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 the amendment filed on 11/18/2025. As directed by the amendment: claim 2 has been amended, claim 19 has been cancelled. Thus, claims 1-18, 20, and 21 are presently pending in this application.
Response to Arguments
Applicant’s arguments, see pg. 5, filed 11/18/2025, with respect to the drawing objection have been fully considered and are persuasive. Therefore, the objection has been withdrawn.
Applicant’s arguments, see pg. 7-9, filed 11/18/2025, with respect to the rejection(s) of claims 2-6 under 35 U.S.C. 112 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Claim 1
Applicant argues that the teaching away of Bateman (using a convex shield in Bateman frustrates Batemans goal of retention of the pacifier) remains. The Office respectfully disagrees. The reason that the argument that Bateman teaches away from a convex shield was pervious persuasive is because Bateman was being modified to have a convex shield. However, in the present rejection of Hakim in view of Bateman, Bateman is not being modified to have a convex shield (in fact Bateman is not being modified at all). Instead, some of the teaches of Bateman are being used to modify Hakim. Therefore, the teaching away of Bateman is not applicable to the currently applied rejection as Bateman is not being modified in any way.
Applicant further argues that “Using Hakim's shield configuration would add weight to the soother further from user's mouth and therefore move the center of mass of the soother away from the mouth, not towards it. The proposed substitution would also eliminate the contact perimeter with the user's face, and therefore eliminate the resulting adhesive force provided by a shield that conforms to the face”. The Office respectfully disagrees. No substitutions have been made in the current applied rejection. Instead, Hakim has been modified to have that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield. This modification could be accomplished a number of ways (that don’t include shield shape), by a person of ordinary skill in the art (e.g. material, weight, length, size, etc.).
Claim 10
Applicant further argues that Bateman doesn’t teach the mouthpiece is a greater weight than the shield because “if the mouthpiece and the shield of Bateman share the same weight, the center of mass would still be located in the mouthpiece because Bateman's shield configuration is concave to the mouthpiece”. The Office respectfully disagrees. One of ordinary skill in the art would recognize that, in use, a user’s lips would contact the center of the shield (specifically where the mouthpiece is connected to the shield). Bateman teaches that the center of mass can be between the lips and the gums which under broadest reasonable interpretation would include any portion between the lips and the gums. This would include the lips, and since in use the lips of a user touch the center of the shield (specifically where the mouthpiece is connected to the shield), the center of mass can be located here. Since this location is entirely pas the mouthpiece, the shield must weight more than the mouthpiece to have a center of mass in this location.
Claim 20
Applicant further argues that “Bateman ultimately teaches that the center of mass should ideally ‘reside between the lips and the gums.’ The figures in Bateman do not show the pacifier in a user's mouth, but the location "between the lips and the gums" is necessarily in the user's mouth. With the convex shield configuration required by claim 20, this location is only along the mouthpiece and not, as claimed, from an innermost limit of the shield along up to 50% of the axial length of the shield of Bateman”. The Office respectfully disagrees. One of ordinary skill in the art would recognize that, in use, a user’s lips would contact the shield of Hakim in use. Bateman discloses that the center of mass is between the lips and the gums, which under broadest reasonable interpretation would include any portion between the lips and the gums. This would include the lips, and since in use the lips of a user touch the shield of Hakim, the combination teaches the claimed “center of gravity of the pacifier lies in a region which extends from an innermost limit of the shield along up to 50% of the axial length of the shield”.
Claim 18
Applicant further argues that “Fig. 1C (Tesini, [0008]) and, specifically, shows that the shield axial length is only 5 mm long”. The Office respectfully disagrees. The shield of Tesini includes 12 and 18. This dimension is shown as 20mm (15+5). Therefore, Tesini discloses a mouth shield with an axial length of at least 10mm.
Claim 21
Applicant argues Bateman teaches away from having a convex shield. The Office respectfully disagrees. Bateman is not being modified to have a convex shield (in fact Bateman is not being modified at all). Instead, some of the teaches of Bateman are being used to modify Sundkvist. Therefore, the teaching away of Bateman is not applicable to the currently applied rejection as Bateman is not being modified in any way.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Interpretation
The Office notes that the term “distal” is interpreted consistent with the specification as “away”.
