1 above, as shown, the lateral walls of the elastic body do not contact the shell 11, as shown, 21 protrudes outward, therefore, relatively the elastic body does not contact the exterior surface of 21 and does not contact the shell 11, the lateral walls can be defined as shown in the annotated fig. 1 above or can be defined as from one lateral side to another lateral side when viewed in the direction X).
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 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 18 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Lin (CN 206492000) or, in the alternative, under 35 U.S.C. 103 as obvious over Lin (CN 206492000) in view of Borrero (2011/0009693).
Regarding claim 18, Lin discloses that the massage device further comprises a rigid inner shell, and the shell is configured to cover the rigid inner shell (see figs. 1-2 and paragraphs 0015 and 0022, Lin discloses that the rotary massage device includes a main body and a silicone sleeve 1 disposed outside the main body, the main body is provided with a handle and through hole, the main body would be relatively rigid in order to be a handle having through hole and the different structural components, the claim does not claim how rigid the inner shell is).
However, Borrero teaches a massage device comprising a flexible shell and a rigid inner shell (see figs. 1-4 and paragraph 0037, Borrero discloses that housing 10 is formed of a semi-rigid material, durable plastic known in the art, and a sleeve made of rubber).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the main body and the shell of Lin to have the rigid inner shell and the flexible shell as taught by Borrero for the purpose of providing structural support to the massage device while providing a pleasing texture to the user (see paragraph 0037 of Borrero).
Claims 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Leng (CN 204319236) in view of Nan (2006/0069330).
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Regarding claim 1, Leng discloses a massage device (entire device in fig. 1), comprising: a shell (shell of 1, 2 and 3, fig. 1) having an opening that defines a moving space (see the annotated-Leng fig. 1 above, the moving space is defined as the space formed by 3 where 5 rotates within, the wall formed by 3 where the moving space extends through is the lateral walls) for a massage member (at least one blade of 5, fig. 1, paragraphs 0016-0017) within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment outside of the shell (see figs. 1-3 and paragraphs 0021-0022 and 0026, Leng discloses that the massage member rotates and when 5 rotate, the massage member would move from inside of the shell to an outside environment outside of the shell), wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell (see the annotated-Leng fig. 1 above with reference to fig. 2); and a driving member (40, 41 and 42, figs. 2-3 and paragraph 0017) arranged in a first chamber of the shell (the chamber where the 42 is positioned within the shell is the first chamber of the shell, see figs. 1-3), the first chamber being defined by an interior surface of the shell (the chamber of shell where motor 42 is positioned within would have an interior surface of the shell, see figs. 1-3), and the driving member being connected to the massage member and configured to cause the massage member to rotate (see paragraphs 0021-0022 and 0026), the massage member has a first end that connects to the driving member and a second end that extends into the moving space (see the annotated-Leng fig. 1 above, each blade (massage member) of 5 has a first end that connects to the driving member and a second end that extends into the moving space), the driving member causes the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part (see paragraphs 0021-0022 and 0026 and the full disclosure and figs. 1-3, when 5 is being rotated by the motor 42, the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part), but fails to disclose that the driving member cause the massage member to swing in opposite directions.
However, Nan teaches a driving member (36, figs. 2-3, paragraph 0026) and a button configured to change the direction of the driving member (see fig. 4 and paragraph 0032, Nan discloses button D changes the direction of the rotation of rod 28 from clockwise to counter-clockwise or vice-versa).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device and the driving member of Leng to have the button as taught by Nan for the purpose of providing adjustability and enhancing the massage effect by allowing the user to operate the massage device in two directions (see paragraph 0032 of Nan).
After the modification with Nan, the user can operate the massage device in both a clockwise and a counter clockwise rotation via the button D of Nan, therefore, depending on when the user switch directions, the user can cause the driving member to swing the massage member in opposite directions and cause the massage member to swing up and swing down, therefore, would cause driving member to cause the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Regarding claim 2, the modified Leng discloses that the first chamber is separated from the moving space via a separating wall that is located between the first chamber and the moving space, and the massage member comprises an elastic body that extends into the moving space (5 comprises a plurality of blade, therefore, a portion of the blades can be an elastic body that extends into the moving space, see paragraph 0022 of Leng, Leng discloses that 5 is made of silicone, silicone is an elastic material).
Regarding claim 5, the modified Leng discloses that the shell has an elongated shape (see the annotated-Leng fig. 1 above, as shown, the shell has an elongated shape), and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion and the first chamber is defined inside the rear portion (see the annotated-Leng fig. 1 above, depending on how the entire massage device of Leng is being oriented, the portion shown can be the front portion, the rear portion housing a portion of 42 is the rear portion and the moving space is at a middle portion between the front portion and rear portion).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 206492000) in view of Nan (2006/0069330).
Regarding claim 9, Lin discloses a massage device (entire device in fig. 1, paragraphs 0001-0002, 0006-0007 and 0019-0022 of the English translation) comprising: a shell (shell is sleeve of 1 and shell 21/25 of 2, see the annotated-Lin fig. 1 above, paragraph 0022) including a lateral wall extending along a predetermined direction (see the annotated-Lin figs. 1-2, the lateral wall is formed by first and second walls of 2), the lateral wall having an opening that defines a moving space for a massage member (a paddle of 22, see figs. 1-2 and paragraph 0024, Lin discloses that 22 is a silicone sheet) within the shell (see the annotated-Lin figs. 1-2), such that the massage member is allowed to move from inside the shell to an outside environment out of the shell (see paragraphs 0022-0029, when 22 rotates, the massage member is allowed to move from inside the shell to an outside environment); and a driving member (24, fig. 2, paragraph 0023) arranged in the shell (24 is positioned within 25 of the shell 2, figs. 1-2), wherein: the massage member has a first end that is coupled to the driving member and a second end that extends into the moving space (see the annotated-Lin figs. 1-2, see “first end portion comprising a first end”), and the driving member causes the second end of the massage member to move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell (see paragraphs 0022-0029, when 22 rotates, the second end of the massage member would move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell), wherein the opening extends through the lateral wall of the shell along the first direction (see the annotated-Lin figs. 1-2 and paragraphs 0022-0029), the second end of the massage member protrude past the lateral wall of the shell and is configured to touch a first body part outside the moving space and the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part (paragraphs 0022-0029 and see the annotated-Lin figs. 1-2 above, since the elastic body of 22 can be rotated to be inside and outside, the second end of the massage member can protrude past the lateral wall of the shell and touch a first body part outside the moving space and the second end of the massage member can protrude past the lateral wall of the shell to touch a second body part outside the moving space that is opposite the first body part), but fails to disclose that the driving member causes the second end to move backward in a second direction opposite the first direction after reaching the first position, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second part outside the moving space that is opposite the first body part.
However, Nan teaches a driving member (36, figs. 2-3, paragraph 0026) and a button configured to change the direction of the driving member (see fig. 4 and paragraph 0032, Nan discloses button D changes the direction of the rotation of rod 28 from clockwise to counter-clockwise or vice-versa).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device and the driving member of Lin to have the button as taught by Nan for the purpose of providing adjustability and enhancing the massage effect by allowing the user to operate the massage device in two directions (see paragraph 0032 of Nan).
