DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 19/347,627 and 18/744,856, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Neither of these applications teaches the recited passive reconfigurable element that is passively reconfigured by the pressure change generated by the deformation of the active deformable element. The disclosure of Application Nos. 18/974,075 and 18/400,273 does provide adequate support and enablement for this limitation. Accordingly, the effective filing date of the independent claims is the filing date of Application No. 18/400,273, which is 29 December 2023.
Further, none of the four cited prior-filed applications teaches the subject matter recited by claims 9, 12, and 13. Accordingly, the effective filing date for these claims is the actual filing date of the present application, which is 15 June 2026.
Specification
The disclosure is objected to because of the following informalities: Applicant is requested to amend the first paragraph of the specification to indicate that related application 19/347,627 has been allowed. This application has not yet been assigned a patent number, but if it is issued within the time between this Office action and Applicant’s response, Applicant is requested to include the patent number in the amendment to the specification.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 19 is objected to because of the following informalities: in line 4, “repeatedly” should apparently read --repeated--. Appropriate correction is required.
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: a drive mechanism, an active deformable element, and a passive reconfigurable element in claims 1 and 14, along with a sliding and guide assembly (or guide assembly) in claim 9. The drive mechanism can include a motor and a transmission mechanism that can include a thread pair of a screw rod and movable member, along with a guide assembly. The active deformable element can include a bellows, a telescopic sleeve, a telescopic tube, a collapsible elastic bladder and corrugated flexible tube, or a folded wall tube. The passive reconfigurable element can include a flexible capsule, a flexible wall, or an airbag. The sliding and guide assembly can include a guide rod and a slider.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 6 recites that the drive mechanism drives the closed end of the active deformable element toward a motor of the drive mechanism to contract the active deformable element. However, the embodiments taught by the specification show and describe that driving the closed end of the active deformable element towards the motor does not contract the active deformable element; instead, it expands the active deformable element when driving it towards the motor.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “configured to deform in response thereto” in lines 4-5. It is not clear what is meant by “in response thereto” in this limitation. This has been interpreted herein to recite that movement of the drive mechanism causes the active deformable element to deform.
Claim 6 recites the limitation “reduces an inner space thereof” in line 4. It is not clear which component is referred to by “thereof” in this limitation.
Claim 6 also recites the limitation "the integrated drive mechanism" in line 5. There is insufficient antecedent basis for this limitation in the claim; only a drive mechanism has been previously recited.
Claim 6 also recites the limitation “facilitating miniaturization thereof” in line 6. Again, it is not clear which component(s) is referred to by “thereof” in this limitation.
Claim 9 recites the limitation "the guide assembly" in line 3. There is insufficient antecedent basis for this limitation in the claim; only a sliding and guide assembly has been previously recited.
Claim 11 recites the limitation " a collapsible elastic bladder and corrugated flexible tube" in lines 2-3. It is not clear if this is meant to comprise a single option for the active deformable element (such that both the collapsible elastic bladder and the corrugated flexible tube must be included) or if these are separate options. If the latter is intended, the limitation should read --a collapsible elastic bladder, a [[and]] corrugated flexible tube--.
Claims 2-13 are rejected by virtue of their dependence upon claim 1.
Claim 14 recites the limitation “configured to deform in response thereto” in lines 4-5. It is not clear what is meant by “in response thereto” in this limitation. This has been interpreted herein to recite that movement of the drive mechanism causes the active deformable element to deform.
Claim 19 recites the limitation "the at least a portion" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim
Claim 20 recites the limitation "the integrated drive mechanism" in line 5. There is insufficient antecedent basis for this limitation in the claim; only a drive mechanism has been previously recited.
Claim 20 also recites the limitation “facilitating miniaturization thereof” in line 6. Again, it is not clear which component(s) is referred to by “thereof” in this limitation.
Claims 15-20 are rejected by virtue of their dependence upon claim 14.
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.
Claims 1-8, 11, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Witt (U.S. Pub. No. 2021/0128395 A1).
Regarding claim 1, Witt discloses a sexual stimulation device 2/2’/2’’ (Abstract; Figs. 2, 4, 5, 7, 12), comprising: a housing 4/6 ([0048]; [0063]; [0066]); a drive mechanism 30/32 disposed in the housing ([0054]); an active deformable element 26 coupled to the drive mechanism and configured to deform in response thereto to generate a pressure change ([0052]; [0058]); and a passive reconfigurable element 14 configured to stimulate at least part of a sensitive area of a user ([0048]-[0049]), wherein the active deformable element, the passive reconfigurable element, and the housing cooperatively define a substantially sealed space 28/42 such that deformation of the active deformable element generates the pressure change within the substantially sealed space, and the pressure change is transmitted through the substantially sealed space to thereby passively reconfigure the passive reconfigurable element to provide stimulation to the at least part of the sensitive area ([0052]; [0058]-[0059]; [0066]-[0068]).
Regarding claim 2, Witt discloses that the sexual stimulation device includes a pressure pathway disposed within the substantially sealed space, and the pressure pathway is configured to transmit the pressure change generated by the active deformable element to the passive reconfigurable element ([0058]-[0059]; [0066]-[0068]; e.g., pathway within the chamber).
Regarding claim 3, Witt discloses that the pressure change within the substantially sealed space is dynamically redistributed within the substantially sealed space such that repeated deformation of the active deformable element induces corresponding passive reconfiguration of the passive reconfigurable element to achieve repeatable pressure cycling ([0058]-[0059]; [0066]-[0068]).
