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 in response to the amendment filed on 02/24/2026. As directed by the amendment, claims 5-7 and 13 were canceled, claims 1 and 12 were amended, and claim 16 was newly added. Thus, claims 1-4, 8-12, and 14-16 are presently pending in this application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lieberman et al. (US 2008/0178886; hereinafter “Lieberman”) in view of Baba et al. (US 2018/0228400; hereinafter “Baba”) and Raje et al. (US 2003/0075180; hereinafter “Raje”).
Rejection to claim 15, Lieberman discloses a mask (see Lieberman mask 10) comprising:
a mask body part configured to cover a face of a subject (see Lieberman mask body 12); and
a cushion member fixed to the mask body part and contacts the face of the subject (see Lieberman seal portion 14; Fig. 1 seal portion 14 contacts user’s face),
wherein the mask body part has an inner side face at least a portion of which is configured to face the face of the subject (see Lieberman the mask body part 12 is shown to have an inner side face facing the subject, see figs. 1 and 3), an outer side face positioned on an opposite side to the inner side face, and a plurality of protrusions provided on the outer side face (see Lieberman the mask body 12 is shown to have an outer side face, opposite the inner side face, which faces away from the subject, see figs. 1 and 3),
wherein the cushion member has a plurality of through holes each of which is engaged with a corresponding one of the plurality of protrusions (see Lieberman barbs 76; see fig. 19 and para. [0076] mask body 12 includes barb 76; see placement of original embodiment barbs 30 in Fig. 8, with barbs 76 applied from the various embodiments. Barbs engage with [0072] hole or piercings 78 in seal portion 14).
Lieberman is silent as to an inner part disposed between the mask body part and the cushion member, wherein the inner part has a cup configured that faces at least one of a nose and a mouth of the subject, and an attachment arm configured to connect the cup to the mask body part. However, Baba teaches an inner part (see Baba Fig. 2 exhaled air collection cup 60), wherein the inner part has a cup configured that faces at least one of a nose and a mouth of the subject (see Baba [0035] the cup 60 comprises a nasal cup 50 facing the nose of the subject and a mouth cup 70 facing a mouth of the subject), and an attachment arm configured to connect the cup to the mask body part (see Baba fitting portions 65; [0038] fitting portions 65 on cup 60 connect cup 60 to the mask body portion 20). 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 between the mask body part and the cushion member of Lieberman with the addition of an attached inner part, attached via attachment arm as taught by Baba so as to direct exhaled air from the nose and mouth more precisely to an outlet and more precisely fit the nose and mouth features of the user.
Modified Lieberman is silent as to wherein the mask body part further has a groove engaged with the attachment arm.
However, Raje teaches a groove engaged with the attachment arm (see Raje Fig. F67 and [0234] notches 646 on each sides of clips 512; wherein the clips 512 are representative of the Babe fitting portions 65). 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 space next to the attachment arms of modified Lieberman with the grooves surrounding the attachment arm as taught by Raje so as to increase the flexibility of the attachment arms, thus preventing the attachment arms from breaking due to bending of the mask when the mask is worn. (see Raje [0234]).
Modified Lieberman discloses wherein a first protrusion of the protrusions is provided on the outer side face so as to face the groove (see Lieberman barb 76 as in Fig. 19, applied to the placement and size in length of barb 70 on Fig. 23, 24).
Modified Lieberman disclose a lengthwise dimension of the first protrusion is larger than a lengthwise dimension of other protrusions adjacent to the first protrusion (see Lieberman Fig. 23 first protrusion defined by length of barb 70 is longer than adjacent placement and size of barb 30), but is silent as to the other protrusions adjacent to the first protrusion on both sides. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to rearrange the other protrusions to be on both sides of the first protrusion, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.04(VI)(C).
Allowable Subject Matter
Claims 1-4, 8-12, 14, and 16 are allowed.
Response to Arguments
Applicant's arguments filed 02/24/2026 have been fully considered but they are not persuasive.
Applicant argues, on page 7 of the remarks, that “the prior art does not teach or render obvious "a lengthwise dimension of the first protrusion is larger than a lengthwise dimension of other protrusions adjacent to the first protrusion on both sides" as recited therein” and “the Office action does not identify what the "variable" is, what the "optimum or workable ranges" are, or what "recognized result" is achieved”. However, Examiner disagrees. The prior art of Lieberman discloses both the larger lengthwise dimension protrusion (barb 70) and the smaller lengthwise dimension protrusion (barb 30) within the art. The optimum value regarding placement variable of the varying length protrusions is a mere rearrangement of parts (hence the “See MPEP 2144.04(VI)(C)” arrangement of parts in the rejection as well). The present application lacks criticality regarding the placement of specific sized protrusions, as the specification does not provide a reasoning the specific arrangement of parts is advantageous to the invention. Similarly, Lieberman shows many varying arrangements of placement of protrusions (see Lieberman Fig. 8 and 21-23) showing a lack of criticality in the exact arrangement. Thus, the placement of the protrusions is a variable that can be routinely optimized according to rearrangement choice. Thus, the rejection still stands.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GWYNNETH L HOWELL whose telephone number is (703)756-4742. The examiner can normally be reached 8:30-4:30 M-F.
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/GWYNNETH L HOWELL/Examiner, Art Unit 3785
/RACHEL T SIPPEL/Primary Examiner, Art Unit 3785
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