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, 19, 43, 45, and 53-54 are pending and are subject to this Office Action. Claims 2-18, 20-42, 44, 46-52, and 55-61 are cancelled. Claims 1 and 19 are amended.
Response to Amendments
The amendments to the claims filed on January 9, 2026 are acknowledged. The objection to Claim 61 and the 112(b) rejection of Claim 61 are withdrawn due to the amendments.
Response to Arguments
Applicant's arguments, see pgs 9-11, filed January 9, 2026, have been fully considered and they are persuasive. Applicant has amended claims 1 and 19 to require a limitation that the previously applied prior art does not disclose: “wherein said edge of the cone further comprises an extension for manipulation of the contents inside the bowl.” Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art references in combination with previously applied prior art.
The following is a modified rejection based on amendments made to the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 19, 43, 45, and 53-54 are rejected under 35 U.S.C. 103 as being unpatentable over Cruz (US 2015/0351453 A1) in view of Mattison (US 1,868,986 A), Fung (US 2022/0175047 A1), Crosby (US 2019/0014816 A1), Flynn (US 2019/0239560 A1), Kang (US 2019/0297942 A1), and Zeitlin (US 2016/0262448 A1), as evidenced by Creet (US 2019/0126854 A1), Bluger (US 6,843,870 B1), Webster (US 2004/0038063 A1), and Khomenko (US 2019/0039812 A1).
Regarding Claim 1, Cruz, directed to smoking accessories ([0003]), teaches a device to cover the opening of the bowl of a smoking pipe ([0028]-[0029], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 covers the top surface 9 (opening) of the bowl 3 of smoking pipe 2), comprising
a dome having a circular indentation having a diameter and a depth designed to completely cover an opening of a bowl of a smoking pipe ([0028]-[0031], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises main body 12 designed to completely cover the top surface 9 (opening) of the bowl 3 of smoking pipe 2. Main body 12 has a concave, cylindrical (dome) shape to define hollow 18 (circular indentation) as depicted in Fig. 2 and 3. Main body 12 has a diameter of 3 mm and a depth of 1.5 mm as depicted in Fig. 2),
wherein said dome is designed to smother contents of said bowl of said smoking pipe ([0028]-[0029], [0037], Figs. 1, 2, and 5; Main body 12 extinguishes the smoking product 8 by covering top surface 9. Therefore, the main body 12 smothers contents of said bowl 3 of smoking pipe 2); and
wherein said dome is manufactured from a heat-resistant, noncarcinogenic and non-toxic material which is biodegradable and/or recyclable ([0032], [0035], Silicone is noncarcinogenic and non-toxic; see Webster, [0036]. Silicone is recyclable; see Khomenko, [0024]);
a solid body having one hole formed therein ([0028]-[0029], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises retaining member 20 which is a solid body having one hole formed therein); and
a coupling to attach the dome designed to completely cover the bowl of a smoking pipe to the solid body having one hole formed therein ([0033], Fig. 2; Retaining member 20 may be releasably coupled to main body 12, and therefore, there must be a means in which to attach main body 12 (dome) to retaining member 20 (solid body));
wherein the dome designed to completely cover the opening of the bowl of a smoking pipe is detachably or permanently affixed to the solid body having one hole formed therein ([0033], Fig. 2; Retaining member 20 may be releasably coupled (detachably affixed) to main body 12); and
wherein said dome designed to cover the opening of the bowl of a smoking pipe further comprises a hollow body, extends upward from the upper edge of the bowl of the smoking pipe on which the device is attached, and over the bowl of the smoking pipe on which the device is attached creating an interior space ([0028]-[0029], [0031], [0037], Figs. 1-3, and 5; Main body 12 has a concave, cylindrical (dome) shape to define hollow 18). Main body 12 (dome) extends upward from the top surface 9 (upper edge) of bowl 3 of smoking pipe 2 on which smoking apparatus 10 is attached. When main body 12 (dome) is positioned over bowl 3, an interior space is formed housing smoking product 8),
but does not teach the device i) wherein the solid body has two, three or four holes formed therein; ii) wherein the coupling to attach the dome designed to completely cover the bowl of a smoking pipe to the solid body having one hole formed therein is a snap-fit; iii) the device comprising: a lip surrounding the outer edge of the dome designed to cover the opening of the bowl of a smoking pipe, wherein said lip engages the outer walls of the bowl of the smoking pipe on which the device is attached and iv) a snap fit in which to detachably affix said device to the bowl of a smoking pipe to which the device is attached; wherein said snap fit in which to attach said device to said bowl of a tobacco pipe can be used while said bowl of said smoking pipe contains burning material; wherein said snap fit in which to attach said device to said bowl of said smoking pipe is heat-resistant and does not become hot when said snap fit in which to attach said device to said bowl of said smoking pipe engages the bowl of a tobacco pipe containing a burning material; and further wherein said snap fit in which to attach said device to said bowl of a smoking pipe allows the user to save and store the pipe upon which the device is attached and the contents within the bowl of said smoking pipe for later use, v) the device further comprising: a cone in which to retain a cigarette lighter, stirrer and/or pipe tools, wherein said pipe tools are selected from the group consisting of pick, reamer and cleaning rod and wherein the cone of said device exhibits the ability to resume its normal shape after being stretched or compressed, and wherein said cone further comprises an edge; and vi) wherein said edge of the cone further comprises an extension for manipulation of the contents inside the bowl; vii) one or more heat shields, wherein said heat shields extend downward from the device and are designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached; viii) wherein said device is manufactured in multiple sizes or custom made.
