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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09 April 2026 has been entered.
Drawings
The drawings were received on 03 October 2025. These drawings are unacceptable. The drawings contain new matter. While the original disclosure does support the shapes in general by name presented in Figures 11-13, specifics were not included to fully support additional details shown in the amended Figures 11-13.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the star, rectangle and triangle shapes must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jerjian (US 5,161,285).
Regarding claim 1, Jerjian discloses an apparatus (104), comprising:
a flat-faced front; a flat-faced back (Figs. 1-3);
an aperture (120) at a center of the button slide;
a bottom comprising an opening channel (122) to the aperture;
an inner wall (side walls of the aperture 120) connecting the flat-faced front and the flat-faced back at an inner portion of the button slide; and
an outer wall (outer edges of the disk) connecting the flat-faced front and the flat-faced back at an outer portion of the button slide, the outer wall comprising a closed end at a top of the Button Slide opposite the opening channel and at least two sides surrounding the opening channel (Figs. 1 and 2 as shown),
wherein the button slide is adapted to be worn on an article of clothing or accessory, such that, when worn, the button slide is positioned between a button and the article and sits on a string connecting the button to the article, such that the button and at least a portion of the flat-faced front remains exposed to a viewer (the device shown in Fig. 1 can be used in this manner, alternatively Figs. 2-3 shows at least a portion of the flat front extending beyond the perimeter of the cap such that when in use and with the cap closed the front remains exposed), and
wherein the thickness of the inner wall and the outer wall create friction between the button and the article to prevent the button from sliding through a corresponding buttonhole on the article (the device as shown in Fig. 2 is capable of creating friction and behaving in the claimed manner).
Jerjian fails to disclose the inner and outer wall having a thickness of approximately 1 millimeter to 2 millimeters.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a thickness in the range of approximately 1-2 millimeters to sufficiently fill the space between the button and the garment while maintaining sufficient strength since it has been held that discovering an optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP 2144.
Regarding claim 2, Jerjian further discloses wherein the flat-faced front comprises a surface that is a canvas for visual expression (the surface of the disk can be used as a canvas).
Regarding claim 3, Jerjian further discloses wherein the opening channel forms an angle of approximately 40 degrees when measured from the center of the button slide, and wherein the opening channel accommodates attachment of the button slide over the string connecting the button to the article (Fig. 1 as shown).
Regarding claim 4, Jerjian further discloses wherein the aperture is structured to fit around the string connecting the button to the article (Figs. 1-3 as shown).
Regarding claim 5, Jerjian further discloses wherein the flat-faced front comprises a surface that is a decorative wall (the surface of the disk can serve as a decorative wall).
Regarding claim 6, Jerjian further discloses wherein a shape of the apparatus comprises a round shape, a star shape, a rectangle shape, or a triangle shape (Fig. 1 shows a round shape).
Regarding claim 7, Jerjian further discloses wherein the apparatus is composed of one or more materials including metals, plastic polymers, or rubbers (Column 3, lines 57-59).
Regarding claim 8, Jerjian discloses the invention except for wherein a diameter of the Button Slide is approximately 7 millimeters. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to set the diameter at 7mm since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 9, Jerjian further discloses wherein the portion of the flat-faced front remaining exposed to the viewer is decorative (Fig. 1 as shown).
Response to Arguments
Applicant's arguments filed 09 April 2026 have been fully considered but they are not persuasive.
Applicant argues that the drawing objection “does not indicate what specifics … were not included in the originally-filed Specification.” As noted, the language provided only provides broad description of the implied shapes. No indication was provided as to if the shapes were equilateral or isosceles triangles, 5 or more pointed triangles, etc. The drawing objections are maintained.
Applicant argues that the phrase “the closure plate 104 is not generally exposed” is equivalent to Jerhian’s intention that the plate is not exposed. Motivation is not provided within the text of Jerjian. Instead, Jerjian merely is making a statement of material usage. However, as noted above, while the device of Jerjian can be used in the manner and positioning of Fig. 1 in Jerjian, the closure plate is nevertheless still exposed when the cap is closed as shown in Figs. 2 and 3.
Applicant has further provided arguments to the thickness range. The rationale proposed in the rejection is not one of mere design choice as alleged by the applicant. Applicant has noted the similar general conditions of the disclosed prior art and the instant invention. Adjusting the thickness such that the prior art is also within the same range is still considered to be within the ordinary skill in the art. Applicant’s argument that Jerjian was “simply designed with a thickness that would enable the plate to “frictionally engage the surface of the side wall…” does not appear to be based upon actual factual evidence within Jerjian. Jerjian does indicate that frictional engagement with the side wall is a design parameter. However, the general conditions shown in Jerjian and instant invention would also have been considered when each were selecting the thickness of the plates. Applicant’s arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S LEE whose telephone number is (571)270-5735. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S.L/Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
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