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 a response to applicant’s arguments and amendment filed 08/06/2026. Claims 1, 11 and 16 are amended. Claim 12 is cancelled. Claims 1-11 and 13-19 are currently pending.
The objection of claim 1 has been withdrawn due to applicant’s amendment.
The rejection of claims 1-19 under 35 U.S.C. 112(b) has been withdrawn due to applicant’s amendment.
Response to Arguments
Applicant’s arguments, see Remarks, filed 08/06/2026, with respect to the rejection(s) of claim(s) 1-7, 9 and 11-19 under 35 U.S.C. 102(a)(1) as being anticipated by Nummer; claim 8 under 35 U.S.C. 103 as being unpatentable over Nummer in view of Spence, Jr.; and claim 10 under 35 U.S.C. 103 as being unpatentable over Nummer in view of Rohrig, have been fully considered but are not persuasive, in combination with the amendments to the claims. The rejection has been modified, necessitated by applicant’s amendments to the claims.
Applicant argues Nummer’s pacifiers have a variable form factor as opposed to a fixed form factor, because the protrusions expand when the male locking bolt is inserted in an expansion sleeve, and annular collar 8 outside the nipple forms the widest radial protrusion (Remarks, pgs. 7-8).
In response to applicant’s argument, it is respectfully submitted the arguments are narrower than the claim limitations. Applicant argues Nummer’s pacifier has a variable form factor due to the protrusions expanding when the male locking bolt is inserted, however, Nummer’s pacifier appears to operate similarly to the pacifier disclosed in the instant application, in which protrusions 18 are pressed outward when the male member is inserted in the intermediate member (para. [0109]). Further, the claim language does not require the widest portion of the intermediate member to be located within the nipple; the claim language only requires a widest portion, encompassing the widest portion of the sleeve of Nummer within the nipple itself, such that the claim language does not preclude the widest portion of sleeve 3 at the distal end of the sleeve from meeting the claimed limitation. Therefore, as discussed below, the term “fixed form factor” is interpreted to refer to any fixed portion/form of the sleeve in Nummer, and since Nummer discloses a fixed position of the sleeve in para. [0029], the claim limitation is considered to be met.
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.
Claim(s) 1-7, 9, 11 and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nummer (DE9107347U1, translation provided) (all references previously of record).
Regarding claim 1, Nummer discloses (paras. [0001]-[0035]; figs. 1-8) a pacifier (fig. 8) comprising:
- a male member (locking bolt 4, para. [0024]; fig. 1);
- a shield (2) having a shield opening (6) having a width (W1) (encompasses at least a width at proximal end of opening 6);
- a nipple (1) extending through the shield opening (fig. 1) and having a nipple opening (5) provided in a proximal end portion (fig. 1);
- an intermediate member (3) extending through the nipple opening and the shield opening (figs. 1-2), wherein a fixed form factor (considered to be a fixed position of sleeve 3 in the locking position, para. [0029]) of the intermediate member comprises a widest radial protrusion (widest protruding portion of sleeve 3 within the nipple, depicted in fig. 2) inside the nipple (fig. 2) and a channel (9, para. [0025]) through which the male member extends and engages with the intermediate member (fig. 2) and hereby lockingly attaches the nipple to the shield (para. [0034]), wherein a width (W2) of the widest radial protrusion of the intermediate member (encompasses width at distal end of sleeve 3, fig. 2) is larger than the width (W1) of the shield opening (depicted as larger than a width of opening 6 at the proximal end, para. [0034]; fig. 2).
Regarding claim 2, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein the intermediate member comprises two spaced apart sections separated by a gap (see walls of 3, considered to be spaced apart due to opening 9 extending within sleeve 3, figs. 6-7).
Regarding claim 3, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein the intermediate member comprises a cylindrical proximal end portion (collar 8, para. [0025]; figs. 6-7) and a body portion (portion of sleeve 3 extending from collar 8) extending therefrom (figs. 6-7).
Regarding claim 4, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein a protruding structure (annotated fig. 1) having a support surface (surface of protruding structure) is provided in the shield opening (fig. 1), wherein the protruding structure is arranged and configured to engage with the nipple (at ring bead 17, para. [0032]; figs. 1-2) and protrusion structures (collar 8) of the intermediate member (considered to engage collar 8 of sleeve 3 via proximal portion of mouthpiece 1, figs. 1-2).
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Annotated Figure 1 of Nummer
Regarding claim 5, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein the male member comprises a conical distal portion (fig. 1) onto which a flanged portion (13, para. [0029]) is provided.
Regarding claim 6, Nummer discloses the pacifier according to claim 5. Nummer further discloses wherein an indentation (14, para. [0029]) is provided in protrusions of the intermediate member (portion of sleeve 3 considered to protrude at least distally, figs. 1-2), wherein the flanged portion lockingly engages with the indentation (para. [0029]).
Regarding claim 7, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein the male member comprises a proximal cylindrical portion (proximal end, fig. 1) that is attached to a cap (11).
Regarding claim 9, Nummer discloses the pacifier according to claim 1. Nummer further discloses wherein the nipple comprises a flange (17) provided in the proximal end portion (fig. 1).