With respect to i), Mattison, directed to smoking accessories (pg 1, col 1, ln 1-16; It is reasonably understood that the cigarette holder is a smoking accessory), teaches a cigarette holder (pg 1, ln 17-50, Fig. 1; Cigarette holder 5) comprising:
two, three, or four holes disposed on the lower face of the cigarette holder (pg 1, col 1, ln 17-66, Fig. 1; Finger rings 10, 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the solid body of the device taught by Cruz with two, three, or four holes as taught by Mattison because Cruz and Mattison are directed to smoking accessories, Mattison demonstrates that providing a solid body comprising two, three, or four holes for a user’s fingers prevents the device from turning about the fingers of the user (Mattison, pg 1, col 1, ln 17-26), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to ii), Fung, directed to smoking articles ([0002]-[0003], [0070]; An apparatus for heating a tobacco material to generate an aerosol comprising nicotine is a smoking article), teaches apparatus for heating aerosolisable material ([0002], Fig. 1; Apparatus 1) comprising
a first sleeve and a first chassis ([0081], [0084], [0142]-[0145], Figs. 6, 8, and 8a; Apparatus 1 comprises first sleeve 11b and first chassis 19),
wherein the first sleeve and the first chassis are designed with a snap fit functionality that detachably affixes the first sleeve to the first chassis ([0142]-[0145], Figs. 8 and 8a; First sleeve 11b and first chassis 19 are detachably affixed to each other by snap fit).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the dome and the solid body taught by Cruz in view of Mattison with a snap fit functionality that detachably affixes the dome to the solid body as taught by Fung because Cruz and Fung are directed to products related to smoking, the snap-fit enables easy and quick disconnection (see Creet, [0047]), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to iii), Crosby, directed to smoking accessories ([0004]-[0006]), teaches a device to cover the opening of the bowl of a smoking pipe ([0018], [0024]-[0026], Fig. 1; Multipurpose snuffer device 5 covers the opening of the bowl of a smoking pipe), comprising:
a solid body designed to completely cover the opening of a bowl of a smoking pipe ([0024]-[0026], Fig. 6; Multipurpose snuffer device 5 comprises lower portion 9 (solid body) to completely cover the opening of a bowl of a smoking pipe); and
a lip surrounding the outer edge of the solid body designed to cover the opening of the bowl of a smoking pipe ([0022]-[0023], Figs. 1-2; Circular convex protrusion 4 comprises a circular flexible lip member surrounding the outer edge of circular lower cylinder 3 (solid body). Cruz has been modified in view of Crosby to include the lip member (heat shield) as applied to claim 1),
wherein said lip engages the outer walls of the bowl of the smoking pipe on which the device is attached ([0018], [0022]-[0023], Figs. 1-2; Circular convex protrusion 4 comprising circular flexible lip member engages the outer walls of the bowl of the smoking pipe on which the device is attached).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device taught by Cruz in view of Mattison, Fung, and Crosby further comprising a lip surrounding the outer edge of the solid body designed to cover the opening of the bowl of a smoking pipe, wherein said lip engages the outer walls of the bowl of the smoking pipe on which the device is attached as taught by Crosby because Cruz and Crosby are directed to smoking accessories, the lip ensures an airtight fit around the top edge of the pipe bowl, which deprives the burning material of oxygen, thereby extinguishing the material and stopping the material from burning further (Crosby, [0023]), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to iv), Flynn, directed to smoking accessories ([0001]), teaches a device to cover the opening of the bowl of a smoking pipe ([0031]-[0032], [0035], Figs. 1, 7-8; The smoking material extinguishing and storage device comprises main body 1, which covers the bowl rim 101 (opening) of the bowl 102 of the smoking apparatus as shown in Figs. 7-8. The smoking apparatus of Figs. 7-8 is a smoking pipe), comprising