After the modification with Nan, the user can operate the massage device in both a clockwise and a counter clockwise rotation via the button D of Nan, therefore, depending on when the user switch directions, the user can cause the driving member to cause the second end to move backward in a second direction opposite the first direction after reaching the first position, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second part outside the moving space that is opposite the first body part.
Regarding claim 10, the modified Lin discloses that the second end of the massage member is capable of reaching a second position in the opening of the shell when the second end of the massage member swings in the second direction (see the modification with Nan, after the modification with Nan, the user can change the direction of the rotation of 22 of Lin, therefore, can cause the second end of the massage member to reach a second position in the opening of the shell when the second end of the massage member swing in the second direction).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 206492000) in view of Nan (2006/0069330) as applied to claim 9 above, and further in view of Allen (2014/0309565).
Regarding claim 12, the modified Lin discloses that the shell comprising a rod shape body (see the annotated-Lin fig. 1 above), left and right sides of the moving space in the insertion direction of the shell are covered by the lateral wall and top and bottom sides of the moving space in the insertion direction of the shell are not covered by the lateral wall, such that the top and bottom sides are open to the outside environment out of the shell (see the annotated-Lin figs. 1-2 above, the device is capable of being inserted into an opening larger than the device, and the direction is the longitudinal direction as shown, left and right sides of the moving space in the insertion direction of the shell are covered by the lateral wall and top and bottom sides of the moving space in the insertion direction of the shell are not covered by the lateral wall, such that the top and bottom sides are open to the outside environment out of the shell), but fails to disclose that the shell is configured to be inserted into a vagina along an insertion direction which is substantially parallel to the predetermined direction.
However, Allen teaches female-specific massage device (100, fig. 1) comprising a massage member (member of 14, 17, fig. 1 and paragraph 0033) and a front section (tip portion of 13 that is above 14), both configured to be inserted into a vagina of a human body (see paragraph 0033, Allen discloses that 13 is inserted into the vagina of the human body).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rod shape body of the modified Lin to be inserted into a vagina of a human body as taught by Allen for the purpose of providing a female-specific device that can provide sexual stimulation to the female user (see paragraph 0033 of Allen).
After the modification, the shell of the modified Lin is configured to be inserted into a vagina along an insertion direction which is substantially parallel to the predetermined direction, the predetermined direction is the extension direction of the lateral wall along the longitudinal direction.
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Regarding claim 13, the modified Lin fails to disclose that the shell is inserted into a vagina.
However, Allen teaches female-specific massage device (100, fig. 1) comprising a massage member (member of 14, 17, fig. 1 and paragraph 0033) and a front section (tip portion of 13 that is above 14), both configured to be inserted into a vagina of a human body (see paragraph 0033, Allen discloses that 13 is inserted into the vagina of the human body).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rod shape body of the modified Lin to be inserted into a vagina of a human body as taught by Allen for the purpose of providing a female-specific device that can provide sexual stimulation to the female user (see paragraph 0033 of Allen).
The modified Lin discloses that the shell further comprises a first end portion and a second end portion opposite the first end portion (see the annotated-Lin for claim 13 fig. 1 above), the second end portion is located outside the vagina when the first end portion is inserted into the vagina, and the opening is located between the first end portion and the second end portion (see the annotated-Lin for claim 13 fig. 1 above, after the modification with Allen, the first end portion can be inserted into a vagina of the user, while the second end portion can be located outside the vagina and the opening that forms the moving space where 22 of Lin rotates within is positioned between the first end portion and the second end portion).
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Regarding claim 14, the modified Lin discloses that the second end portion of the shell includes a first chamber for receiving the driving member (first chamber is defined as the chamber formed in the half of 2 that is opposite of 21, see the annotated-Lin for claim 14 above and paragraph 0023 of Lin), the first chamber is separated from the moving space via a separate wall (the moving space can be interpreted as a portion of space within 21 that is separated by the separate wall (including wall of 25), see the annotated-Lin for claim 14 fig. 2 above), a hole is defined in the separate wall, and the first end of the massage member is inserted into the first chamber via the hole (the first end of 22 would be inserted into the first chamber since the first chamber is formed by the space within the other half of 2 that is opposite of 21, see the annotated-Lin for claim 14 fig. 2 above).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 206492000) in view of Nan (2006/0069330) as applied to claim 9 above, and further in view of Bajette (1,958,936).
Regarding claim 15, the modified Lin discloses that the second end is, at least partially, formed of an elastomer (see paragraph 0024 of Lin, Lin discloses that 22 is made of silicone, which is an elastomer), the first end comprises a rod which is coupled to the driving member and partially inserted into the elastomer, the rod is made of plastic and the elastomer is made of silicone (the rod 23 is being redefined as part of the massage member, therefore, the first end which is formed by rod 23 of Lin comprises a rod which is coupled to the driving member (24 of Lin) and partially inserted into the elastomer (22 of Lin), see paragraphs 0024-0026 and 0029), but fails to specifically disclose that the rod has a hardness that is greater than the elastomer.
However, Bajette teaches a hard inner core (35) and a soft outer layer (36, fig 3), wherein the hard inner core has a hardness greater than the soft outer layer (see page 1, lines 89-109).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rod of the modified Lin to have a hardness greater than the elastomer of the modified Lin as taught by Bajette for the purpose of providing support for the soft outer layer, thereby, effectively allowing the transfer of rotational force from the driving member to the massage member.
Regarding claim 16, the modified Lin discloses that the elastomer does not contact left and right side of the moving space in the predetermined direction when the second end is caused to swing up and down (a space can never be contacted, therefore, the elastomer does not contact left and right side of the moving space, alternatively, the moving space can be defined as a moving space that is not contact the elastomer, alternatively, the sides are being interpreted as the sides of the structure that form the moving space, which is the shell of 2, and as shown in the annotated-Lin figs. 1-2, the elastomer of the second end does not contact the sides of the shell of 2).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 206492000) in view of Nan (2006/0069330).
Regarding claim 19, Lin discloses that the elastic body comprises the first end portion and a second end portion opposite to the first end portion, the first end portion is arranged adjacent to and coupled to the connecting shaft, and the second end portion is capable of moving within the moving space (see the annotated-Lin figs. 1-2 above and paragraphs 0022-0029), but fails to disclose that the second end portion is capable of swinging within the moving space.
However, Nan teaches a driving member (36, figs. 2-3, paragraph 0026) and a button configured to change the direction of the driving member (see fig. 4 and paragraph 0032, Nan discloses button D changes the direction of the rotation of rod 28 from clockwise to counter-clockwise or vice-versa).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device and the driving member of Lin to have the button as taught by Nan for the purpose of providing adjustability and enhancing the massage effect by allowing the user to operate the massage device in two directions (see paragraph 0032 of Nan).
After the modification with Nan, the user can operate the massage device in both a clockwise and a counter clockwise rotation via the button D of Nan, therefore, depending on when the user switch directions, the user can cause the driving member to swing the second end portion within the moving space.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (CN 206492000) in view of Nan (2006/0069330).
