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 1-5 are pending.
Claims 1-5 have been amended.
Claims 6-20 have been cancelled.
Claim Objections
Claim 1 is objected to because of the following informalities: “absorb” in line 7 is not grammatically correct and should be “absorbs”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “it” in line 8 is not grammatically correct and should be “said material”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “the material that absorb fluid allows air to flow through it” in line 15 is not grammatically correct and should be “the material that absorbs fluid allows air to flow through said material”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “it” in line 5 is not grammatically correct and should be “the seal”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “sealth” in line 16 is not spelled correctly and should be “sheath”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding the limitation, “when using the inhalation device, the user does not inhale any smoke from the device due to the absence of smoke main stream”, the specification does not support this limitation. The specification does support, “…and releases smoke which is not inhaled directly from the inhalation device by the person who is inhaling” (page 3) and “and the smoke is not directly inhaled by the person who is inhaling,” (page 2).
Regarding the limitations, “… from the moment of ignition, defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the device until the final stage of use, defined as the point when the combustible material is completely exhausted,” and “the smoke remains in the organic matter combustion section from the from the moment of ignition, defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” these are not supported by the originally filed disclosure.
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.
Claim 2 is 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 recites the limitation "the physically blocked side of organic matter combustion section" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Response to Arguments
Applicant's arguments filed 7/29/2025 have been fully considered but they are not persuasive.
Applicant Argument A:
The cited references fail to teach the limitations of claim 1, at least as amended. Horsewell discloses a seal and a sheath that are separated by the annular gap which is reduced when heat is applied. Such design causes the smoke to pass through to the user when the device is first ignited.
Accordingly, Horsewell fails to disclose that "there is no annular gap between the components that make up the splitting section[.]" Sebastian fails to remedy the deficiencies of Horsewell.
Applicant therefore respectfully requests that the rejections of claim 1 and claims 2-5, at least by virtue of their dependence on claim 1 and for at least the reasons presented above, be withdrawn.
Examiner Response A:
The Examiner respectfully disagrees. Horsewell teaches that there is no annular gap between the components that make up the splitting section (Fig. 6 and col. 2, lines 9-20).
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horsewell (US 3800805) in view of Sebastian (US 20110041861).
Regarding claim 1, Horsewell teaches that a disposable inhalation device (Figs. 5 and 6) that releases smoke which is not directly inhaled comprising:
a cylinder-shaped inhaler body (Figs. 5 and 6) formed by a sheath of thin, non-rigid material (14), wherein one end of the cylindrical body is filled with material that absorb fluid (“filter”, 6), and the said material is non-rigid and has the characteristic of allowing air to flow through it (col. 1, lines 60-65);
the end of the sheath (14), where the material (6) is located, is perforated (17), so that in the inhalation process, the external atmospheric air enters through the perforated apertures inside the part where the material is located (col. 2, lines 21-30), and
the other end of the cylindrical body is filled with combustible organic matter (1), which, by combustion, is burned together with the sheath of the inhalation device in the part where the combustible organic matter is stored (when the cigarette is lit and burned),
wherein the inhalation device comprises three components:
the inhalation section (6), the organic matter combustion section (1) and the splitting section (13), which components have the following characteristics:
the inhalation section (6) is physically completely blocked on one side by a splitting section (13) which makes it impossible for the smoke produced by the combustion of the organic matter in the organic matter combustion section (1) to enter the inhalation section (6) (col. 2, lines 6-20 and Figs. 5-6) and thus this inhalation device does not have any smoke main stream,
there is no annular gap between the components that make up the splitting section (Fig. 6 and col. 2, lines 9-20), and when using the inhalation device, the user does not inhale any smoke from the device due to the absence of a smoke mainstream (Fig. 6 and col. 2, lines 9-20);
the splitting section (13) physically blocks one side of the inhalation section (6) so that the smoke, produced by the combustion of the organic matter in the organic matter combustion section (1) does not enter the inhalation section (6);
the organic matter combustion section (1) is physically completely blocked at one side by a splitting section (13) and therefore it is not possible for the smoke produced by combustion of the organic matter to enter into the inhalation section (6) and the user does not inhale any smoke through the inhalation device (Fig. 6 and col. 2, lines 9-20).
Horsewell does not expressly teach that in the filter material (6) a fragile canister is placed and the canister is filled with a volatile inhalation substance which does not need to be heated to evaporate.
Sebastian teaches a smoking article with a capsule in the filter (Fig. 1) which is broken upon physical manipulation such as squeezing to release flavorants ([0044]). It would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated the capsule of Sebastian into the filter of Horsewell with a reasonable expectation of success and predictable results, namely to flavor the air flowing through the filter of Horsewell for a pleasant user experience.