a dome having a circular indentation having a diameter and a depth designed to completely cover an opening of a bowl of a smoking pipe ([0031]-[0035], Figs. 1, 7-8; The smoking material extinguishing and storage device comprises main body 1 comprising a cap 2 which completely covers the bowl rim 101 (opening) of the bowl 102 of the smoking pipe. Cap 2 includes a concave cap base 8 to engage with the generally convex smoking apparatus bowl 102 and bowl rim 101. Cap base 8 is shown in Fig. 6 having a circular shape, and a concave circular shape necessarily comprises a diameter and a depth. Therefore, cap 2 is a dome having a circular indentation formed by the concavity of cap base 8),
wherein said dome is designed to smother contents of said bowl of said smoking pipe ([0032], [0035], [0054], Figs. 1, 7-8; Cap 2 (dome) extinguishes the ignited smoking material by covering bowl rim 101. Therefore, the cap 2 smothers contents of said bowl 102 of said smoking pipe);
a solid body having one hole formed therein to allow the user to wear said device on the hand ([0032], [0036], Fig. 1; The smoking material extinguishing and storage device comprises strap 5 having one hole formed therein which allows the user to wear said device on the finger);
wherein the dome designed to completely cover the opening of the bowl of a smoking pipe is detachably or permanently affixed to the solid body having one hole formed therein ([0032], Fig. 1; Cap 2 (dome) is integrally formed with and permanently affixed to strap 5 (solid body)); and
wherein said dome designed to cover the opening of the bowl of a smoking pipe, extends upward from the upper edge of the bowl of the smoking pipe on which the device is attached ([0031]-[0032], [0053]-[0055], Figs. 1, 7-8; Cap 2 (dome) extends upward from the bowl rim 101 (upper edge) of the bowl 102 of the smoking pipe on which the device is attached),
further comprising means in which to detachably affix said device to the bowl of a smoking pipe to which the device is attached ([0058]-[0059], Figs. 1, 7-10; Strap 5 can be rotated over the body 106 of the smoking pipe to detachably affix said device to the bowl 102 of a smoking pipe to which the device is attached);
wherein said means in which to attach said device to said bowl of a tobacco pipe can be used while said bowl of said smoking pipe contains burning material ([0053]-[0055], [0058]-[0059], Figs. 1, 7-10; Smoking material extinguishing and storage device comprising strap 5 can be used while said bowl 102 of said smoking pipe contains burning material because carburator port(s) 104 do not need to be covered, allowing for the ingress of oxygen to facilitate combustion); and
wherein said means in which to attach said device to said bowl of said smoking pipe is heat-resistant and does not become hot when said means in which to attach said device to said bowl of said smoking pipe engages the bowl of a tobacco pipe containing a burning material ([0015]-[0016], [0069]-[0070]; Smoking material extinguishing and storage device comprising strap 5 is heat resistant and fire resistant); and
further wherein said means in which to attach said device to said bowl of a smoking pipe allows the user to save and store the pipe upon which the device is attached and the contents within the bowl of said smoking pipe for later use ([0059]-[0060]; Smoking material extinguishing and storage device comprising strap 5, when in the storage configuration, allows the user to save and store the pipe upon which the device is attached and the contents within the bowl 102 of said smoking pipe for later use).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device taught by Cruz in view of Mattison, Fung, and Crosby with the means in which to attach the device to the bowl of the smoking pipe taught by Flynn because Cruz and Flynn are directed to smoking accessories, Flynn demonstrates that the means in which to attach the device to the bowl of the smoking pipe only requires bending the solid body to surround the bowl while to bowl opening is covered by the dome (Flynn, [0058]-[0059], Figs. 1, 7-10; Strap 5 (solid body) can be rotated to surround bowl 102 while cap 2 (dome) covers the opening of bowl 102), the device taught by Cruz may be formed from a flexible material such as silicone (Cruz, [0032], [0035]), and this involves performing a function of which the device taught by Cruz in view of Mattison, Fung, and Crosby is already capable.
