14336541 - (D) (P.T.A.B. Aug. 2, 2019)

Barbara O'Rourke

Patent Trials and Appeals BoardAug 2, 2019

14336541 - (D) (P.T.A.B. Aug. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/336,541 07/21/2014 Barbara O'Rourke ORO1690.001 4622 26629 7590 08/02/2019 ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS) 136 S WISCONSIN ST PORT WASHINGTON, WI 53074 EXAMINER MAI, TRI M ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 08/02/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): info@zpspatents.com sml@zpspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BARBARA O'ROURKE Appeal 2019-000676 Application 14/336,541 Technology Center 3700 Before DANIEL S. SONG, MICHAEL L. HOELTER, AND BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Barbara O'Rourke, appeals from the Examiner’s decision to reject claims 1, 4–6, and 12–25, which constitute all the claims pending in this application. Claims 2, 3, and 7–11 were canceled during prosecution. App. Br. 30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2019-000676 Application 14/336,541 2 CLAIMED SUBJECT MATTER The claims are directed to a premature infant pacifier. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pacifier device adapted for use with a baby having a mouth, said pacifier device having a proximal end and a closed distal end and comprising: a guard located at the proximal end of the device adapted to rest on the mouth of the baby, said guard having a first, central opening therein; a nipple located at the closed distal end and having a bulbous portion adapted to be inserted into the mouth of the baby, said nipple having a second opening in a side wall thereof proximal to the bulbous portion; a separate channel having an inlet opening located outwardly from the first, central opening of the guard for receiving food for the baby, the separate channel passing through the first, central opening in the guard and connecting with the second opening, said channel adapted to communicate food from a food source into the mouth of the baby. Appeal 2019-000676 Application 14/336,541 3 REFERENCES The prior art relied upon by the Examiner is: Clegg Van Der Merwe Aaltonen Ashton Oates US 3,426,755 US 5,843,030 US 6,126,678 US 6,454,788 B1 US 8,945,182 B2 Feb. 11, 1969 Dec. 1, 1998 Oct. 3, 2000 Sept. 24, 2002 Feb. 3, 2015 Fischer Hagbi US 2007/0203475 A1 US 2009/0182308 A1 Aug. 30, 2007 July 16, 2009 REJECTIONS Claims 1, 4, 12–16, and 18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ashton. Final Act. 8Ans. 3.2 Claims 1, 4, 12–16, 18–21, and 23–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ashton and Oates. Ans. 5. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Ashton, Oates, and Fischer. Ans. 6. Claims 1, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagbi and Clegg. Ans. 7. Claims 1, 4, 6, 12–16, 18–21, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagbi and Aaltonen. Ans. 8. Claims 12–16 and 18–24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagbi, Aaltonen, and Oates. Ans. 9. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hagbi, Aaltonen, and Fischer. Final Act. 6. 2 The Examiner withdrew all grounds of rejection except those listed in the Answer. Ans. 2. Appeal 2019-000676 Application 14/336,541 4 Claims 1, 4–6, 12–14, and 15–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Van Der Merwe, Clegg, and Aaltonen. Ans. 10. OPINION Rejections over Hagbi and Aaltonen The Examiner rejects all pending claims, except claims 5, 17, and 25, as unpatentable over Hagbi and Aaltonen, either alone or in combination with other references. Although Appellant asserts deficiencies in the exact listing of the rejections including Hagbi and Aaltonen, Appellant goes on to address the substance of the rejections, thus showing that Appellant had no issue in understanding the rejections as stated. App. Br. 16. Appellant’s sole argument with regard to Aaltonen in the proposed combination is that it is non-analogous art. App. Br. 17. According to Appellant, Aaltonen’s placement of apertures on the side wall of the pacifier is “so that the active agent flowing through the apertures, will come directly in contact with the erupting teeth.” App. Br. 17 (citing Hagbi col. 5, ll. 45–47). Thus, “the location of apertures 3 was not chosen to deliver fluid to a baby for consumption.” App. Br. 17. Contrary to Appellant’s assertion, however, Aaltonen also teaches that the active agent can be used to reduce irritation in the throat, thus indicating that at least some of the active agent is swallowed or consumed. Aaltonen col. 4, ll. 13–14. Additionally, both Aaltonen and Hagbi are pacifiers, which squarely place them in the same field of endeavor. Furthermore, given the teachings in Ashton, which would be within the knowledge of those skilled in the art, regarding the risk of delivering fluid to the back of the throat rather than to the natural physiologic gutters, one of skill in the art would Appeal 2019-000676 Application 14/336,541 5 have been motivated to move the opening of Hagbi further to the side to avoid the issues described by Ashton. Ashton col. 2, ll. 4–8. Appellant is also incorrect in asserting that “Aaltonen does not teach or suggest dispensing fluid through apertures 3.” App. Br. 18. While the initial substance in Aaltonen appears to be a powder, it relies upon mixing with saliva to then flow back out into the mouth. Aaltonen Col. 3, ll. 30–33. Aaltonen also discloses that in a first use, the dissolved agent may have to be moistened with water to allow the dissolved agent to flow immediately from the container to the mouth. Aaltonen col. 4, ll. 48–52. This mixture of saliva or water and medication is clearly a liquid. Rejections over Van Der Merwe Appellant argues that the Examiner’s interpretation of Van Der Merwe is improper because it does not disclose “channels that are separate structures from nipples,” but rather are “formed of negative space within teat 1.” We disagree. Although the embodiments of Figs. 1 and 4 show a solid nipple with a bore therethrough, which we agree would not meet the claim language at issue, the embodiments of Figs. 2 and 3 show a hollow nipple having a separate channel for the flow of liquid. This channel is not formed in negative space, but has its own sidewalls to act as a conduit for fluid, thus meeting the claimed “separate channel.” Regarding the combination of Van Der Merwe with Aaltonen, Appellant presents substantially the same argument that Aaltonen is not properly combinable because it is non-analogous art. For the reasons stated above, we do not find this argument persuasive. Accordingly, we sustain the Examiner’s rejection of claims 1, 4–6, 12–14, and 15–25 over Van Der Merwe, Clegg, and Aaltonen. Appeal 2019-000676 Application 14/336,541 6 DECISION The Examiner’s rejections are AFFIRMED. More specifically, we AFFIRM the rejections of claims 1, 4, 6, 12–16, 18–21, 23, and 24 over Hagbi and Aaltonen and the rejections of claims 1, 4–6, 12–14, and 15–25 over Van Der Merwe, Clegg, and Aaltonen. We need not reach the remaining rejections because the above rejections account for all claims currently pending. FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED