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 .
Priority
This application has PRO 63/574,517 04/04/2024 is acknowledged.
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 2, 15-20 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 2 recited “a top of the guard” in lines 1-2. This limitation is already recited in claim 1. It is unclear if there is another top of the guard. The examiner’s position is that it has the same limitation as claim 1.
Claim 15 recited “the top portion of the guard comprises opposing distal ends” and “the bottom portion comprises opposing distal ends”. It is unclear that the distal ends are opposing from what structure. Is it opposing because they are on each side of the handle? Also, if calling the top portion having opposed distal ends, shouldn’t the bottom portion have opposing proximal ends?
Claim 19 recites the limitation "the thickness of the guard" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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, 3-9, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D965,798 to Larsen.
Larsen teaches:
Claim 1: A pacifier, comprising:
a guard (Fig. 1.1 reproduced with annotation below) having a nipple (on the other side of protrusion, Fig. 1.3 below) disposed about the guard, the nipple extending downward from a bottom of the guard (Fig. 1.3 reproduced with annotation below);
wherein the guard comprises a plurality of wings (Fig. 1.1 reproduced with annotation below) extending outward from an elongate handle (Fig. 1.1 reproduced with annotation below) disposed about a top of the guard; and
wherein the elongate handle comprises a protrusion extending upward from the top of the guard (Fig. 1.1 reproduced with annotation below).
Claim 3: The wings comprise a top portion that extends outward laterally from the elongate handle a first distance and a bottom portion that extends outward laterally from the elongate handle a second distance (Fig. 1.1 reproduced with annotation below).
Claim 4: The first distance is greater than the second distance (Fig. 1.1 reproduced below).
Claim 5: The first distance is less than the second distance (flipping the indication for the top and bottom portion of the wings would read on the limitation).
Claim 6: The wings comprise a top portion that extends above a top portion of the elongate handle in a longitudinal direction of the elongate handle (Fig. 1.1 reproduced below).
Claim 7: The wings comprise a bottom portion that extends below a bottom portion of the elongate handle in a longitudinal direction of the elongate handle (Fig. 1.1 reproduced below).
Claim 8: The wings comprise a first height and the elongate handle comprises a second height (Fig. 1.1 below).
Claim 9: The first height is greater than the second height (Fig. 1.1 below, the wings are longer than the protrusion).
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Claim 15: A pacifier, comprising:
a nipple retained about a guard (Fig. 1.1 reproduced with annotation below);
the guard comprising a top portion, a bottom portion, and an elongate handle (Fig. 1.1 reproduced with annotation below);
wherein the top portion of the guard comprises opposing distal ends defining a maximum length of the top portion about a longitudinal length of the guard and wherein the bottom portion comprises opposing distal ends defining a maximum length of the bottom portion;
wherein the maximum length of the top portion is greater than the maximum length of the bottom portion;
wherein the elongate handle extends from near a top of the top portion of the guard to near a bottom of the bottom portion of the guard, the elongate handle comprising a longitudinal length that is normal to an axis extending from opposing distal ends of the top portion (Fig. 1.1 below).
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Claim 20: The elongate handle has a first width near a top of the handle and a second width near a bottom of the handle, the first width being greater than the second width (Fig. 1.4 reproduced with annotation below).
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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 (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 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.
Claim(s) 2, 12-13, 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US D965,798 to Larsen in view of US 2001/0047189 to Griffith.
Larsen teaches:
Claim 2: The pacifier of claim 1 (see rejection of claim 1 above).
Claim 12: A pacifier, comprising:
nipple (Fig. 1.3 reproduced with annotation above) disposed about a guard (Fig. 1.1 reproduced with annotation above) and extending downward from a bottom of the guard, the guard comprising a plurality of opposing wings extending outward from an elongate handle (Fig. 1.1 reproduced with annotation above);
wherein the wings comprise a curved upper portion and a curved bottom portion (Fig. 1.1 reproduced with annotation above), the curved upper portion having a width that is greater than the curved bottom portion (Fig. 1.1 above);
the elongate handle is disposed between opposing wings and comprises a protrusion (Fig. 1.1 reproduced with annotation above).