With respect to iv), Fung, directed to smoking articles ([0002]-[0003], [0070]; An apparatus for heating a tobacco material to generate an aerosol comprising nicotine is a smoking article), teaches apparatus for heating aerosolisable material ([0002], Fig. 1; Apparatus 1) comprising
a first sleeve and a first chassis ([0081], [0084], [0142]-[0145], Figs. 6, 8, and 8a; Apparatus 1 comprises first sleeve 11b and first chassis 19),
wherein the first sleeve and the first chassis are designed with a snap fit functionality that detachably affixes the first sleeve to the first chassis ([0142]-[0145], Figs. 8 and 8a; First sleeve 11b and first chassis 19 are detachably affixed to each other by snap fit).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device and the body of a smoking pipe taught by Cruz in view of Mattison, Fung, Crosby, and Flynn with a snap fit functionality that detachably affixes the dome to the solid body as taught by Fung because Cruz and Fung are directed to products related to smoking, the snap-fit enables easy and quick disconnection (see Creet, [0047]), and this involves combining prior art element according to known methods to yield predictable results.
With respect to v), Crosby, directed to smoking accessories ([0004]-[0006]), teaches a device to cover the opening of the bowl of a smoking pipe ([0018], [0024]-[0026], Fig. 1; Multipurpose snuffer device 5 covers the opening of the bowl of a smoking pipe), comprising:
a solid body designed to completely cover the opening of a bowl of a smoking pipe ([0024]-[0026], Fig. 6; Multipurpose snuffer device 5 comprises lower portion 9 (solid body) to completely cover the opening of a bowl of a smoking pipe); and
a hole in which to retain a cigarette lighter, stirrer and/or other pipe tools, wherein said hole further comprises an edge ([0025]-[0026], Fig. 5; Multipurpose snuffer device 5 comprises hole 13 which to retain tool 14. Hole 13 comprises an endge);
wherein said pipe tools are selected from the group consisting of pick, reamer and cleaning rod ([0026], Fig. 5; Tool 14 is a cleaning rod).
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the device taught by Cruz in view of Mattison, Fung, Crosby, and Flynn with the hole in which to retain a pipe tool as taught by Crosby because Cruz and Crosby are both directed to smoking accessories, Crosby demonstrates that the hole allows the tool to be readily available to the user should the user need to clean or maintain the pipe bowl (Crosby, [0026]), and this involves combining prior art elements according to known methods to yield predictable results. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the hole exhibits the ability to resume its normal shape after being stretched or compressed because the device taught by Cruz is fabricated from silicone (Cruz, [0032], [0035]), which exhibits the ability to resume its normal shape after being stretched or compressed (see Bluger, col 4, ln 36-38).
With respect to v), Kang, directed to smoking accessories ([0102], The matchstick and pick combination device is an accessory for smoking products), teaches a pipe tool having a cone shape ([0102], [0104], [0110]; Fig. 19 and 21B; The matchstick and pick combination device 1900 includes cleaning device 1950, which has a cone shape. Cleaning device 1950 can be used to clean the interior of a pipe bowl as shown in Fig. 21B).
It would been obvious to one of ordinary skill in the art to provide the hole of the device taught by Cruz in view of Mattison, Fung, Crosby, and Flynn in the shape of a cone to accommodate the shape of the pipe tool taught by Kang because Cruz, Crosby, and Kang are directed to smoking accessories, Crosby states that the hole is dimensioned to receive the tool therein (Crosby, [0026]), and this involves substituting one hole shape for another to yield predictable results.
With respect to vi), Zeitlin, directed to smoking accessories ([0006]), teaches a container for holding various smoker’s items ([0099], Fig. 1-4; Container 9A/9B and poker cap 11 form the container), the container comprising a cap ([0099], Fig. 1-4; Poker cap 11),
wherein said cap further comprises an extension for manipulation of the contents inside a bowl of a smoking pipe ([0099], [0119]-[0120], Fig. 1-4; Poker cap 11 comprises poker 13 (extension) for manipulation of ash 3 or smoking material 4 inside a bowl 2 of a smoking pipe 1).
It would been obvious to one of ordinary skill in the art to provide the edge of the cone taught by Cruz in view of Mattison, Fung, Crosby, Flynn, and Kang further comprising an extension for manipulation of the contents inside the bowl similarly taught by Zeitlin because Cruz and Zeitlin are directed to smoking accessories, Zeitlin demonstrates that the extension allows a user to loosen ash for removal from the bowl or pack smoking material into the bowl (Zeitlin, [0119]-[0120]). As one of ordinary skill in the art would have understood that an extension can be located in various positions on the device, it would have been obvious to try locating the extension on the edge of the cone as claimed, absent evidence to the contrary.