Regarding claim 4, Witt discloses that the substantially sealed space includes an interior volume of the active deformable element, a pressure pathway, and a gap space between the passive reconfigurable element and the housing while excluding an interior volume of the passive reconfigurable element and an exterior space of the active deformable element (Figs. 2, 7, 9; [0052]).
Regarding claim 5, Witt discloses that the drive mechanism is partially disposed inside the active deformable element and partially disposed between the active deformable element and the passive reconfigurable element (Fig. 2; [0054]).
Regarding claim 6, Witt discloses that an end of the drive mechanism is fixedly connected to a closed end of the active deformable element, such that the drive mechanism drives the closed end of the active deformable element toward a motor of the drive mechanism to contract the active deformable element and reduces an inner space thereof, thereby reducing space occupied by the integrated drive mechanism and the active deformable element and facilitating miniaturization thereof (Fig. 2; [0054]; [0063]; movement is the same as in the present invention).
Regarding claim 7, Witt discloses that the drive mechanism includes a motor 30 and a transmission mechanism 32 coupled with the motor ([0054]).
Regarding claim 8, Witt discloses that the transmission mechanism is configured to convert rotary motion of the motor to a reciprocating motion of the active deformable element to control extension and contraction of the active deformable element ([0054]).
Regarding claim 11, Witt discloses that the active deformable element includes at least one of a bellows, a telescopic sleeve, a telescopic tube, a collapsible elastic bladder and corrugated flexible tube, and a folded wall tube ([0056]-[0058]).
Regarding claim 14, Witt discloses a sexual stimulation device 2/2’/2’’ (Abstract; Figs. 2, 4, 5, 7, 12), comprising: a housing 4/6 ([0048]; [0063]; [0066]); a drive mechanism 30/32 disposed in the housing ([0054]); an active deformable element 26 coupled to the drive mechanism and configured to deform in response thereto to generate a pressure change ([0052]; [0058]); and a passive reconfigurable element 14 configured to stimulate at least part of a sensitive area of a user ([0048]-[0049]), wherein the active deformable element, the passive reconfigurable element, and the housing cooperatively define a substantially sealed space 28/42, the pressure change is dynamically redistributed within the substantially sealed space as the pressure change is transmitted through the substantially sealed space to thereby passively reconfigure the passive reconfigurable element ([0052]; [0058]-[0059]; [0066]-[0068]).
Regarding claim 15, Witt discloses that the substantially sealed space includes a first pressure chamber in the active deformable element, a second pressure chamber between the passive reconfigurable element and the housing, and a pressure pathway configured to transmit the pressure change from the first pressure chamber to the second pressure chamber (Fig. 2; e.g., portion of 28 within the active deformable element is the first chamber, portion of 28 between the passive reconfigurable element and the housing is the second chamber).
Regarding claim 16, Witt discloses a support frame configured to support the drive mechanism (Fig. 2; e.g., motor 30 is supported by a frame).
Regarding claim 17, Witt discloses that the sexual stimulation device includes a partition member 24, and an open end of the active deformable element is joined and sealed with the partition member (Fig. 2; [0052]-[0053]).
Regarding claim 18, Witt discloses that the pressure pathway extends through the partition member to provide fluid communication between the first pressure chamber and the second pressure chamber (Fig. 2).
Regarding claim 19, Witt discloses that the drive mechanism comprises a motor 30 and a transmission mechanism 32 coupled with the motor, and the transmission mechanism is configured to convert rotary motion of the motor into reciprocating linear movement of the active deformable element, thereby causing repeatedly stretching and retracting of the at least a portion of the active deformable element ([0054]; [0058]).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Witt as applied to claim 1 above, and further in view of Lam (U.S. Pub. No. 2025/0248887 A1). Witt discloses the invention as claimed, see rejection supra, but fails to disclose that at least a part of the active deformable element is configured to undergo visible reciprocating movement to provide a perceptible visual indication corresponding to dynamic changes in sexual stimulation applied by the passive reconfigurable element to the at least part of the sensitive area of the user, with the device further comprising a cover covering the active deformable element, wherein the cover is translucent. Lam discloses a similar sexual stimulation device (Abstract) comprising a translucent cover in order to allow the user to observe the effects of the device on their genitalia ([0016]). 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 invention of Witt with such a translucent cover, as taught by Lam, in order to allow the user to observe the effects of the device on their genitalia. It is further submitted that such a translucent cover would allow the active deformable element to undergo visible reciprocating movement to provide a perceptible visual indication corresponding to dynamic changes in sexual stimulation applied by the passive reconfigurable element to the at least part of the sensitive area of the user.
Allowable Subject Matter
Claims 9, 10, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: regarding claim 9, none of the prior art of record teaches or reasonably suggests such a transmission mechanism that includes a thread pair and a sliding and guide assembly, wherein the thread pair includes a screw rod and a movable member movable relative to the screw rod and the guide assembly is configured to guide a linear movement of the movable member, in combination with such a sexual stimulation device. Regarding claims 10 and 20, none of the prior art of record teaches or reasonably suggests such a sexual stimulation device wherein the motor is disposed between the active deformable element and the passive reconfigurable element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason M. Sims can be reached at (571)272-7540. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THADDEUS B COX/Primary Examiner, Art Unit 3791