Larsen fails to teach:
Claim 2: The elongate handle extends from at least a top of the guard to at least a bottom of the guard.
Claim 12: The protrusion extending at least from a top portion of the guard to at least a bottom portion of the guard.
Claim 13: The elongate handle comprises a handle assembly configured to mate with an opening within the guard.
Claim 16: The handle is coupled to the handle assembly.
Claim 17: The handle assembly comprises the handle formed with a mating section configured to mate with a receiving section in the guard.
Claim 18: The nipple comprises an apron configured to be compressed between the mating section of the handle assembly and the receiving section of the guard.
Griffith teaches:
Claims 2 and 12: In the same field as endeavor, a pacifier, comprises a guard, a nipple and an elongate handle/protrusion extends from at least the top of the guard to at least a bottom of the guard (Fig. 4 reproduced with annotation below).
Claim 13: The elongate handle (Fig. 4 reproduced with annotation below) comprises a handle assembly (the latch portion that latch through opening 15 in the guard, Fig. 4 below) configured to mate with an opening (15, Fig. 4) within the guard.
Claim 16: The handle (Fig. 4 reproduced with annotation below) is coupled to the handle assembly (the latch portion that latches through opening 15 in the guard, Fig. 4 below).
Claim 17: The handle assembly comprises the handle formed with a mating section (the latch portion) configured to mate (receiving through) with a receiving section in the guard (the opening 15, Fig. 4 below).
Claim 18: The nipple (Fig. 4 reproduced with annotation below) comprises an apron (Fig. 4 reproduced with annotation below) configured to be compressed between the mating section of the handle assembly (latch portion, Fig. 4 below) and the receiving section of the guard (opening 15, Fig. 4 below).
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It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to modify the handle/protrusion extend from the top guard surface to the bottom guard surface as taught by Griffith into Larsen as a substitution of a known connection for another that would yield predictable result for connecting the handle and the guard of the pacifier.
Claim(s) 10-11, 14, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Larsen.
Larsen teaches:
The pacifier of claim 8 (see rejection of claim 8 above).
Larsen fails to teach:
Claims 10-11: The first height is equivalent to the second height and the first height is less than the second height.
Claim 14: The handle assembly comprises an oval formed with the elongate handle, the oval sized to approximate the shape of the opening within the guard.
Claim 19: The elongate handle protrudes above the top of the guard in a direction parallel to a longitudinal direction of the nipple a distance that is substantially the same as the thickness of the guard.
Larsen discloses the claimed invention except for the first height being equivalent and less than the second height. It would have been an obvious matter of design choice to modify the first height to be equivalent and less than the second height, since applicant has not disclosed that the first height being equivalent and less than the second height solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the first height being great than the second height as disclosed by Larsen.
Larsen discloses the claimed invention except for the handle assembly comprises an oval formed with the elongate handle and an oval opening in the guard. The written specification in the current application stated that the handle assembly can comprise an oval or circular or other shaped tab. Therefore, it would have been an obvious matter of design choice to modify the handle assembly comprises an oval formed with the elongate handle and an oval opening in the guard, since applicant has not disclosed that the handle assembly comprises an oval formed with the elongate handle and an oval opening in the guard solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the handle assembly having a circular shape as disclosed by Larsen.
Larsen discloses the claimed invention except for the elongate handle protrudes above the top of the guard in a direction parallel to a longitudinal direction of the nipple a distance that is substantially the same as the thickness of the guard. It would have been an obvious matter of design choice to modify the elongate handle protrudes above the top of the guard in a direction parallel to a longitudinal direction of the nipple a distance that is substantially the same as the thickness of the guard, since applicant has not disclosed that the elongate handle protrudes above the top of the guard in a direction parallel to a longitudinal direction of the nipple a distance that is substantially the same as the thickness of the guard solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the thickness above the guard of the handle/protrusion as disclosed by Larsen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG SON DANG whose telephone number is (571)270-5809. The examiner can normally be reached Mon-Fri 8-5.
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, 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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/PHONG SON H DANG/Primary Examiner, Art Unit 3771
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