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 .
This office action is responsive to Request for Reconsideration filed on 08/19/2025. As directed by the amendment: claims 1 – 15 are pending & no claims have been amended. Applicant submitted suggestions for amendments and arguments.
Response to Arguments
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant explains they sent the drawing to the email of examiner Graciela Lebron, however in order to consider the drawings they must be submitted officially to the patent applications. Based on the drawings sent to Examiner Graciela Lebron email, the objections would be withdrawn as the numbers can be read clearly. It is recommended for the applicant to submit a Internet Communication Form in order for the examiner to be able to communicate directly with the applicant through email.
In order to consider the amended claims, the claims must be officially submitted in a separate sheet with all the changes added. Based on the remarks sent, the examiner will go over the remarks and will provide a response to arguments. Any recommended amended claims will be examined and recommendations will be provided.
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant argues Qu straps do not circulate the ear, which is not persuasive as Figure 1 of Qu discloses how the strap 110 is found inside the tubular shape device 132 and does circulate the ear. This is disclosed in the Office Action by having Figure 1A to be the reference figure. Also, the applicant argues Zou does not disclose a circular shaped elongated slit. However, Qu already discloses a tubular element that circulates the ear, meaning the modification to Qu would make the added elongated slit to Qu have a circular shape. When finding a modification, it is enough for the inventions to be analogous and have similar functions. The shape of Zou is not a persuasive argument for the modifications not to work. The locking mechanism is a limitation that is found in QU as disclosed in the Office Action.
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant argues in claim 4 the ridges and grooves are not circulating the ear and are connected behind the head for size adjustment. However, based on the broadest reasonable interpretation of the claims the ridges and grooves are never specified to be circulating the ear.
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant argues in claim 8 & 10 that Qu does not disclose a round tubular shape with lock mechanism, as Zou does not circle the ear. However, based on the broadest reasonable interpretation, Zou does include a round tubular element. (Figure 4 discloses the shape). Based on the broadest reasonable interpretation of the limitation, “round” does not mean rounded in the ear instead means the shape of the element itself is round. This distinction is recommended to interpret the limitation differently.
Applicant appears to suggest amending claims 2 and 3 such that the device is made of rubberized material and not foam. If this amendment was made then it would overcome the current rejection.
The recommended deletion of claim 9 has been considered, but the examiner would need more time to officially consider any changes in the dependent claims and any new matter issues.
Applicant’s suggested amendment in claims 7 & 15 have been considered and would be rejected with the primary reference Qu as it has already been disclosed that the tubular shape may not be flattened and it holds the strap in place in circling the ear. That has been established in the Office action.
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant argues in claim 11 that the hard foam modification conducted with Formica is not circulating the ear does not have a locking mechanism. However, the limitation only discloses the hard foam material and Qu already discloses an element that circulated the ear and includes a locking mechanism. Meaning the modification makes Qu have a hard foam tubular element that circulates the ear and includes a locking mechanism.
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. The applicant argues in claim 5 & 13 that Qu does not disclose a self-closing cut. However, it was disclosed that based on the use of foam material from Formica, it would have been obvious to have a self-closing slit as foam is a material that is elastic and soft that would be able to maintain the predetermined shape when a force is used on it (Formica, Paragraph 0018). Based on the broadest reasonable interpretation, the material is considered to be self-closing after force is used on it.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 4, 6, 8 – 9, 12 & 14is/are rejected under 35 U.S.C. 103 as being unpatentable by Qu (WO 2018086061 A1) in view of ZOU (CN 211211555 U).
Regarding claim 1, discloses a shield device (Figure 1A), comprising:
a tubular shape device 132, the tubular shape device 132; (Figures 1B/2B )
Qu discloses an internal space of the tubular shape device 132 includes one or more locks 131 to securely lock the strap inside the tubular shape device 132. (Figure 1A & Figure 3A/3B)
Qu does not disclose an elongated slit configured to receive a strap of a face mask.
ZOU discloses an elongated slit 51 configured to receive a strap 2 of a face mask 1. (see annotated Figure 4)
It would have been obvious to one of ordinary skill before the filing date to include an elongated slit that received the strap as to make them be detachably connected in order to make the device more versatile and the mask be easily discarded if needed. (Page 2, lines 39 – 43; last paragraph)
Regarding claim 4, Modified Qu discloses a shield device as claimed in claim 1.
Modified Qu disclose wherein the one or more locks 331 comprises one or more corresponding ridges and grooves 342. (see annotated Figure 3B )
Regarding claim 6, Modified Qu discloses a shield device as claimed in claim 1.
Modified Qu does not disclose wherein the device comprises a round tubular shape.
ZOU discloses wherein the device comprises a round tubular shape (see annotated Figure 4).
Regarding the shape of the tubular shape, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), [t]he court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” MPEP § 2144.04-IV-B.
Regarding claim 8, A shield device system, comprising:
shield device (Figure 1A) including:
a tubular shape device 132, the tubular shape device 132, and an internal space of the tubular shape device 132 includes one or more locks 131 to securely lock the strap inside the tubular shape device 132 (Figure 1A/1B discloses the tubular shape device & Figure 3A/3B discloses a lock)
and a strap 111 & 112, partially enclosed within the internal space of the tubular shape device (Figure 1A);
and an item coupled to the strap (Figure 1A shows a mask being coupled to the strap)
Qu does not disclose an elongated slit configured to receive a strap of a face mask.
ZOU discloses an elongated slit 51 configured to receive a strap 2 of a face mask 1. (see annotated Figure 4)
It would have been obvious to one of ordinary skill before the filing date to include an elongated slit that received the strap as to make them be detachably connected in order to make the device versatile and the mask be easily discarded if needed. (Page 2, lines 39 – 43)
Regarding claim 9, Modified Qu discloses a shield device as claimed in claim 8.
