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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 16, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
37 C.F.R. § 1.74 requires that “[w]hen there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures, and to the different parts by use of reference letters or numerals (preferably the latter).
The Specification is objected to under 37 C.F.R. § 1.74 as lacking a brief description of and a detailed description of Figs. 1-10 of the drawings.
Claim Objections
MPEP § 608.01(m) states that “[e]ach claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”
Claims 1 and 7 are objected to because they include intervening periods (“.”).
In claim 1, multiple periods (“.”) appear throughout the claim that should be a comma (“,”), semicolon (“;”), or other punctuation so that the claim is a single sentence.
In claim 7, a period (“.”) appears in line 3 before the end of the claim that should be a comma (“,”), semicolon (“;”), or other punctuation so that the claim is a single sentence.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 includes multiple sentences with apparently conflicting limitations that render the claim indefinite.
First, claim 1 recites the pacifier is made “in a one-piece or in several parts” in lines 2-3, but later recites the pacifier is “2-componenet injection molded pacifier . . . where the nipple (2, 3) is molded onto the shield (1) wherein the shield (1) is in two-piece or in several parts” in lines 10-13. A person having ordinary skill in the art would find the metes and bounds of claim 1 to be unclear because the claim is unclear as to how many pieces are in the pacifier construction.
Second, claim 1 recites pacifier including “a hole (8) going inside the pacifier on the back side of the shield (1) allowing air into the inside of the nipple (14, 2,3)” in lines 6-8, but later recites “the shield (1) has a closed backside (4, 5, 6) and an airtight nipple (14)” in lines 14-15. A person having ordinary skill in the art would find the metes and bounds of claim 1 to be unclear because the claim is unclear as to whether the pacifier allows air into the nipple or is closed airtight (i.e., not allowing air into the nipple).
The conflicting recitations, as explained above, create a great deal of confusion and uncertainty as to the proper interpretation of claim 1, thus the metes and bounds of claim 1 are unclear and claim 1 is indefinite.
Claims 2 and 4-8 are rejected as being dependent upon rejected claim 1.
Claim 3 recites the pacifier made with different materials “if needed” in line 4. Such language renders claim 3 indefinite because the claim is unclear as to whether the claimed pacifier requires different materials.
Claim 6 recites the pacifier can change color when temperature is 37 degrees or lower “if preferred” in lines 3-4. Such language renders claim 6 indefinite because the claim is unclear as to what temperature the pacifier can change color.
Claim Rejections - 35 USC § 102
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 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schofield et al. (U.S. Patent No. 9095501; hereinafter “Schofield”).
Regarding claim 3, Schofield discloses a TPE pacifier (Figs. 2a-15; col. 7, ll. 1-5) that can also be injected molded in more than two pieces up to 3 or 6 parts could be made into one mold (the pacifier of Schofield can be (i.e., is capable of being) injected molded in more than two pieces because multiple components of the pacifier are injection molded together and no structure in Schofield would prevent more than two pieces to be injection molded together), so the pacifier could have more than 6 different materials molded together and made into one pacifier in the same injection tool and at the same time, but made with different materials if needed (col. 3, ll. 52-59; col. 4, ln. 47 – col. 5, ln. 32).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Evans et al. (U.S. Patent Application Publication No. 20190290548) disclosing an ant-bacterial, scent-carrying pacifier;
Hakim (U.S. Patent No. 4143452) disclosing pacifiers having open or closed backsides;
Gu (U.S. Patent Application Publication No. 20040220323) disclosing a recyclable thermoplastic elastomer suitable for nipples and teething rings;
Rohrig (U.S. Patent Application Publication No. 20090249571) disclosing a multi-component injection molded teething device; and
Ford et al. (U.S. Patent Application Publication No. 20150272447) disclosing a pacifier having materials that change color based on a user’s temperature to indicate the presence of a fever.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan A Hollm whose telephone number is (703)756-1514. The examiner can normally be reached Mon - Fri 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN A HOLLM/Examiner, Art Unit 3771
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