Regarding the limitations, “when using the inhalation device, the user does not inhale any smoke from the device due to the absence of smoke main stream”, “prevent the user from inhaling smoke from the moment of ignition, defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the device until the final stage of use, defined as the point when the combustible material is completely exhausted,” “the smoke remains in the organic matter combustion section from the from the moment of ignition, defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” these are functional language limitations. The MPEP states that features of an apparatus may be recited either structurally or functionally; however, the manner of operating the device does not differentiate an apparatus claim from the prior art (see MPEP 2114).
Additionally, “when using the device” is not explicitly defined in the specification and thus can be anytime in the life of the device.
Regarding the limitation, “or if it is otherwise manufactured, without a breakable canister, the material, or the materials which absorb liquid, are moistened or soaked with drops of a volatile inhalation substance which does not need to be heated to evaporate” this limitation is not invoked because it is not otherwise manufactured without a breakable canister.
Regarding claim 2, Horsewell teaches that the splitting section (13) is positioned between the physically blocked side of the inhalation section (6) and the physically blocked side of organic matter combustion section (1) (Fig. 6 and col. 2, lines 6-20).
Regarding the limitation, “from the beginning of the device’s use” this is a functional language limitation. The MPEP states that features of an apparatus may be recited either structurally or functionally; however, the manner of operating the device does not differentiate an apparatus claim from the prior art (see MPEP 2114).
Regarding claim 3, Horsewell teaches that the splitting section (13) includes a seal (13) which is located inside the sheath (14) (Fig. 6) and is made of one type of material (13) having the feature of preventing the flow of air or smoke through the material (“impermeable body,” col. 2, lines 9-20), there is no annular gap between the seal and the sheath (Fig. 6 and col. 2, lines 9-20), thus the constituting components of the inhalation device; and the inhalation section (6) and the organic matter combustion section (1) are fully functionally separated by the seal which enables the prevention of air or smoke flow between the inhalation section (6) and the organic matter combustion section (1) (col. 2, lines 9-20).
Regarding the limitations, “from the moment of ignition, defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” and “from the beginning of the device’s use defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” these are functional language limitations. The MPEP states that features of an apparatus may be recited either structurally or functionally; however, the manner of operating the device does not differentiate an apparatus claim from the prior art (see MPEP 2114).
Regarding claim 4, Horsewell teaches that the seal (13) is affixed to the internal side of the sheath (14) (Fig.6) and does not allow air or smoke to flow into the part between the seal and the sheath, thus the inhalation section (6) and the organic matter combustion section (1) are completely functionally separated and there is no air or smoke flow between the inhalation section (6) and the organic matter combustion section (1) (col. 2, lines 9-20).
Regarding the limitation, “from the beginning of the device’s use defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” this is a functional language limitation. The MPEP states that features of an apparatus may be recited either structurally or functionally; however, the manner of operating the device does not differentiate an apparatus claim from the prior art (see MPEP 2114).
Regarding claim 5, Horsewell teaches that the splitting section includes a seal (13) located inside the sheath (14)(Fig. 6) and made of one type of material ( 13), which has the characteristic of not allowing air or smoke to flow through it (“impermeable body,” col. 2, lines 9-20); and
the inhalation section (6) and the organic matter combustion section (1) are fully functionally separated by the seal (13) and there is no air or smoke flow between the inhalation section (6) and the organic matter combustion section (1) and the seal (13) is affixed to the internal side of the sheath (14) (Fig. 6) by another material (“adhesive,” col. 1, lines 40-45) and does not allow air or smoke to flow into the part between the seal (13) and the sheath (14),
thus there is no annular gap between the seal and the sheath (Fig. 6 and col. 2, lines 9-20), thus the inhalation section (6) and the organic matter combustion section (1) are fully functionally separated, and there is no air or smoke flow between the inhalation section (6) and the organic matter combustion section (1) (col. 2, lines 9-20).
Regarding the limitations, “from the beginning of the device’s use defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” and “from the beginning of the device’s use defined as the point at which a flame is first applied to the combustible section of the device, and lasts during user inhalation from the product until the final stage of use, defined as the point when the combustible material is completely exhausted,” these are functional language limitations. The MPEP states that features of an apparatus may be recited either structurally or functionally; however, the manner of operating the device does not differentiate an apparatus claim from the prior art (see MPEP 2114).
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755
/ERIC YAARY/Examiner, Art Unit 1755