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.
Claims 1-4, 7-12, 16, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hakim (WO 2013170264 A1) in view of Bateman (WO 2019162441 A1).
Regarding claims 1, 10, 16, and 17 Hakim discloses (fig. 1-6 and 14) an infant pacifier comprising:
a curved shield 16 having a central axis extending therethrough (see fig. 1 and pg. 10 second paragraph),
a mouthpiece 22 extending from a substantially convex side of the shield and along the central axis (see fig. 4-5 and pg. 10 second paragraph), for insertion into an infant's mouth (see ph. 9 last paragraph – pg. 10 first paragraph), wherein the mouthpiece 22 comprises a first end adjacent to the shield 16 and a tip distal from the shield 16 (see fig. 5);
wherein the shield 16 and the mouthpiece 22 each have an axial length (see fig. 5).
Hakim is silent regarding the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield; the mouthpiece is weighted such that a weight of the mouthpiece is greater than a weight of the shield; the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 35% of the axial length of the shield; the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 25% of the axial length of the shield.
However Bateman, in the same field of endeavor, teaches (fig. 1-4) an infant pacifier comprising: a curved shield 20 having a central axis extending therethrough (see fig. 1 and 3), a mouthpiece 10 extending along the central axis (see fig. 1 and 3), for insertion into an infant's mouth (see pg. 5 ln. 28-33), wherein the mouthpiece 10 comprises a first end adjacent to the shield and a tip distal from the shield 20 (see fig. 3); wherein the shield 20 and the mouthpiece each have an axial length (see fig. 1 and 3), and wherein the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield (see pg. 10 ln. 5-10; the lips of the infant touch the shield and the gums are positioned further back along the mouthpiece, therefore a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield);
the mouthpiece is weighted such that a weight of the mouthpiece is greater than a weight of the shield (the center of mass of the pacifier can be located in the mouthpiece, thereof it must weigh more than the shield, see pg. 10 ln. 5-10);
the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 35% of the axial length of the shield (see pg. 10 ln. 5-10; the lips of the infant touch the shield and the gums are positioned further back along the mouthpiece, therefore a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 35% of the axial length of the shield);
the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 25% of the axial length of the shield (see pg. 10 ln. 5-10; the lips of the infant touch the shield and the gums are positioned further back along the mouthpiece, therefore a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 25% of the axial length of the shield).
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 Hakim to have the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield; the mouthpiece is weighted such that a weight of the mouthpiece is greater than a weight of the shield; the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 35% of the axial length of the shield; the center of gravity lies in a region which extends from the first end of the mouthpiece along up to 25% of the axial length of the shield as taught by Bateman, for the purpose of the pacifier being able to stay in the mouth of the user (see Bateman pg. 10 ln. 5-10).
Regarding claim 2, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim further discloses (fig. 1-6 and 14) the shield comprises a center portion (portion 22 is connected to) with the central axis therethrough (see fig. 5), first and second side portions (left and right portion of 16) opposingly arranged either side of the center portion (see fig. 4), and a shield edge region (edge of 16) distal from the center portion (the edge of 16 can be seen to be away from the central portion, see fig. 4).
Regarding claim 3, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 2. Hakim further discloses (fig. 1-6 and 14) the mouthpiece 22 is mounted to the center portion of the shield 16 (see fig. 1).
Regarding claim 4, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 2. Hakim further discloses (fig. 1-6 and 14) the first side portion is configured to curve away from the mouthpiece 22 towards a first section of the shield edge region (left side extending to edge of 16, see fig. 1), and the second side portion is configured to curve away from the mouthpiece 22 towards a second section of the shield edge region (right side extending to edge of 16, see fig. 1).
Regarding claim 7, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim further discloses (fig. 1-6 and 14) the shield 16 further comprises a substantially concave side, opposingly arranged to the substantially convex side (see fig. 14).
Regarding claim 8, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 7. Hakim further discloses (fig. 1-6 and 14) the substantially concave side comprises: a region of discontinuous material (18 extends through the concave side form a discontinuous material; see fig. 5 and pg. 10 second paragraph).
