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 .
Status of the Claims
Claims 1, 3-9, 11, 14 and 17-21 are pending.
Claims 1, 3, 5, 7-9 and 11 have been amended.
Claims 12 and 13 have been cancelled.
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
Applicant Argument A:
Even assuming that the water pipe of Waxmaid could correspond to the claimed hand pipe body, that the bowl portion of Waxmaid could correspond to the claimed bowl well, and that the inside of the water pipe of Waxmaid could correspond to the claimed well extending from the first opening to the bottom portion, none of which Applicant concedes, Waxmaid would still fail to teach or suggest, “a second opening at the front side of the bottom portion of the hand pipe body, and a third opening at a bottom of the bowl well,” “a first support element and a second support element at a back side of the bottom portion of the hand pipe body,” and “a well extending from the first opening to the bottom portion, wherein the bowl well extends from the second opening into the well.”
Moreover, the Office Action does not rely on Canfield, Skinhaler, and Sweet Puff Pipes, individually or in combination with Waxmaid and/or with one another to teach or suggest at least the aforementioned deficiencies of Waxmaid. Nor do Canfield, Skinhaler, or Sweet Puff Pipes, individually or in combination with Waxmaid and/or with one another, teach or suggest at least the aforementioned deficiencies. For example, Canfield teaches or suggests a "protective sleeve" for a "container" with "multiple slits," Skinhaler teaches or suggests a "protective cover made up of silicone" for an inhaler," and Sweet Puff Pipe (see screen capture below) teaches or suggests a hand pipe that includes a bowl portion (see black circle on the left for example) and a stem portion (see green circle on the right for example). Canfield at Col. 3, 11. 35-39; Skinhaler at p. 7; and Sweet Puff Pipe at (https://www.water-bongs-glass-pipes.com/blog/sweet-pufff-pipes-n143).
Examiner Response A:
The Examiner respectfully disagrees. The rejection is in view of Waxmaid, Canfield, Hoch, Skinhaler and Sweet Puff Pipes. The arguments omit Hoch, which is relied upon to teach the bowl well.
Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 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.
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) 1, 3-9, 11, 14, 17, 19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Smoking ice with Waxmaid Horn silicone glass water pipe bong smoking bubbler” (Waxmaid hereinafter) in view of US 4583577 (Canfield hereinafter) in view of US 20150068540 (Hoch hereinafter) in view “Activeaide Skinhaler” (Skinhaler hereinafter) and further in view of Sweet Puff Pipes (Sweet Puff Pipes hereinafter).
Regarding claims 1, 3, 4, and 14, Waxmaid teaches a hand pipe sleeve (sleeve of right pipe in Youtube 0:47 minute screen capture) comprising:
a hand pipe comprising:
a hand pipe body (the glass pipe in the Youtube screen shots) comprising:
a top portion including a first opening (top of right pipe in Youtube 0:47 minute screen capture);
a bottom portion including a base (bottom of right pipe in Youtube 0:47 minute screen capture) and a second opening formed at the front side of the bottom portion of the hand pipe body (pipe in Youtube 2:45 minute screen capture); and,
a well extending from the first opening to the bottom portion (pipe in Youtube 0:47 minute screen capture)
a body of the hand pipe sleeve comprising:
a top end section (top of sleeve of right pipe in Youtube 0:47 minute screen capture);
a bottom end section, including an edge portion (bottom of sleeve of right pipe in Youtube 0:47 minute screen capture);
a fourth opening at the bottom end section, the bottom end section including: a protruding edge that extends from an interior surface of a sleeve well portion towards a center of the fourth opening at the bottom end section (opening and protruding edge seen in bottom of sleeve of right pipe in Youtube 0:47 minute screen capture and also in sleeve of right pipe in Youtube 0:53 minute screen capture);
and a sleeve well portion that continuously extends from the fourth opening at the bottom end section to the top end section (part of sleeve that extends from bottom to top of right bong in sleeve of right pipe in Youtube 0:47 minute screen capture), and is dimensioned to fit the base of the hand pipe (right pipe in Youtube 0:47 minute screen capture).
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Waxmaid does not expressly teach that the protruding edge of the body of the hand pipe sleeve comprises slits.
Canfield teaches that the bottom end of a protective sleeve (10) of a container (24) includes multiple slits (14) that extend from an end of the protruding edge towards the top end section to at least a portion of the body on the perimeter of cylinder 10 (col. 3, lines 35-39). It would have been obvious for one of ordinary skill in the art at the time of the invention to have extended the slits past the perimeter of cylinder 10 towards the top end section because the courts have held that changes in size or proportion, absent persuasive evidence that the change in size or proportion was significant, is obvious to one of ordinary skill in the art. See MPEP 2144.04 IV.
It would have been obvious for one of ordinary skill in the art before the effective filing date to have made multiple slits that extend from the protruding edge toward the top end section, as taught by Canfield, in the sleeve of Waxmaid so as to resiliently grip an inserted container (col. 3, lines 35-39) with a reasonable expectation of success and predictable results.
The combined teaching of Waxmaid and Canfield do not expressly teach a bowl well at a front side of the bottom portion of the hand pipe body, the bowl well formed from the bottom portion of the hand pipe body and including a second opening at the front side of the bottom portion of the hand pipe body, and a third opening at a bottom of the bowl well, wherein the bowl well extends from the second opening into the well.
