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 for Election/Restrictions
Applicant’s election without traverse of Species 4 (Figure 12) in the reply filed on 5/22/2025 is acknowledged. Applicant states that claims 1-11 and 12-15 read on the elected invention.
Election was made without traverse in the reply filed on 5/22/2025.
The examiner notes that claim 6 is directed towards Species 3 (Figures 10-11) and not Species 4 (Figure 12). Paragraph 0154 of applicant’s publication and Figures 10-11 clearly discloses the funnel 340 which is not part of elected Species 4.
Therefore, claims 1-5 and 7-15 will be examined and claims 6, 30-32 and 37-38 will be withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
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 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 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oates (US Pub No. 2014/0221917).
Regarding claim 12, Oates discloses (Figures 8A-8D) a pacifier (100) comprising a shield (see annotated figure below), a base (see annotated figure below), and a nipple (see annotated figure below), wherein the nipple extends longitudinally from the base (clearly shown in the annotated figure below), wherein the base extends longitudinally from the shield (clearly shown in the annotated figure below), wherein the base extends transversely from the nipple (clearly shown in the annotated figure below), wherein the nipple, base, and shield define a hollow lumen comprising a nipple portion of the lumen (see annotated figure below), a base portion of the lumen (see annotated figure below), and a shield portion of the lumen (see annotated figure below), wherein internal surface of the base defines the base portion of the lumen (see annotated figure below), wherein the shield has a posterior surface (see annotated figure below), and wherein the pacifier defines a pacifier mouth posterior to the nipple (see annotated figure below), the pacifier mouth having a mouth largest transverse dimension smaller than a largest transverse dimension of the internal surface of the base (see annotated figure below).
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Regarding claim 13, wherein the pacifier mouth is posterior to the base (clearly shown in the annotated figure above).
Regarding claim 14, wherein the shield defines at least one said pacifier mouth posterior to the base on a posterior surface of the shield (clearly shown in the annotated figure above).
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 of this title, 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 1-5, 7-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Oates (US Pub No. 2014/0221917).
Regarding claim 1, Oates discloses (Figures 8A-8D) a pacifier (100) comprising a shield (see annotated figure below), a base (see annotated figure below), and a nipple (see annotated figure below), the nipple comprising a stem for insertion into an infant’s mouth and a closed distal end (Figure 8D), the stem having longitudinal sidewalls (Figure 8D), the shield, the base and the nipple being longitudinally aligned (Figure 8D), the base extends longitudinally from the shield (clearly shown in the annotated figure below), the nipple extends longitudinally from the base (clearly shown in the annotated figure below), the base having a top wall (see annotated figure below), the top wall of the base having a slope line which intersects a longitudinal axis of the stem at an angle (see annotated figure below), wherein the nipple, base, and shield define a hollow lumen comprising a nipple portion of the lumen (see annotated figure below), a base portion of the lumen (see annotated figure below), and a shield portion of the lumen (see annotated figure below).
Oates fails to disclose the slope line which intersects the longitudinal axis of the stem being at an angle B (beta) of 55 to 120 degrees.
Since Oates already discloses the slope line which intersects the longitudinal axis of the stem at an angle but does not explicitly disclose the exact angle measurement, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Oates to have the slope line which intersects the longitudinal axis of the stem to be at an angle B (beta) of 55 to 120 degrees since the only difference between the prior art and the claims is a recitation of relative angle of the claimed device and a device having the claimed relative angle would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
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Regarding claim 2, Oats discloses the invention of claim 1 above including the stem comprises relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but fails to disclose the cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 90 to at most 100 degrees.
Since Oates already discloses the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but does not explicitly disclose the exact angle measurement, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Oates to have the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 90 to at most 100 degrees since the only difference between the prior art and the claims is a recitation of relative angle of the claimed device and a device having the claimed relative angle would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Regarding claim 3, Oats discloses the invention of claim 1 above including the stem comprises relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but fails to disclose the cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) equal to angle B (beta), wherein angle B (beta) is at least greater than 90 to at most 100 degrees to invert the proximal end of the stem into base.