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Regarding claim 1, Lin discloses a massage device (entire device in fig. 1, paragraphs 0001-0002, 0006-0007 and 0019-0022 of the English translation) comprising: a shell (shell is sleeve of 1 and shell 21/25 of 2, see the annotated-Lin fig. 1 above, paragraph 0022) having an opening that defines a moving space for a massage member (a paddle of 22, see figs. 1-2 and paragraph 0024, Lin discloses that 22 is a silicone sheet) within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell (see the annotated-Lin for claims 1-3 figs. 1-3 above, paragraphs 0022-0029), wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in the a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell (see the annotated-Lin for claims 1-3 figs. 1-2 above); and a driving member (24, fig. 2, paragraph 0023) arranged in a first chamber of the shell (24 is positioned within a chamber of 25 of the shell 2, figs. 1-2), the first chamber being defined by an interior surface of the shell (see figs. 1-2, the part 25 defines an interior surface of the shell), and the driving member being connected to the massage member and configured to cause the massage member to rotate, wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part (see the annotated-Lin for claims 1-3 and paragraphs 0022-0029, when 22 rotates, the driving member is capable of causing the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and capable of rotating down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part), but fails to disclose that the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions, wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
However, Nan teaches a driving member (36, figs. 2-3, paragraph 0026) and a button configured to change the direction of the driving member (see fig. 4 and paragraph 0032, Nan discloses button D changes the direction of the rotation of rod 28 from clockwise to counter-clockwise or vice-versa).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the massage device and the driving member of Lin to have the button as taught by Nan for the purpose of providing adjustability and enhancing the massage effect by allowing the user to operate the massage device in two directions (see paragraph 0032 of Nan).
After the modification with Nan, the user can operate the massage device in both a clockwise and a counter clockwise rotation via the button D of Nan, therefore, depending on when the user switch directions, the user can cause the driving member to swing the massage member in opposite directions and cause the massage member to swing up and swing down, therefore, would cause driving member to cause the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Regarding claim 2, the modified Lin discloses that the first chamber is separated from the moving space via a separating wall that is located between the first chamber and the moving space (see the annotated-Lin for claims 1-3 figs. 1-2 above, the first chamber is formed by 25, the wall separating the chamber and the moving space can be interpreted as portion of 25), and the massage member comprises an elastic body that extends into the moving space (see paragraph 0024 of Lin, Lin discloses that 22 is made of silicone, which is elastic, therefore, the massage member comprises an elastic body that extends into the moving space, the elastic body is one paddle plus the circular body where the paddle extends from).
Regarding claim 3, the modified Lin discloses that the massage member further comprises a transmission rod (23, fig. 2, paragraphs 0024-0026 of Lin) configured, such that a front end of the transmission rod is inserted into the elastic body and a rear end of the transmission rod is connected to the driving member (24 of Lin), and a middle portion of the transmission rod is rotatably connected to the shell, such that the elastic body is driven to swing relative to the shell (see the annotated-Lin for claims 1-3 figs. 1-2 above and paragraphs 0022-0029 of Lin, as shown, when assembled, the front end of the transmission rod is inserted into the elastic body formed by 22, and a rear end of the transmission rod is connected to the driving member, and a middle portion of the transmission rod is rotatably connected to the shell, such that the elastic body is driven to swing relative to the shell (after the modification with Nan, a change in position initiated by the user would cause the massage member (paddle) to swing)).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-13 of US Patent No. 11,771,619.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 1 is a broader version of the patented claims 10-13 (i.e., the instant claim 1 does not include the shell is elongated as in the patented claims 10-13). In the instant claim 1, the device included in the patented claims 10-13. Any infringement over the patented claims would also infringe over the instant claim. Therefore, the instant claim 1 does not differ in scope from the patented claims 10-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 1, the following comparison between the patented claim 10 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 10
Application claim 1
1. (for reference) A massage device, comprising: an elongated shell configured to be inserted into a vagina, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along a length of the elongated shell, the moving space extend through a first exterior side of the lateral wall and a second exterior side of the lateral wall to the outside environment, the second exterior side of the lateral wall is opposite to the first exterior side of the lateral wall, the first and second exterior sides are exposed to the outside environment;
a driving member arranged in a chamber of the shell and the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
an elongated massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire elongated massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the elongated shell.
10. The massage device according to claim 1, wherein the opening extends through the first exterior side and the second exterior side of the lateral wall along a swing direction of the massage member, and wherein when the massage member swings, the free end of the massage member reciprocating in three different positions, the positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the later wall, and a third position out of the later wall via the opening at the second exterior side of the lateral wall.
1. A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Instant claim 1 is also being rejected by patented claims 11-13 which contain all the limitations of the patented claim 10. Any infringement over the patented claims would also infringe over the instant claim. Therefore, the instant claim 1 does not differ in scope from the patented claims 11-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of US Patent No. 11,771,619.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 5 is a broader version of the patented claims 11-13 (i.e., the instant claim 5 does not include the entire elongated massage member is located within the moving space as in the patented claims 11-13). In the instant claim 5, the device included in the patented claims 11-13. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 5 does not differ in scope from the patented claims 11-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 5, the following comparison between the patented claim 11 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 11
Application claim 5
1. (for reference) A massage device, comprising: an elongated shell configured to be inserted into a vagina, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along a length of the elongated shell, the moving space extend through a first exterior side of the lateral wall and a second exterior side of the lateral wall to the outside environment, the second exterior side of the lateral wall is opposite to the first exterior side of the lateral wall, the first and second exterior sides are exposed to the outside environment;
a driving member arranged in a chamber of the shell and the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
an elongated massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire elongated massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the elongated shell.
10. (for reference) The massage device according to claim 1, wherein the opening extends through the first exterior side and the second exterior side of the lateral wall along a swing direction of the massage member, and wherein when the massage member swings, the free end of the massage member reciprocating in three different positions, the positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the later wall, and a third position out of the later wall via the opening at the second exterior side of the lateral wall.
11. The massage device according to claim 10, wherein the moving space is defined at a middle portion of the shell and is closed along the circumferential direction.
1. (for reference) A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
5. The massage device according to claim 1, wherein: the shell has an elongated shape, and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion, and the first chamber is defined inside the rear portion.
Instant claim 5 is also being rejected by patented claims 12-13 which contain all the limitations of the patented claim 11. Any infringement over the patented claims would also infringe over the instant claim. Therefore, the instant claim 5 does not differ in scope from the patented claims 12-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 9-10, 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-13 of US Patent No. 11,771,619.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claims and the patented claims are minor and obvious from each other. For example, the instant claims 9-10, 12 and 13-14 are a broader version of the patented claims 10-13 (i.e., the instant claims 9-10, 12 and 13-14 do not include the shell is elongated as in the patented claims 10-13). In the instant claims 9-10, 12 and 13-14, the device included in the patented claims 10-13. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claims 9-10, 12 and 13-14 do not differ in scope from the patented claims 10-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 9, the following comparison between the patented claim 10 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 10
Application claim 9
1. (for reference) A massage device, comprising: an elongated shell configured to be inserted into a vagina, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along a length of the elongated shell, the moving space extend through a first exterior side of the lateral wall and a second exterior side of the lateral wall to the outside environment, the second exterior side of the lateral wall is opposite to the first exterior side of the lateral wall, the first and second exterior sides are exposed to the outside environment;
a driving member arranged in a chamber of the shell and the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
an elongated massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire elongated massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the elongated shell.
10. The massage device according to claim 1, wherein the opening extends through the first exterior side and the second exterior side of the lateral wall along a swing direction of the massage member, and wherein when the massage member swings, the free end of the massage member reciprocating in three different positions, the positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the later wall, and a third position out of the later wall via the opening at the second exterior side of the lateral wall.