Hoch teaches a water pipe, or hand pipe, that includes a bottom portion (Fig. 3C) wherein the bottom portion includes: a front side (right side of pipe in Fig. 3C); a second opening at the front side (perimeter of “concaved oval portion 310” ([0054])); and a bowl well (310) that extends from the second opening into the well ([0054]). Hoch teaches that the bowl well includes a third opening at a bottom of the bowl well (320) (Fig. 3A). It would have been obvious for one of ordinary skill in the art at the time of the invention to have substituted the bowl opening of modified Waxmaid for the bowl opening of Hoch with a reasonable expectation of success and predictable results because both are bowl openings for a water pipe.
Modified Waxmaid does not expressly teach that when the hand pipe is within the sleeve well portion, the sleeve well portion is in contact with an edge of the bowl well to cover the second opening and prevent material within the bowl well from spilling out of the bowl well.
Skinhaler teaches a protective cover made of silicone to cover an inhaler, which covers the entire inhaler, including a removable cap over the top portion, or mouthpiece, to protect and carry the inhaler. It would have been obvious for one of ordinary skill in the art at the time of the invention to have made the protective cover of Waxmaid solid, as taught by Skinhaler, with a reasonable expectation of success and predictable results, namely to protect the entire outer surface of the smoking pipe of Waxmaid while traveling and carrying the smoking pipe.
Modified Waxmaid does not expressly teach a first support element and a second support element at a back side of the bottom portion of the hand pipe body, the first support element and second support element each extending away from a surface of the bottom portion of the hand pipe body.
However, Sweet Puff Pipes teaches including an “anti-roll marble”, or support element, at a back side of the bottom portion of the hand pipe body, the support element extending away from a surface of the bottom portion of the hand pipe body (Figures). It would have been obvious to have included the support element disclosed by Sweet Puff Pipes on the hand pipe of modified Waxmaid with a reasonable expectation of success and predictable results, specifically to prevent the rolling around of the pipe of modified Waxmaid (Sweet Puff Pipes).
Sweet Puff Pipes does not expressly teach two support elements; however, the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04 VI B).
Regarding claims 5 and 6, modified Waxmaid teaches a fifth opening at a front side of the hand pipe body and a sixth opening at a back side of the hand pipe body with a cavity that extends from the fifth opening to the sixth opening, wherein the cavity is capable of retaining a clip (Skinhaler, see Skinhaler images of carrying clip below).
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While modified Waxmaid does not expressly teach that the openings are in the top end section, but rather Skinhaler teaches that the openings are at the bottom end section, it would have been obvious for one of ordinary skill in the art at the time of filing to have moved the openings to another section of modified Waxmaid with a reasonable expectation of success and predictable results. The courts have held that a rearrangement of parts, without modifying the operation of the product, was an obvious matter of design choice. See MPEP 2144.04 VI C.
Regarding claim 7, modified Waxmaid teaches that the hand pipe sleeve wherein the body of the handpipe sleeve gradually tapers from top end section to bottom end section ( sleeve of right pipe in Youtube 0:47 minute screen capture).
Regarding claims 8 and 9, modified Waxmaid teaches that the body of the handpipe sleeve is formed out of a heat resistant and flexible material, specifically silicone (Youtube description under screen captures).
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Regarding claim 11, modified Waxmaid teaches that the top portion of the handpipe body is angled with respect to a vertical axis (right pipe in Youtube 0:47 minute screen capture).
Regarding claim 17, modified Waxmaid teaches that the hand pipe body gradually tapers from the top portion to the bottom portion (right pipe in Youtube 0:47 minute screen capture).
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Regarding claim 19, modified Waxmaid teaches that the hand pipe body is formed from a heat resistant material, specifically glass (Youtube description under screen captures).
Regarding claim 21, the limitation “wherein a user manipulates the protruding edge to insert or remove the hand pipe from the body” is a result of the material and the structure of the claimed product, which are taught by modified Waxmaid. It is therefore inherent that this limitation is met since such a property is evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Waxmaid as applied to claim 11 above, and further in view of US 4161954 (Fornaciari hereinafter)
Regarding claim 18, modified Waxmaid does not expressly teach that the hand pipe body includes a carb opening on a side of the hand pipe body.
Fornaciari teaches that water pipes use a carburetor, which is a hole located in the wall of the water container above the water level. In use, the hole is usually kept closed until the last puff of smoke is to be removed from the pipe, more particularly, when the last puff of smoke is to be removed from the air space above the water level. At that time, with the hole uncovered, a sharp inhalation clears the bottle of smoke (col. 2, lines 15-30). Thus it would have been obvious for one of ordinary skill in the art before the effective filing date to have included a carb opening in modified Waxmaid, as taught by Fornaciari, because the carb opening allows, when the hole is uncovered, for the last puff of smoke is to be removed from the air space above the water level (col. 2, lines 15-30).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over modified Waxmaid as applied to claim 11 above, and further in view of US 20120111345 (Switzer hereinafter).
Regarding claim 20, modified Waxmaid teaches that the hand pipe body is formed from glass but does not specify borosilicate glass.
Sweitzer teaches that down pipes used in hookahs, or water pipes, can be fabricated from borosilicate glass ([002]-[004],[0019]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have constructed the glass pipe body of modified Waxmaid from borosilicate glass as such is known in the water pipe art.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755