Regarding claim 9, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 7. Hakim further discloses (fig. 1-6 and 14) the substantially concave side includes at least one reinforcing rib 12 (see fig. 3).
Regarding claim 11, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim further discloses (fig. 1-6 and 14) the curved shield comprises at least one air hole 18 extending therethrough (see fig. 1-3 and pg. 10 second paragraph).
Regarding claim 12, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 11. Hakim further discloses (fig. 1-6 and 14) each air hole each has a cross-sectional area (see fig. 1-3).
Hakim is silent regarding the aggregate cross-sectional area of the air holes is at least 25% of a footprint area of the shield.
However Bateman further teaches (fig. 1-4) the curved shield comprises at least one air hole 22 extending therethrough (see fig. 2, 4, and pg. 13 ln. 1-9); each air 22 hole each has a cross-sectional area and wherein the aggregate cross-sectional area of the air holes is at least 25% of a footprint area of the shield (see fig. 2, 4, and claim 19).
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 Hakim to have the aggregate cross-sectional area of the air holes is at least 25% of a footprint area of the shield as taught by Bateman, for the purpose of increasing the ability of the user to breath (see Bateman pg. 13 ln. 1-9 and claim 9).
Regarding claim 20, Hakim discloses (fig. 1-6 and 14) An infant pacifier comprising:
a curved shield 16 having a central axis extending therethrough (see fig. 1 and pg. 10 second paragraph),
a mouthpiece 22 extending from a substantially convex side of the shield and along the central axis (see fig. 4-5 and pg. 10 second paragraph), for insertion into an infant's mouth (see ph. 9 last paragraph – pg. 10 first paragraph), wherein the mouthpiece 22 comprises a first end adjacent to the shield 16 and a tip distal from the shield 16 (see fig. 5);
wherein the shield 16 and the mouthpiece 22 each have an axial length extending between innermost and outermost axial limits (see fig. 5).
Hakim is silent regarding the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from an innermost limit of the shield along up to 50% of the axial length of the shield.
However Bateman, in the same field of endeavor, teaches (fig. 1-4) an infant pacifier comprising: a curved shield 20 having a central axis extending therethrough (see fig. 1 and 3), a mouthpiece 10 extending along the central axis (see fig. 1 and 3), for insertion into an infant's mouth (see pg. 5 ln. 28-33), wherein the mouthpiece 10 comprises a first end adjacent to the shield and a tip distal from the shield 20 (see fig. 3); wherein the shield 20 and the mouthpiece each have an axial length (see fig. 1 and 3), and wherein the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from an innermost limit of the shield along up to 50% of the axial length of the shield (see pg. 10 ln. 5-10; the lips of the infant touch the shield and the gums are positioned further back along the mouthpiece, therefore a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield);
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 Hakim to have the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from an innermost limit of the shield along up to 50% of the axial length of the shield as taught by Bateman, for the purpose of the pacifier being able to stay in the mouth of the user (see Bateman pg. 10 ln. 5-10).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hakim in view of Bateman as applied to claim 4 above, and further in view of Eerden (US 20160296424 A1).
Regarding claim 5, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 4. Hakim further discloses (fig. 1-6 and 14) each of the first and second sections (left and right) of the shield edge region are angled away from the mouthpiece at an angle with respect to the central axis (see fig. 5).
Hakim as modified fails to expressly disclose the angle is at least 120° with respect to the central axis.
Eerden sets forth that the angle of the first and second sections relative to the mouthpiece is a result effective variable, wherein the greater the angle, the less red marks are left on a child’s mouth (Eerden [0011]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the angle of the first and second sections of the shield edge region be angled away from the mouthpiece be at least 120° with respect to the central axis, for the purpose of reducing marks on the infant’s face, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 4. Hakim further discloses (fig. 1-6 and 14) at least one section of the shield edge region slopes away from the mouthpiece (see fig. 4-5) at an angle of from 130° to 160°.
Hakim as modified fails to expressly disclose the angle is from 130° to 160°.