9. A massage device comprising: a shell including a lateral wall extending along a predetermined direction, the lateral wall having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside the shell to an outside environment out of the shell; and
a driving member arranged in the shell, wherein: the massage member has a first end that is coupled to the driving member and a second end that extends into the moving space, and
the driving member causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell, and to move backward in a second direction opposite the first direction after reaching the first position, wherein the opening extends through the lateral wall of the shell along the first and second directions, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
The instant claims 10 and 12-14 are rejected by the patented claims 10-13.
Instant claims 9-10 and 12-14 are also being rejected by patented claims 11-13 which contain all the limitations of the patented claim 10. Any infringement over the patented claims would also infringe over the instant claim. Therefore, the instant claims 9-10 and 12-14 do not differ in scope from the patented claims 11-13. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of US Patent No. 11,957,634.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 1 is a broader version of the patented claim 8 (i.e., the instant claim 1 does not include the entire massage member is located within the moving space in the first position as in the patented claim 8). In the instant claim 1, the device included in the patented claim 8. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 1 does not differ in scope from the patented claim 8. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 1, the following comparison between the patented claim 8 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 8
Application claim 1
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along the insertion direction of the shell, and the moving space extends through a first exterior side of the lateral wall to the outside environment;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
a massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the shell.
7. (for reference) The massage device according to claim 1, wherein the moving space further extends through a second exterior side of the lateral wall to the outside environment, and wherein the second and first exterior sides of the lateral wall are opposite to each other and exposed to the outside environment.
8. The massage device according to claim 7, wherein the moving space extends through the first and second exterior sides of the lateral wall along a swing direction of the massage member which is substantially perpendicular to the insertion direction of the shell, and wherein when the massage member swings, the free end of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the lateral wall, and a third position out of the lateral wall via the opening at the second exterior side of the lateral wall.
1. A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Claim 5 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 8 of US Patent No. 11,957,634 in view Allen (2014/0309565).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claim are minor and obvious from each other. For example, the instant claim 5 is a broader version of the patented claim 8 (i.e., the instant claim 5 does not include the entire massage member is located within the moving space in the first position as in the patented claim 8). In the instant claim 5, the device included in the patented claim 8. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 5 does not differ in scope from the patented claim 8. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 5, the following comparison between the patented claim 8 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 8
Application claim 5
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along the insertion direction of the shell, and the moving space extends through a first exterior side of the lateral wall to the outside environment;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
a massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the shell.
7. (for reference) The massage device according to claim 1, wherein the moving space further extends through a second exterior side of the lateral wall to the outside environment, and wherein the second and first exterior sides of the lateral wall are opposite to each other and exposed to the outside environment.
8. The massage device according to claim 7, wherein the moving space extends through the first and second exterior sides of the lateral wall along a swing direction of the massage member which is substantially perpendicular to the insertion direction of the shell, and wherein when the massage member swings, the free end of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the lateral wall, and a third position out of the lateral wall via the opening at the second exterior side of the lateral wall.
1. (for reference) A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
5. The massage device according to claim 1, wherein: the shell has an elongated shape, and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion, and the first chamber is defined inside the rear portion.
Regarding the additional limitation being recited by claim 5. The patented claim 8 lacks the inclusion of the shell being elongated.
However, Allen teaches female-specific massage device (100, fig. 1) comprising a massage member (member of 14, 17, fig. 1 and paragraph 0033) and an elongated shell (13) comprising a front section (tip portion of 13 that is above 14), both configured to be inserted into a vagina of a human body (see paragraph 0033, Allen discloses that 13 is inserted into the vagina of the human body).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shell of the patented claim 8 to be elongated and configured to be inserted into a vagina of a human body as taught by Allen for the purpose of providing a female-specific device that can provide sexual stimulation to the female user (see paragraph 0033 of Allen).
Claims 9-10, 12 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of US Patent No. 11,957,634.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claims and the patented claim are minor and obvious from each other. For example, the instant claims 9-10, 12 and 13-14 are a broader version of the patented claim 8 (i.e., the instant claims 9-10, 12 and 13-14 do not include the entire massage member is located within the moving space in the first position as in the patented claim 8). In the instant claims 9-10, 12 and 13-14, the device included in the patented claim 8. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claims 9-10, 12 and 13-14 do not differ in scope from the patented claim 8. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 9, the following comparison between the patented claim 8 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 8
Application claim 9
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, the shell defining a moving space therein, a lateral wall of the shell defining an opening to intercommunicate the moving space inside the shell with an outside environment out of the shell, wherein the lateral wall extends along the insertion direction of the shell, and the moving space extends through a first exterior side of the lateral wall to the outside environment;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to the moving space, the chamber is defined by an interior surface of the shell and the moving space is defined by a surface of the shell that is exterior to the interior surface of the chamber; and
a massage member connected to the driving member in a transmission way and having a free end extending into the moving space, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, the free end of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position out of the lateral wall of the shell via the opening of the lateral wall, wherein the entire massage member is located within the moving space and does not protrude past the lateral wall to the outside environment in the first position, and in the second position, the free end of the massage member protrudes past the lateral wall and into the outside environment of the shell.
7. (for reference) The massage device according to claim 1, wherein the moving space further extends through a second exterior side of the lateral wall to the outside environment, and wherein the second and first exterior sides of the lateral wall are opposite to each other and exposed to the outside environment.
8. The massage device according to claim 7, wherein the moving space extends through the first and second exterior sides of the lateral wall along a swing direction of the massage member which is substantially perpendicular to the insertion direction of the shell, and wherein when the massage member swings, the free end of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position out of the lateral wall via the opening at the first exterior side of the lateral wall, and a third position out of the lateral wall via the opening at the second exterior side of the lateral wall.
9. A massage device comprising: a shell including a lateral wall extending along a predetermined direction, the lateral wall having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside the shell to an outside environment out of the shell; and
a driving member arranged in the shell, wherein: the massage member has a first end that is coupled to the driving member and a second end that extends into the moving space, and
the driving member causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell, and to move backward in a second direction opposite the first direction after reaching the first position, wherein the opening extends through the lateral wall of the shell along the first and second directions, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
The instant claims 10 and 12-14 are rejected by the patented claim 8.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of US Patent No. 12,201,572.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 1 is a broader version of the patented claim 7 (i.e., the instant claim 1 does not include the elongated soft cover as in the patented claim 7). In the instant claim 1, the device included in the patented claim 7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 1 does not differ in scope from the patented claim 7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 1, the following comparison between the patented claim 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 7
Application claim 1
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, a lateral wall of the shell concaved inwardly and laterally relative to an outer lateral surface of the shell to define a moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, wherein the lateral wall extends along the insertion direction of the shell;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to and not communicating with the moving space, the driving member configured to drive an eccentric driving shaft, the shell comprising a first inner surface that formed an opening, the opening is positioned between the moving space and the chamber; and
a massage member connected to the driving member in a transmission way, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, a first end portion of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, wherein the massage member comprises an elongated soft cover and an elongated hard core, the elongated soft cover is curved upward along a length of the elongated soft cover, the elongated soft cover comprises an upward facing concave curved surface extending along the length of the elongated soft cover, the elongated soft cover comprises the first end portion and a second end portion that is opposite from the first end portion, the second end portion of the elongated soft cover is configured to receive a first end portion of the elongated hard core, the elongated hard core defines a groove at a second end portion of the elongated hard core, the groove is configured to receive the eccentric driving shaft, and wherein the second end portion of the elongated soft cover extends from the moving space through the opening and into the chamber and the second end portion of the elongated soft cover is configured to abut the first inner surface that formed the opening.
