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 .
Response to Amendment
Claim 1 is amended. Claims 2-7 and 9 are cancelled. Claims 1, 8 and 10-15 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 112(d) have been fully considered and are persuasive. The rejections of 9/25/2025 are overcome.
Priority
The instant applicant claims priority to United States Provisional Patent Application 62/890,551. A review of that application indicates that it discloses the claimed subject matter of claims 1, 5 and 10-15 but does not disclose the subject matter of claim 8. Claims 1, 5 and 10-15 will therefore be examined with an effective filing date of 8/22/2019, while claim 8 will be examined with an effective filing date of 8/24/2020.
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, 5, 8 and 10-15 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.
Regarding claim 1, there is insufficient antecedent basis for the limitation “the inside portion of the top cap” (lines 8-9), rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required the seal to be on either side of the top cap. Claims 8 and 10-15 are indefinite by dependence.
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.
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.
Claims 1, 5 and 10-15 are rejected under 35 U.S.C. 103 as being obvious over Horlick (US 2,335,674) in view of Mertzel (US 2,536,302) and Pietsch (DE 467079, machine translation relied upon) and Rebensdorf (US 2004/0084055).
Regarding claims 1 and 12-13, Horlick discloses a cigarette conserver (page 1, left column, lines 1-2) having a hollow cylindrical container (figure 4, reference numeral 20), which is considered to meet the claim limitation of a shaft, with an open front end (page 1, right column, lines 40-44, figure 4, reference numeral 21), which is considered to meet the claim limitation of a second opening on a first bottom portion. The back end of the container, which is considered to meet the claim limitation of a first top portion having a first opening, is closed using a knob that is rotated to open and close the end of the container (page 1, right column, lines 49-55, page 2, left column, lines 1-5, figure 4, reference numeral 24), which is considered to meet the claim limitation of a top cap. The knob has a skirt wall extending into the container (page 1, right column, lines 49-55, page 2, left column, lines 1-5, figure 5, reference numeral 25), indicating that the knob could also be installed on the cap since the cap has a larger diameter than the container (figure 5). A shell like cap engages over the open end of the container to completely encase the cigarette (page 1, right column, lines 45-49), which is considered to meet the claim limitation of a bottom shaft. Horlick does not explicitly disclose (a) a porous screen within the shaft, (b) screwing the cap and container together, (c) the threads being arranged such that the cap is screwed on to the container by clockwise rotation, (d) a reducer ring, (e) the knob having an opening
Regarding (a), Mertzel teaches a cigarette extinguisher and retrieving device (column 1, lines 1-4) having a removable disc made from wire mesh which permits penetration of ash and other production of combustion thereinto (figure 2, reference numeral 16) for deposit at the bottom of a closed tube or socket (column 1, lines 46-55, column 2, lines 1-7, figure 2, reference numeral 14).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the hollow container of Horlick with the wire mesh of Mertzel. One would have been motivated to do so since Mertzel teaches providing a wire mesh to collect combustion products within a cigarette extinguisher.
Regarding (b), Pietsch teaches an extinguishing container for extinguishing the embers of burning cigars or cigarette [0001] having a cap d that fits over a cap c via a screw connection ([0007], figure 2). It is evident that the cap of Horlick creates a container that could be used to hold ash since it forms an enclosed housing (figure 5).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the connection of Horlick with the screw connection of Pietsch. One would have been motivated to do so since Pietsch teaches that mating caps of cigarette extinguishers can be secured together with a screw thread.
Regarding (c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the threads of modified Horlick such that clockwise rotation of the cap attaches the cap to the container. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding (d), Rebensdorf teaches an air and watertight container for carrying and extinguishing a cigarette having a cap containing an O-ring (abstract, figure 3, reference numeral 20), which is considered to meet the claim limitation of a reducer ring. It is evident that the outer diameter of the O-ring forms a seal with the inside of the container since otherwise water and air could enter the container at that location. An air and watertight container for carrying and extinguishing a cigarette having a cap (abstract) containing a circular hole (figure 5, reference numeral 26) allows the user to connect the device to a necklace for convenient carrying around a user’s neck ([0031], figure 6, reference numeral 32).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the O-ring of Rebensdorf outside the skirt of the knob of Horlick. One would have been motivated to do so since Rebensdorf teaches an O-ring that forms an air and watertight seal.
Regarding (e), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cap of Horlick with the circular hole of Rebensdorf. One would have been motivated to do so since Rebensdorf teaches a hole that allows the user to connect the device to a necklace for convenient carrying around a user’s neck.
Regarding claim 10, Horlick discloses that the device forms an enclosed device when the knob is closed (figure 5).
Regarding claim 11, modified Horlick teaches all the claim limitations as set forth above. Horlick additionally discloses that, in a different embodiment, the cap is formed from rolled metal and has an end wall bent to extend across it end (page 1, right column, lines 32-35, figure 3, reference numeral 15). The end of the cap is considered to meet the claim limitation of a second bottom portion, and the end wall is considered to meet the claim limitation of a top cap. The opposite portion of the cap is considered to meet the claim limitation of a second top portion.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the embodiments of Horlick such that the open end of the shell like cap of Horlick has the rolled metal cap of Horlick.
Regarding claims 14 and 15, the extinguishing of Rebensdorf is considered to meet the claim limitation of snuffing.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Horlick (US 2,335,674) in view of Mertzel (US 2,536,302) and Pietsch (DE 467079, machine translation relied upon) and Rebensdorf (US 2004/0084055) as applied to claim 1 above, and further in view of Kasuli (US 2007/0000133).
Regarding claim 8, modified Horlick teaches all the claim limitations as set forth above. Modified Horlick does not explicitly teach an integrated magnet.
Kasuli teaches a personal accessory in which magnets are used to removably connect two devices (abstract). A magnet ([0020], figure 8, reference numeral 30) is mounted in a magnet holding recess ([0019], figure 8, reference numeral 25). Kasuli additionally teaches that providing a magnet allows the two devices to be securely connected [0009].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position a magnet and magnet holding recess on the outer surface of the container to connect to a corresponding magnet added to the cap of modified Horlick. One would have been motivated to do so since Kasuli teaches that providing a magnet allows two devices to be securely connected.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that modified Horlick does not include an internal screen that creates a divider that creates a container for holding ash, (b) that there is no teaching of a reducer ring, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Mertzel teaches that the screen is located internally to the housing (figure 2). This would create an internal divider since the central open cavity of Mertzel extends on both sides of the screen. One of ordinary skill in the art would not locate the screen of Mertzel at the ends of the shaft of Horlick since that would not create a space where ash that penetrates the screen of Metzel could be deposited. This depositing is required by the teaching of Mertzel that the screen allows the penetration of ash and other production of combustion thereinto (figure 2, reference numeral 16) for deposit at the bottom of a closed tube or socket (column 1, lines 46-55, column 2, lines 1-7, figure 2, reference numeral 14).
Regarding (b), applicant’s arguments do not address the teachings of Rebensdorff as set forth above.
Regarding (c), all claims, including the independent claim, are rejected as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755