Since Oates already discloses the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but does not explicitly disclose the exact angle measurement, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Oates to have the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 90 to at most 100 degrees to invert the proximal end of the stem into base since the only difference between the prior art and the claims is a recitation of relative angle of the claimed device and a device having the claimed relative angle would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Regarding claim 4, wherein the pacifier defines a posterior mouth having a mouth diameter smaller than an internal diameter of the base portion of the lumen (see annotated figure below).
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Regarding claim 5, wherein the shield defines a shield mouth on the posterior surface of the shield (see annotated figure below), the shield mouth having a mouth diameter smaller than an internal diameter of the base portion of the lumen (see annotated figure below), wherein the shield has a posterior wall comprising the posterior surface (see annotated figure below), the shield posterior wall having a trough that circumferentially surrounds the shield mouth (see annotated figure below).
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Regarding claim 7, wherein the base portion of the lumen defines internal surface of the base (see annotated figure below), and wherein the pacifier defines a mouth posterior to the base (see annotated figure below), the mouth having a mouth diameter smaller than a largest transverse dimension of the internal surface of the base (see annotated figure below).
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Regarding claim 8, further comprising a hollow elongated handle (see annotated figure below) having continuous sidewalls defining a handle portion of the hollow lumen (see annotated figure below), wherein the continuous sidewalls have a continuous perimeter (clearly shown in the annotated figure below), wherein the hollow elongated handle continuous sidewalls extend posteriorly from the shield (clearly shown in the annotated figure below), wherein the hollow elongated handle is integral with the shield [The hollow elongated handle is integral with the shield as shown in Figure 8D. The term “integral” is defined as “consisting or composed of parts that together constitute a whole” (Dictionary.com) and when the device of Oates is fully assembled as shown in Figure 8D, then everything will be integral to each other since all the parts when assembled will constitute a whole], wherein
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the hollow elongated handle has an open posterior end (104).
Regarding claim 9, wherein the shield, the base, and the nipple are a uni-molded pacifier single unitary piece (Paragraphs 0025 and 0040).
Regarding claim 10, wherein the shield, the base, and the nipple are a uni-molded pacifier single unitary piece of silicone (Paragraphs 0025, 0040 and 0151).
Regarding claim 11, Oats discloses the invention of claim 1 above including the stem comprises relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but fails to disclose the cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 92 to at most 120 degrees.
Since Oates already discloses the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but does not explicitly disclose the exact angle measurement, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Oates to have the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 92 to at most 120 degrees since the only difference between the prior art and the claims is a recitation of relative angle of the claimed device and a device having the claimed relative angle would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
Regarding claim 15, Oats discloses the invention of claim 13 above including the stem comprises relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but fails to disclose the cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) equal to angle B (beta), wherein angle B (beta) is at least greater than 90 to at most 100 degrees to invert the proximal end of the stem into base.
Since Oates already discloses the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle but does not explicitly disclose the exact angle measurement, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Oates to have the stem comprising relatively cylindrical sidewalls having a surface which makes contact with the base at an angle theta (8) within +5% of angle B (beta) and wherein angle B (beta) is at least greater than 90 to at most 100 degrees to invert the proximal end of the stem into base since the only difference between the prior art and the claims is a recitation of relative angle of the claimed device and a device having the claimed relative angle would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (MPEP 2144.04 (IV)(A)).
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4, 7-10 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 15, 20 and 24 of U.S. Patent No. 11,672,741. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
18/301,619
1
4
7
8
9
10
12
13
14
Claims
Patent 11,672,741
1
1, 2, 4
1, 2, 4
1, 15
1
3
1, 4, 15, 20, 24
1, 4, 15, 20, 24
1, 4, 15, 20, 24
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAJID JAMIALAHMADI/ Primary Examiner, Art Unit 3771