7. The massage device according to claim 1, wherein the moving space extends through the outer lateral wall along a swing direction of the massage member, the massage member is substantially perpendicular to the insertion direction of the shell, and two openings are defined in two opposite sides of the outer lateral surface of the shell, respectively, and wherein when the massage member swings, the portion of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position in the outside environment out of the outer lateral surface of the shell via a first opening of the two openings, and a third position out of the outer lateral surface of the shell via a second opening of the two openings.
1. A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Claim 5 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 7 of US Patent No. 12,201,572 in view Allen (2014/0309565).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claim are minor and obvious from each other. For example, the instant claim 5 is a broader version of the patented claim 7 (i.e., the instant claim 5 does not include the elongated soft cover as in the patented claim 7). In the instant claim 5, the device included in the patented claim 7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 5 does not differ in scope from the patented claim 7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 5, the following comparison between the patented claim 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 7
Application claim 5
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, a lateral wall of the shell concaved inwardly and laterally relative to an outer lateral surface of the shell to define a moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, wherein the lateral wall extends along the insertion direction of the shell;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to and not communicating with the moving space, the driving member configured to drive an eccentric driving shaft, the shell comprising a first inner surface that formed an opening, the opening is positioned between the moving space and the chamber; and
a massage member connected to the driving member in a transmission way, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, a first end portion of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, wherein the massage member comprises an elongated soft cover and an elongated hard core, the elongated soft cover is curved upward along a length of the elongated soft cover, the elongated soft cover comprises an upward facing concave curved surface extending along the length of the elongated soft cover, the elongated soft cover comprises the first end portion and a second end portion that is opposite from the first end portion, the second end portion of the elongated soft cover is configured to receive a first end portion of the elongated hard core, the elongated hard core defines a groove at a second end portion of the elongated hard core, the groove is configured to receive the eccentric driving shaft, and wherein the second end portion of the elongated soft cover extends from the moving space through the opening and into the chamber and the second end portion of the elongated soft cover is configured to abut the first inner surface that formed the opening.
7. The massage device according to claim 1, wherein the moving space extends through the outer lateral wall along a swing direction of the massage member, the massage member is substantially perpendicular to the insertion direction of the shell, and two openings are defined in two opposite sides of the outer lateral surface of the shell, respectively, and wherein when the massage member swings, the portion of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position in the outside environment out of the outer lateral surface of the shell via a first opening of the two openings, and a third position out of the outer lateral surface of the shell via a second opening of the two openings.
1. (for reference) A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
5. The massage device according to claim 1, wherein: the shell has an elongated shape, and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion, and the first chamber is defined inside the rear portion.
Regarding the additional limitation being recited by claim 5. The patented claim 8 lacks the inclusion of the shell being elongated.
However, Allen teaches female-specific massage device (100, fig. 1) comprising a massage member (member of 14, 17, fig. 1 and paragraph 0033) and an elongated shell (13) comprising a front section (tip portion of 13 that is above 14), both configured to be inserted into a vagina of a human body (see paragraph 0033, Allen discloses that 13 is inserted into the vagina of the human body).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shell of the patented claim 7 to be elongated and configured to be inserted into a vagina of a human body as taught by Allen for the purpose of providing a female-specific device that can provide sexual stimulation to the female user (see paragraph 0033 of Allen).
Claims 9-10, 12 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7of US Patent No. 12,201,572.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claims and the patented claim are minor and obvious from each other. For example, the instant claims 9-10, 12 and 13-14 are a broader version of the patented claim 7 (i.e., the instant claims 9-10, 12 and 13-14 do not include the elongated soft cover as in the patented claim 7). In the instant claims 9-10, 12 and 13-14, the device included in the patented claim 7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claims 9-10, 12 and 13-14 do not differ in scope from the patented claim 7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 9, the following comparison between the patented claim 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 7
Application claim 9
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina along an insertion direction, a lateral wall of the shell concaved inwardly and laterally relative to an outer lateral surface of the shell to define a moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, wherein the lateral wall extends along the insertion direction of the shell;
a driving member arranged in a chamber of the shell, wherein the chamber is adjacent to and not communicating with the moving space, the driving member configured to drive an eccentric driving shaft, the shell comprising a first inner surface that formed an opening, the opening is positioned between the moving space and the chamber; and
a massage member connected to the driving member in a transmission way, the massage member being swingable in a lateral direction of the shell under the driving of the driving member, wherein when the massage member swings, a first end portion of the massage member is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, wherein the massage member comprises an elongated soft cover and an elongated hard core, the elongated soft cover is curved upward along a length of the elongated soft cover, the elongated soft cover comprises an upward facing concave curved surface extending along the length of the elongated soft cover, the elongated soft cover comprises the first end portion and a second end portion that is opposite from the first end portion, the second end portion of the elongated soft cover is configured to receive a first end portion of the elongated hard core, the elongated hard core defines a groove at a second end portion of the elongated hard core, the groove is configured to receive the eccentric driving shaft, and wherein the second end portion of the elongated soft cover extends from the moving space through the opening and into the chamber and the second end portion of the elongated soft cover is configured to abut the first inner surface that formed the opening.
7. The massage device according to claim 1, wherein the moving space extends through the outer lateral wall along a swing direction of the massage member, the massage member is substantially perpendicular to the insertion direction of the shell, and two openings are defined in two opposite sides of the outer lateral surface of the shell, respectively, and wherein when the massage member swings, the portion of the massage member reciprocates in three different positions, the three different positions comprise the first position inside the moving space of the shell, the second position in the outside environment out of the outer lateral surface of the shell via a first opening of the two openings, and a third position out of the outer lateral surface of the shell via a second opening of the two openings.