Regarding claim 11, Nummer discloses (paras. [0001]-[0035]; figs. 1-8) a method for manufacturing a pacifier (paras. [0032]-[0034]) comprising a male member (locking bolt 4, para. [0024]; fig. 1), a shield (2) having a shield opening (6), and a nipple (1) extending through the shield opening (fig. 1) and having a nipple opening (5) provided in a proximal end portion (fig. 1), the method comprising:
- inserting the nipple through the shield opening (para. [0032]);
- inserting an intermediate member (3) having a fixed form factor (considered to be a fixed position of sleeve 3 in the locking position, para. [0029]) through the nipple opening and through the shield opening (paras. [0032]-[0034]) such that a widest radial protrusion (widest protruding portion of sleeve 3 within the nipple, depicted in fig. 2) of the intermediate member resides inside the nipple (depicted in fig. 2), wherein a width (W2) of the widest radial protrusion of the intermediate member (encompasses width at distal end of sleeve 3, fig. 2) is larger than a width (W1) of the shield opening (depicted as larger than a width of opening 6 at the proximal end, para. [0034]; fig. 2); and
- inserting the male member through a channel of the intermediate member such that the male member extends through and engages with the intermediate member (para. [0034]), thereby lockingly attaching the nipple to the shield (para. [0034]).
Regarding claim 13, Nummer discloses the method according to claim 11. Nummer further discloses wherein the intermediate member comprises two spaced apart sections separated by a gap (see walls of 3, considered to be spaced apart due to opening 9 extending within sleeve 3, figs. 6-7).
Regarding claim 14, Nummer discloses the method according to claim 11. Nummer further discloses wherein the intermediate member comprises a cylindrical proximal end portion (collar 8, para. [0025]; figs. 6-7) and a body portion (portion of sleeve 3 extending from collar 8) extending therefrom (figs. 6-7).
Regarding claim 15, Nummer discloses the method according to claim 14. Nummer further discloses wherein the intermediate member comprises protrusions (annotated fig. 6) protruding radially from the body portion (fig. 6), wherein the protrusions are arranged and configured to lockingly engage with the shield opening (depicted in figs. 1-2) hereby preventing the intermediate member from being retracted from the shield opening (para. [0034]).
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Annotated Figure 6 of Nummer
Regarding claim 16, Nummer discloses the method according to claim 11. Nummer further discloses wherein a protruding structure (annotated fig. 1) having a support surface (surface of protruding structure) is provided in the shield opening (fig. 1), wherein the protruding structure is arranged and configured to engage with the nipple (at ring bead 17, para. [0032]; figs. 1-2) and protrusion structures (collar 8) of the intermediate member (considered to engage collar 8 of sleeve 3 via proximal portion of mouthpiece 1, figs. 1-2).
Regarding claim 17, Nummer discloses the method according to claim 11. Nummer further discloses wherein the male member comprises a conical distal portion (fig. 1) onto which a flanged portion (13, para. [0029]) is provided.
Regarding claim 18, Nummer discloses the method according to claim 17. Nummer further discloses wherein an indentation (14, para. [0029]) is provided in protrusions of the intermediate member (portion of sleeve 3 considered to protrude at least distally, figs. 1-2), wherein the flanged portion lockingly engages with the indentation (para. [0029]).
Regarding claim 19, Nummer discloses the method according to claim 11. Nummer further discloses wherein the male member comprises a proximal cylindrical portion (proximal end, fig. 1) that is attached to a cap (11).
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.
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.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nummer in view of Spence, Jr. (US 5292336).
Regarding claim 8, Nummer discloses the pacifier according to claim 7.
Nummer further discloses a handle ring (retaining ring, para. [0027]) attached to the cap (para. [0027]).
However, Nummer fails to disclose the handle ring rotatably attached to the cap.
Spence, Jr. teaches (col. 1 lines 4-34; figs. 1-2), in the same field of endeavor, a pacifier (fig. 1) comprising a handle ring (19) rotatably attached to a cap (17), for the purpose of allowing a child or adult to easily carry the pacifier and still use it in its intended fashion (col. 1 lines 14-17).
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 retaining ring of Nummer to be rotatably attached to the cap, in order to allow a child or adult to easily carry the pacifier and still use it in its intended fashion, based on the teachings of Spence, Jr. (col. 1 lines 14-17).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nummer in view of Rohrig (US 2011/0125190 A1).
Regarding claim 10, Nummer discloses the pacifier according to claim 1.
Nummer further discloses wherein the nipple is made of a soft elastic material (para. [0024]).
However, Nummer fails to disclose wherein the nipple is made of silicone.
Rohrig teaches (para. [0042]; fig. 2a), in the same field of endeavor, a pacifier (fig. 2a) comprising a nipple (5) made of silicone (para. [0042]), for the purpose of forming the teat of an appropriate elastic material for use (para. [0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the nipple of a soft elastic material such as silicone, in order to form the nipple of an appropriate elastic material for use by a child when desired, based on the teachings of Rohrig (para. [0042]).
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 BRIGID K BYRD whose telephone number is (571)272-7698. The examiner can normally be reached Mon-Fri 8:00-5:00.
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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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/BRIGID K BYRD/Examiner, Art Unit 3771