Modified QU discloses wherein the item coupled to the strap comprises at least one of masks, glasses, reading glasses, prescription glasses, sunglasses, and binoculars (Figure 1A shows a mask coupled to the strap).
Regarding claim 12, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu discloses wherein the one or more locks 331 comprises one or more corresponding ridges and grooves 342. (Figure 3B)
Regarding claim 14, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu disclose wherein the device comprises a round tubular shape 132 . (Figure 1B)
Claim(s) 2, 7, 10 & 15 is/are rejected under 35 U.S.C. 103 as being unpatentable by QU (WO 2018086061 A1) and ZOU (CN 211211555 U).as seen in claims 1 & 8, in view of Carolan (US 3040741 A).
Regarding claim 2, Modified Qu discloses a shield device as claimed in claim 1.
Modified Qu does not disclose wherein the device comprises foam.
ZOU discloses wherein the device comprises foam (Page 5, line 4)
However, it would have been obvious to one of ordinary skill to use a foam material for the shield device as it is considered to be soft and has elasticity to ensure that the pressure is reduced and not feel pain after long time usage. (Page 5, lines 4 – 7)
Regarding claim 7, Modified Qu discloses a shield device as claimed in claim 1.
Modified Qu does not specifically disclose wherein the device comprises a flattened tubular shape.
Qu discloses that the tubular shape can have a flattened shape. (Figures 1B & 5)
Nevertheless, Carolan discloses wherein the device comprises a flattened tubular shape (see annotated Figure 1).
Regarding the shape of the tubular shape, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), [t]he court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” MPEP § 2144.04-IV-B. As Carolan and Qu discloses that tubular parts touching the head can be shaped as a flattened tubular shape.
It would have been obvious to one of ordinary skill before the filing date to change the shape of the tubular element as it would conduct the same function of the device and would not impact it in a significant way as disclosed by Qu.
Regarding claim 10, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu does not disclose wherein the device comprises foam.
ZOU discloses wherein the device comprises foam (Page 5, line 4)
However, it would have been obvious to one of ordinary skill to use a foam material for the shield device as it is considered to be soft and has elasticity to ensure that the pressure is reduced and not feel pain after long time usage. (Page 5, lines 4 – 7)
Regarding claim 15, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu does not specifically disclose wherein the device comprises a flattened tubular shape.
Qu discloses that the tubular shape can have a flattened shape. (Figures 1B & 5)
Nevertheless, Carolan discloses wherein the device comprises a flattened tubular shape (see annotated Figure 1).
Regarding the shape of the tubular shape, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), [t]he court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” MPEP § 2144.04-IV-B. As Carolan and Qu discloses that tubular parts touching the head can be shaped as a flattened tubular shape.
It would have been obvious to one of ordinary skill before the filing date to change the shape of the tubular element as it would conduct the same function of the device and would not impact it in a significant way as disclosed by Qu.
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Figure 1: Annotated Figure 1 of App. US 3040741 A
Claim(s) 3, 5, 11 & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over QU (WO 2018086061 A1) in view of ZOU (CN 211211555 U) as applied to claims 1 & 8 in further view of Formica (WO 2010066004 A1).
Regarding claim 3, Modified Qu discloses a shield device as claimed in claim 1,
Modified Qu does not disclose wherein the device comprises hard foam.
Formica discloses wherein the device comprises hard foam. (Paragraph 00182)
However, it would have been obvious to one of ordinary skill before the filing date to use a hard foam material for the shield device as having a thicker foam can be utilized to alter the softness of the shield device (Paragraph 00177, lines 6 – 7)
Regarding claim 5, Modified Qu discloses a shield device as claimed in claim 1.
Modified Qu does not disclose wherein the cut comprises a self-closing cut that automatically closes after a strap is inserted.
Formica does not expressly disclose wherein the cut comprises a self-closing cut that automatically closes after a strap is inserted.
However, Formica discloses the use of foam in the device which is considered to be a soft and elastic material. It would have been obvious to one of ordinary skill in the art before the effective filling date to use a material that is elastic in order to ensure that this would be able to self-close after use. It is intended to maintain the predetermined shape when a force is used on it. (Formica, Paragraph 0018)
Regarding claim 11, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu does not disclose wherein the device comprises hard foam.
Formica discloses wherein the device comprises hard foam. (Paragraph 00182)
However, it would have been obvious to one of ordinary skill to use a hard foam material for the shield device as having a thicker foam can be utilized to alter the softness of the shield device (Paragraph 00177, lines 6 – 7)
Regarding claim 13, Modified Qu discloses a shield device as claimed in claim 8.
Modified Qu does not disclose wherein the cut comprises a self-closing cut that automatically closes after a strap is inserted.
Formica does not expressly disclose wherein the cut comprises a self-closing cut that automatically closes after a strap is inserted.
However, Formica discloses the use of foam in the device which is considered to be a soft and elastic material. It would have been obvious to one of ordinary skill in the art before the effective filling date to use a material that is elastic in order to ensure that this would be able to self-close after use. It is intended to maintain the predetermined shape when a force is used on it. (Formica Paragraph 0018)
Conclusion
THIS ACTION IS MADE FINAL. 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 GRACIELA NATALIA LEBRON DE JESUS whose telephone number is (571)270-3892. The examiner can normally be reached Mon - Fri 8:00-5:00 CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kendra Carter can be reached at 571-272-9034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRACIELA NATALIA LEBRON DE JESUS/Examiner, Art Unit 3785
/KENDRA D CARTER/Supervisory Patent Examiner, Art Unit 3785