9. A massage device comprising: a shell including a lateral wall extending along a predetermined direction, the lateral wall having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside the shell to an outside environment out of the shell; and
a driving member arranged in the shell, wherein: the massage member has a first end that is coupled to the driving member and a second end that extends into the moving space, and
the driving member causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell, and to move backward in a second direction opposite the first direction after reaching the first position, wherein the opening extends through the lateral wall of the shell along the first and second directions, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
The instant claims 10 and 12-14 are rejected by the patented claim 7.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of US Patent No. 12,201,573.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 1 is a broader version of the patented claims 6-7 (i.e., the instant claim 1 does not include causing the first massage portion to move along an annular trajectory as in the patented claims 6-7). In the instant claim 1, the device included in the patented claims 6-7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 1 does not differ in scope from the patented claims 6-7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 1, the following comparison between the patented claim 6 or 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 6 or claim 7
Application claim 1
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina or a rectum of a human body along an insertion direction, a lateral wall of the shell defined a moving space, the lateral wall comprising an outer lateral surface defining a first opening of the moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, the moving space being defined in a middle portion of the shell in the insertion direction and extending through a lateral wall of the shell to define the first opening therein, the moving space communicating with an external environment out of the shell through the first opening of the lateral wall of the shell;
a first massage portion extending into the moving space of the shell, the first massage portion forming a soft layer, the soft layer comprising wrinkles; and a first driving unit arranged in the shell and connected to the first massage portion, the first massage portion connected to the first driving unit in a transmission way, the first massage portion being swingable in a lateral direction of the shell under the driving of the first driving unit, wherein when the first massage portion swings, a first end portion of the first massage portion is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, the first driving unit comprising a swing arm, a rotary motor and a rotary member comprising an eccentric shaft, the swing arm comprising a first end portion and a second end portion that is opposite from the first end portion, a length of the swing arm extends between the first end portion and the second end portion, the first end portion is positioned inside the first massage portion, the second end portion of the swing arm comprising a shaft hole for receiving the eccentric shaft of the rotary member, the swing arm comprising a first bend extending along a width direction of the swing arm and a second bend extending along a height of the swing arm to allow the first end portion of the swing arm to extend upward relative to the second end portion when a long side of the second end portion is oriented horizontally, the swing arm further comprising an elongated sliding groove positioned between the first end portion and the second end portion, the first bend is positioned between the elongated sliding groove and the shaft hole, the second bend is positioned between the elongated sliding groove and the first end portion, the elongated sliding groove is slidably connected to the shell via a first shaft, the first shaft is configured to slide within the elongated sliding groove; wherein a rotary movement of the rotary member is configured to swing the swing arm by causing the elongated sliding groove to slide relative to the first shaft, thereby causing the first massage portion to move along an annular trajectory under the driving of the first driving unit and the wrinkles are arranged to extend over the second bend and are configured to allow the first massage portion to flexibly move in both a linear direction along a longitudinal direction of moving space and a height direction of the moving space to produce the annular trajectory.
6. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and one of the two massage surfaces is inside the moving space when the other one of the two massage surfaces extends into the external environment out of the shell.
OR
7. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and two openings the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and the two massage surfaces extend into the external environment out of the shell through the two openings, respectively.
1. A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of US Patent No. 12,201,573.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the patented claims are minor and obvious from each other. For example, the instant claim 5 is a broader version of the patented claims 6-7 (i.e., the instant claim 5 does not include causing the first massage portion to move along an annular trajectory as in the patented claims 6-7). In the instant claim 5, the device included in the patented claims 6-7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claim 5 does not differ in scope from the patented claims 6-7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 5, the following comparison between the patented claim 6 or 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 6 or claim 7
Application claim 5
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina or a rectum of a human body along an insertion direction, a lateral wall of the shell defined a moving space, the lateral wall comprising an outer lateral surface defining a first opening of the moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, the moving space being defined in a middle portion of the shell in the insertion direction and extending through a lateral wall of the shell to define the first opening therein, the moving space communicating with an external environment out of the shell through the first opening of the lateral wall of the shell;
a first massage portion extending into the moving space of the shell, the first massage portion forming a soft layer, the soft layer comprising wrinkles; and a first driving unit arranged in the shell and connected to the first massage portion, the first massage portion connected to the first driving unit in a transmission way, the first massage portion being swingable in a lateral direction of the shell under the driving of the first driving unit, wherein when the first massage portion swings, a first end portion of the first massage portion is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, the first driving unit comprising a swing arm, a rotary motor and a rotary member comprising an eccentric shaft, the swing arm comprising a first end portion and a second end portion that is opposite from the first end portion, a length of the swing arm extends between the first end portion and the second end portion, the first end portion is positioned inside the first massage portion, the second end portion of the swing arm comprising a shaft hole for receiving the eccentric shaft of the rotary member, the swing arm comprising a first bend extending along a width direction of the swing arm and a second bend extending along a height of the swing arm to allow the first end portion of the swing arm to extend upward relative to the second end portion when a long side of the second end portion is oriented horizontally, the swing arm further comprising an elongated sliding groove positioned between the first end portion and the second end portion, the first bend is positioned between the elongated sliding groove and the shaft hole, the second bend is positioned between the elongated sliding groove and the first end portion, the elongated sliding groove is slidably connected to the shell via a first shaft, the first shaft is configured to slide within the elongated sliding groove; wherein a rotary movement of the rotary member is configured to swing the swing arm by causing the elongated sliding groove to slide relative to the first shaft, thereby causing the first massage portion to move along an annular trajectory under the driving of the first driving unit and the wrinkles are arranged to extend over the second bend and are configured to allow the first massage portion to flexibly move in both a linear direction along a longitudinal direction of moving space and a height direction of the moving space to produce the annular trajectory.
6. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and one of the two massage surfaces is inside the moving space when the other one of the two massage surfaces extends into the external environment out of the shell.
OR
7. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and two openings the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and the two massage surfaces extend into the external environment out of the shell through the two openings, respectively.
1. (for reference) A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
5. The massage device according to claim 1, wherein: the shell has an elongated shape, and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion, and the first chamber is defined inside the rear portion.
Regarding the additional limitation being recited by claim 5. The patented claims 6 and 7 lacks the inclusion of the shell being elongated.
However, Allen teaches female-specific massage device (100, fig. 1) comprising a massage member (member of 14, 17, fig. 1 and paragraph 0033) and an elongated shell (13) comprising a front section (tip portion of 13 that is above 14), both configured to be inserted into a vagina of a human body (see paragraph 0033, Allen discloses that 13 is inserted into the vagina of the human body).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shell of the patented claims 6 and 7 to be elongated and configured to be inserted into a vagina of a human body as taught by Allen for the purpose of providing a female-specific device that can provide sexual stimulation to the female user (see paragraph 0033 of Allen).
Claims 9-10, 12 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of US Patent No. 12,201,573.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claims and the patented claims are minor and obvious from each other. For example, the instant claims 9-10, 12 and 13-14 are a broader version of the patented claims 6-7 (i.e., the instant claims 9-10, 12 and 13-14 do not include causing the first massage portion to move along an annular trajectory as in the patented claims 6-7). In the instant claims 9-10, 12 and 13-14, the device included in the patented claims 6-7. Any infringement over the patented claims would also infringe over the instant claims. Therefore, the instant claims 9-10, 12 and 13-14 do not differ in scope from the patented claims 6-7. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 9, the following comparison between the patented claim 6 or 7 and the instant application claim, see underlined features in the patented claim, show what elements have been excluded in the presentation of the instant application claim and patented claim.