Eerden sets forth that the angle that at least one section slopes away from the mouthpiece is a result effective variable, wherein the greater the angle, the less red marks are left on a child’s mouth (Eerden [0011]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the angle that at least one section slopes away from the mouthpiece be 130° to 160° with respect to the central axis, for the purpose of reducing marks on the infant’s face, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hakim in view of Bateman as applied to claim 1 above, and further in view of Schofield et al. (US 20100312276 A1).
Regarding claims 13 and 14, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim as modified is silent regarding the curved shield is a rigid frame co-moulded or over-moulded with a flexible material; the flexible material also forms at least one of the mouthpiece and a handle.
However Schofield, in the same filed of endeavor, teaches (fig. 2a-2c) a curved shield 22 which is a rigid frame co-moulded or over-moulded with a flexible material (see [0065]); the flexible material also forms at least a mouthpiece 20 (see [0059], [0070]-[0071]).
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 Hakim as modified to have the curved shield is a rigid frame co-moulded or over-moulded with a flexible material; the flexible material also the mouthpiece as taught by Schofield, for the purpose providing a strong bond allowing the mouthpiece to be secured to the shield solely by the interconnection between the components thereby removing the need to include a plug or any other additional components (see Schofield [0059]).
Regarding claim 15, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim as modified is silent regarding at least the mouthpiece and the shield are formed as a unitary part.
However Schofield, in the same filed of endeavor, teaches at least a mouthpiece and a shield are formed as a unitary part (see [0059]).
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 Hakim as modified to have at least the mouthpiece and the shield are formed as a unitary part as taught by Schofield, for the purpose providing a strong bond allowing the mouthpiece to be secured to the shield solely by the interconnection between the components thereby removing the need to include a plug or any other additional components (see Schofield [0059]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hakim in view of Bateman as applied to claim 1 above, and further in view of Tesini et al. (US 20110218569 A1).
Regarding claim 18, Hakim as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Hakim as modified is silent regarding the axial length of the shield is at least 10 mm.
However Tesini, in the same filed of endeavor, teaches an axial length of a shield is at least 10 mm (see fig. 1C).
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 Hakim as modified to have the axial length of the shield is at least 10 mm as taught by Tesini, for the purpose of having sufficient length for the caregiver to hold on to and manipulate the pacifier (see [0017]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Sundkvist (US 4,324,249) in view of Bateman.
Regarding claim 21, Sundkvist discloses (fig. 1-3) a method of manufacturing an infant pacifier, the method comprising:
forming a curved shield 4 having a central axis extending therethrough (see fig. 1 and col. 2 ln. 1-8; the disc 4 exists therefore it is formed), mounting a mouthpiece 5 to a substantially convex side of the shield 4 and along the central axis (see fig. 1-3 and col. 2 ln. 9-17), for insertion into an infant's mouth (teats are designed for insertion into an infant’s mouth), wherein the mouthpiece comprises a first end adjacent to the shield and a tip distal from the shield (see fig. 3); wherein the shield and the mouthpiece each have an axial length (see fig. 1-3).
Sundkvist is silent regarding the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield.
However Bateman, in the same field of endeavor teaches (fig. 1-4) an infant pacifier comprising: a curved shield 20 having a central axis extending therethrough (see fig. 1 and 3), a mouthpiece 10 extending along the central axis (see fig. 1 and 3), for insertion into an infant's mouth (see pg. 5 ln. 28-33), wherein the mouthpiece 10 comprises a first end adjacent to the shield and a tip distal from the shield 20 (see fig. 3); wherein the shield 20 and the mouthpiece each have an axial length (see fig. 1 and 3), and wherein the pacifier is configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield (see pg. 10 ln. 5-10; the lips of the infant touch the shield and the gums are positioned further back along the mouthpiece, therefore a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield).
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 Sundkvist to have the pacifier configured such that a center of gravity of the pacifier lies in a region which extends from the tip of the mouthpiece, along the axial length of the mouthpiece and along up to 50% of the axial length of the shield as taught by Bateman, for the purpose improving retention of the pacifier in the users mouth (see Bateman pg. 10 ln. 1-10).
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 KATHERINE H SCHWIKER whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 7:30 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771