Patented claim 6 or claim 7
Application claim 9
1. (for reference) A massage device, comprising: a shell configured to be inserted into a vagina or a rectum of a human body along an insertion direction, a lateral wall of the shell defined a moving space, the lateral wall comprising an outer lateral surface defining a first opening of the moving space, the moving space communicating with an outside environment out of the outer lateral surface of the shell, the moving space being defined in a middle portion of the shell in the insertion direction and extending through a lateral wall of the shell to define the first opening therein, the moving space communicating with an external environment out of the shell through the first opening of the lateral wall of the shell;
a first massage portion extending into the moving space of the shell, the first massage portion forming a soft layer, the soft layer comprising wrinkles; and a first driving unit arranged in the shell and connected to the first massage portion, the first massage portion connected to the first driving unit in a transmission way, the first massage portion being swingable in a lateral direction of the shell under the driving of the first driving unit, wherein when the first massage portion swings, a first end portion of the first massage portion is reciprocating to at least a first position inside the moving space of the shell and at least a second position in the outside environment out of the outer lateral surface of the shell, the first driving unit comprising a swing arm, a rotary motor and a rotary member comprising an eccentric shaft, the swing arm comprising a first end portion and a second end portion that is opposite from the first end portion, a length of the swing arm extends between the first end portion and the second end portion, the first end portion is positioned inside the first massage portion, the second end portion of the swing arm comprising a shaft hole for receiving the eccentric shaft of the rotary member, the swing arm comprising a first bend extending along a width direction of the swing arm and a second bend extending along a height of the swing arm to allow the first end portion of the swing arm to extend upward relative to the second end portion when a long side of the second end portion is oriented horizontally, the swing arm further comprising an elongated sliding groove positioned between the first end portion and the second end portion, the first bend is positioned between the elongated sliding groove and the shaft hole, the second bend is positioned between the elongated sliding groove and the first end portion, the elongated sliding groove is slidably connected to the shell via a first shaft, the first shaft is configured to slide within the elongated sliding groove; wherein a rotary movement of the rotary member is configured to swing the swing arm by causing the elongated sliding groove to slide relative to the first shaft, thereby causing the first massage portion to move along an annular trajectory under the driving of the first driving unit and the wrinkles are arranged to extend over the second bend and are configured to allow the first massage portion to flexibly move in both a linear direction along a longitudinal direction of moving space and a height direction of the moving space to produce the annular trajectory.
6. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and one of the two massage surfaces is inside the moving space when the other one of the two massage surfaces extends into the external environment out of the shell.
OR
7. The massage device according to claim 1, wherein the moving space extends through two opposite sides of the lateral wall of the shell, and two openings the first opening and a second opening are formed at two opposite sides of the lateral wall of the shell, respectively; and, wherein the first massage portion comprises two massage surfaces formed at two opposite lateral sides of the first massage portion, respectively, and the two massage surfaces extend into the external environment out of the shell through the two openings, respectively.
9. A massage device comprising: a shell including a lateral wall extending along a predetermined direction, the lateral wall having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside the shell to an outside environment out of the shell; and
a driving member arranged in the shell, wherein: the massage member has a first end that is coupled to the driving member and a second end that extends into the moving space, and
the driving member causes the second end of the massage member to swingingly move toward a first direction away from the shell until the second end of the massage member reaches a first position outside the lateral wall of the shell, and to move backward in a second direction opposite the first direction after reaching the first position, wherein the opening extends through the lateral wall of the shell along the first and second directions, the second end of the massage member swings further in the second direction until reaching a third position outside the lateral wall of the shell, in the first position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a first body part outside the moving space, and in the third position, the second end of the massage member protrudes past the lateral wall of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
The instant claims 10 and 12-14 are rejected by the patented claim 6 or claim 7.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-10 and 13-17 of Co-pending Application No. 19/019,526.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the co-pending claims are minor and obvious from each other. For example, the instant claim is a broader version of the co-pending claims 7-10 and 13-17 (i.e., the instant claim 1 does not include the annular concaved from a top side towards a bottom side of the middle portion of the flexible outer shell as in the co-pending claims 7-10 and 13-17). In the instant claim 1, the device included in the co-pending claims 7-10 and 13-17. Any infringement over the co-pending claims would also infringe over the instant claims. Therefore, the instant claim 1 does not differ in scope from the co-pending claims 7-10 and 13-17. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 1, the following comparison between the co-pending claim 7 and the instant application claim, see underlined features in the co-pending claim, show what elements have been excluded in the presentation of the instant application claim and co-pending claim.
Co-pending claim 7
Application claim 1
7. A massage device, comprising: a flexible outer shell comprising a front portion and a rear portion, and a middle portion being provided between the front portion and the rear portion, a first chamber being defined inside the front portion, and a second chamber being defined inside the rear portion; an annular wall concaved from a top side towards a bottom side of the middle portion of the flexible outer shell, the annular wall encircling a moving space that communicates with an outside environment out of the flexible outer shell; a first massage member comprising a flexible cover protruding from the annular wall towards the moving space; and
a driving module mounted in the second chamber for driving the first massage member to move relative to the flexible outer shell; wherein, during use, the front portion and the middle portion of the flexible outer shell are configured to be inserted into a cavity of a human body, and
the first massage member is configured to be driven to perform reciprocating motion by the driving module, and the massage member is movable to a first position above the moving space to massage a cavity wall of the human body around the flexible outer shell; wherein the annular wall extends from the top side to the bottom side of the middle portion of the flexible outer shell, and the moving space extends through the flexible outer shell in a up-and-down direction; and wherein during use, the first massage member is at least reciprocating to the first position above the moving space and a second position below the moving space, so as to be configured to massage two opposite sides of the cavity wall of the human body around the flexible outer shell; and wherein the first massage member further comprises a hard rod configured with a front end thereof extending into the flexible cover and a rear end thereof connected to the driving module, and wherein a middle portion of the hard rod is rotatably connected to a hard inner shell fixed inside the flexible outer shell to drive the flexible cover to swing relative to the flexible outer shell.
1. A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
Instant claim 1 is also being rejected by co-pending claims 8-10 and 13-17 which contain all the limitations of the co-pending claim 7. Any infringement over the patented claims would also infringe over the instant claim. Therefore, the instant claim 1 does not differ in scope from the co-pending claims 8-10 and 13-17. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of Co-pending Application No. 19/019,526.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the instant claim and the co-pending claim are minor and obvious from each other. For example, the instant claim 5 is a broader version of the co-pending claim 10 (i.e., the instant claim 5 does not include the annular concaved from a top side towards a bottom side of the middle portion of the flexible outer shell as in the co-pending claim 10). In the instant claims 1 and 5, the device included in the co-pending claim 10. Any infringement over the co-pending claims would also infringe over the instant claims. Therefore, the instant claim 5 does not differ in scope from the co-pending claim 10. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Regarding instant application claim 5, the following comparison between the co-pending claim 10 and the instant application claim, see underlined features in the co-pending claim, show what elements have been excluded in the presentation of the instant application claim and co-pending claim.
Co-pending claim 10
Application claim 5
7. (for reference) A massage device, comprising: a flexible outer shell comprising a front portion and a rear portion, and a middle portion being provided between the front portion and the rear portion, a first chamber being defined inside the front portion, and a second chamber being defined inside the rear portion; an annular wall concaved from a top side towards a bottom side of the middle portion of the flexible outer shell, the annular wall encircling a moving space that communicates with an outside environment out of the flexible outer shell; a first massage member comprising a flexible cover protruding from the annular wall towards the moving space; and
a driving module mounted in the second chamber for driving the first massage member to move relative to the flexible outer shell; wherein, during use, the front portion and the middle portion of the flexible outer shell are configured to be inserted into a cavity of a human body, and
the first massage member is configured to be driven to perform reciprocating motion by the driving module, and the massage member is movable to a first position above the moving space to massage a cavity wall of the human body around the flexible outer shell; wherein the annular wall extends from the top side to the bottom side of the middle portion of the flexible outer shell, and the moving space extends through the flexible outer shell in a up-and-down direction; and wherein during use, the first massage member is at least reciprocating to the first position above the moving space and a second position below the moving space, so as to be configured to massage two opposite sides of the cavity wall of the human body around the flexible outer shell; and wherein the first massage member further comprises a hard rod configured with a front end thereof extending into the flexible cover and a rear end thereof connected to the driving module, and wherein a middle portion of the hard rod is rotatably connected to a hard inner shell fixed inside the flexible outer shell to drive the flexible cover to swing relative to the flexible outer shell.
10. The massage device according to claim 7, wherein the flexible outer shell is configured as an elongated rod, the front portion and the middle portion of the flexible outer shell are configured for inserting into a vagina of the human body, and the rear portion of the flexible outer shell is configured for holding of the massage device.
1. (for reference) A massage device, comprising: a shell having an opening that defines a moving space for a massage member within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell, wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell; and
a driving member arranged in a first chamber of the shell, the first chamber being defined by an interior surface of the shell, and the driving member being connected to the massage member and configured to cause the massage member to swing in opposite directions,
wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to swing up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to swing down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part.
5. The massage device according to claim 1, wherein: the shell has an elongated shape, and comprises a front portion and a rear portion, provided at two opposite ends of the shell, and a middle portion provided between the front portion and the rear portion, the opening is defined at the middle portion, and the first chamber is defined inside the rear portion.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments
The affidavit under 37 CFR 1.132 filed on 3/12/2026 is sufficient to overcome the rejection of claims 1-16 based upon the reference Chen (2024/0108538) under 35 U.S.C. 102(a)(2), 103 and non-statutory double patenting.
Applicant’s arguments, see pages 9-14, filed on 3/12/2026, with respect to the 102(a)(2), 103 and double patenting rejections using the reference Chen (2024/0108538) have been fully considered and are persuasive. The rejections of claims 1-16 with reference Chen (2024/0108538) has been withdrawn.
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claim 4 is allowed over the prior art.
Claim 4 is 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.
The following is an examiner’s statement of reasons for indicating allowable subject matter: The closest prior art of record Leng (CN 204319236), Lin (CN 206492000), Nan (2006/0069330) do not specifically disclose the claimed apparatus as presented in the claim 4.
Regarding claim 4, Leng discloses a massage device (entire device in fig. 1), comprising: a shell (shell of 1, 2 and 3, fig. 1) having an opening that defines a moving space (see the annotated-Leng fig. 1 above, the moving space is defined as the space formed by 3 where 5 rotates within, the wall formed by 3 where the moving space extends through is the lateral walls) for a massage member (at least one blade of 5, fig. 1, paragraphs 0016-0017) within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment outside of the shell (see figs. 1-3 and paragraphs 0021-0022 and 0026, Leng discloses that the massage member rotates and when 5 rotate, the massage member would move from inside of the shell to an outside environment outside of the shell), wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell (see the annotated-Leng fig. 1 above with reference to fig. 2); and a driving member (40, 41 and 42, figs. 2-3 and paragraph 0017) arranged in a first chamber of the shell (the chamber where the 42 is positioned within the shell is the first chamber of the shell, see figs. 1-3), the first chamber being defined by an interior surface of the shell (the chamber of shell where motor 42 is positioned within would have an interior surface of the shell, see figs. 1-3), and the driving member being connected to the massage member and configured to cause the massage member to rotate (see paragraphs 0021-0022 and 0026), the massage member has a first end that connects to the driving member and a second end that extends into the moving space (see the annotated-Leng fig. 1 above, each blade (massage member) of 5 has a first end that connects to the driving member and a second end that extends into the moving space), the driving member causes the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part (see paragraphs 0021-0022 and 0026 and the full disclosure and figs. 1-3, when 5 is being rotated by the motor 42, the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part).
Lin discloses a massage device (entire device in fig. 1, paragraphs 0001-0002, 0006-0007 and 0019-0022 of the English translation) comprising: a shell (shell is sleeve of 1 and shell 21/25 of 2, see the annotated-Lin fig. 1 above, paragraph 0022) having an opening that defines a moving space for a massage member (a paddle of 22, see figs. 1-2 and paragraph 0024, Lin discloses that 22 is a silicone sheet) within the shell, such that the massage member is allowed to move from inside of the shell to an outside environment out of the shell (see the annotated-Lin for claims 1-3 figs. 1-3 above, paragraphs 0022-0029), wherein the shell further comprises two lateral walls that extend along a length of the shell, such that left and right sides of the moving space in the a longitudinal direction of the shell are covered by the two lateral walls and top and bottom sides of the moving space in the longitudinal direction of the shell are not covered by the lateral walls and are open to the outside environment out of the shell (see the annotated-Lin for claims 1-3 figs. 1-2 above); and a driving member (24, fig. 2, paragraph 0023) arranged in a first chamber of the shell (24 is positioned within a chamber of 25 of the shell 2, figs. 1-2), the first chamber being defined by an interior surface of the shell (see figs. 1-2, the part 25 defines an interior surface of the shell), and the driving member being connected to the massage member and configured to cause the massage member to rotate, wherein: the massage member has a first end that connects to the driving member and a second end that extends into the moving space, the driving member causes the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and to rotate down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part (see the annotated-Lin for claims 1-3 and paragraphs 0022-0029, when 22 rotates, the driving member is capable of causing the second end of the massage member to rotate up toward the top side of the moving space until the second end of the massage member reaches a first position outside the lateral walls of the shell, and capable of rotating down toward the bottom side of the moving space until the second end of the massage member reaches a second position outside the lateral walls of the shell, and in the first position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a first body part outside the moving space, and in the second position, the second end of the massage member protrudes past the lateral walls of the shell and is configured to touch a second body part outside the moving space that is opposite the first body part).
Lin discloses that the first chamber is separated from the moving space via a separating wall that is located between the first chamber and the moving space (see the annotated-Lin for claims 1-3 figs. 1-2 above, the first chamber is formed by 25, the wall separating the chamber and the moving space can be interpreted as portion of 25), and the massage member comprises an elastic body that extends into the moving space (see paragraph 0024 of Lin, Lin discloses that 22 is made of silicone, which is elastic, therefore, the massage member comprises an elastic body that extends into the moving space, the elastic body is one paddle plus the circular body where the paddle extends from).
Lin discloses that the massage member further comprises a transmission rod (23, fig. 2, paragraphs 0024-0026 of Lin) configured, such that a front end of the transmission rod is inserted into the elastic body and a rear end of the transmission rod is connected to the driving member (24 of Lin), and a middle portion of the transmission rod is rotatably connected to the shell, such that the elastic body is driven to move relative to the shell (see the annotated-Lin for claims 1-3 figs. 1-2 above and paragraphs 0022-0029 of Lin, as shown, when assembled, the front end of the transmission rod is inserted into the elastic body formed by 22, and a rear end of the transmission rod is connected to the driving member, and a middle portion of the transmission rod is rotatably connected to the shell, such that the elastic body is driven to swing relative to the shell).
Nan teaches a driving member (36, figs. 2-3, paragraph 0026) and a button configured to change the direction of the driving member (see fig. 4 and paragraph 0032, Nan discloses button D changes the direction of the rotation of rod 28 from clockwise to counter-clockwise or vice-versa).
However, Leng, Lin and Nan fail to disclose the combination of structures as claimed in claims 1-3 and the driving member comprises a driving motor and a wheel connected to the driving motor, the rear end of the transmission rod defines a sliding groove, and an eccentric rod extends outwardly from the wheel and slidably engages into the sliding groove. Therefore, to modify Leng, Lin and Nan to arrive at the claimed invention would not have been obvious and would be based upon improper hindsight reasoning.
Conclusion
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/TU A VO/Primary Examiner, Art Unit 3785
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