With respect to vii), Crosby, directed to smoking accessories ([0004]-[0006]), teaches a device to cover the opening of the bowl of a smoking pipe ([0018], [0022]-[0023], Fig. 1; Multipurpose snuffer device 1 covers the opening of the bowl of a smoking pipe), comprising:
a solid body designed to completely cover the opening of a bowl of a smoking pipe ([0022]-[0023], Figs. 1-2; Multipurpose snuffer device 1 comprises circular lower cylinder 3 (solid body) to completely cover the opening of a bowl of a smoking pipe); and
one or more lips, wherein the one or more lips extend downward from the device and are designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached ([0018], [0022]-[0023], Figs. 1-2; Circular convex protrusion 4 comprising circular flexible lip member lines the outside of the bowl of the smoking pipe on which the device is attached).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device taught by Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin further comprising one or more lips extending downward from the device and designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached as taught by Crosby because Cruz and Crosby are directed to smoking accessories, the lip ensures an airtight fit around the top edge of the pipe bowl, which deprives the burning material of oxygen, thereby extinguishing the material and stopping the material from burning further (Crosby, [0023]), and this involves combining prior art elements according to known methods to yield predictable results.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the lip from silicone such that the lip functions as a heat shield because the device taught by Cruz is fabricated from silicone (Cruz, [0032], [0035]), and silicone is heat resistant and fire resistant (see Flynn, [0015]-[0016], [0069]-[0070]).
With respect to viii), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the device in multiple sizes because the dome is designed to completely cover the opening of a bowl of a smoking pipe (Cruz, [0028]-[0031], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises main body 12 designed to completely cover the top surface 9 (opening) of the bowl 3 of smoking pipe 2), and bowls of smoking pipes come in multiple sizes (Cruz, [0008], [0038]). Additionally, the change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
The limitation: “wherein said device is custom made” is a product-by-process limitation. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin discloses a structurally and compositionally equivalent product.
“To allow the user to wear said device on the hand” is functional limitation relating to an intended use of the solid body. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. Because Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin teaches a solid body having two, three, or four holes formed therein as claimed, the solid body would necessarily be capable of allowing the user to wear said device on the hand.
Regarding Claim 19, Cruz, directed to smoking accessories ([0003]), teaches a device manufactured as a single unit to cover the opening of the bowl of a smoking pipe ([0028]-[0029], [0033], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 covers the top surface 9 (opening) of the bowl 3 of smoking pipe 2. Smoking apparatus 10 comprises a retaining member 20 fixedly coupled to a main body 12), comprising
a dome having a circular indentation having a diameter and a depth designed to completely cover an opening of a bowl of a smoking pipe ([0028]-[0031], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises main body 12 designed to completely cover the top surface 9 (opening) of the bowl 3 of smoking pipe 2. Main body 12 has a concave, cylindrical (dome) shape to define hollow 18 (circular indentation) as depicted in Fig. 2 and 3. Main body 12 has a diameter of 3 mm and a depth of 1.5 mm as depicted in Fig. 2),
wherein said dome is designed to smother contents of said bowl of said smoking pipe ([0028]-[0029], [0037], Figs. 1, 2, and 5; Main body 12 extinguishes the smoking product 8 by covering top surface 9. Therefore, the main body 12 smothers contents of said bowl 3 of smoking pipe 2), and
wherein said dome has a diameter greater than the diameter of the bowl of the smoking pipe which the device is attached ([0028]-[0031], [0037], Figs. 1, 2, and 5; Main body 12 (dome) has a diameter greater than the diameter of the bowl 3 of the smoking pipe 2 which apparatus 10 (device) is attached as depicted in Fig. 5);
a solid body having one hole formed therein ([0028]-[0029], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises retaining member 20 which is a solid body having one hole formed therein); and
a coupling to attach the dome designed to completely cover the bowl of a smoking pipe to the solid body having one hole formed therein ([0033], Fig. 2; Retaining member 20 may be fixedly coupled to main body 12, and therefore, there must be a means in which to attach main body 12 (dome) to retaining member 20 (solid body));
wherein the dome designed to completely cover the opening of the bowl of a smoking pipe is detachably or permanently affixed to the solid body having one hole formed therein ([0033], Fig. 2; Retaining member 20 may be fixedly coupled (permanently affixed) to main body 12); and
wherein said dome designed to cover the opening of the bowl of a smoking pipe further comprises a hollow body, extends upward from the upper edge of the bowl of the smoking pipe on which the device is attached, and over the bowl of the smoking pipe on which the device is attached creating an interior space ([0028]-[0029], [0031], [0037], Figs. 1-3, and 5; Main body 12 has a concave, cylindrical (dome) shape to define hollow 18). Main body 12 (dome) extends upward from the top surface 9 (upper edge) of bowl 3 of smoking pipe 2 on which smoking apparatus 10 is attached. When main body 12 (dome) is positioned over bowl 3, an interior space is formed housing smoking product 8),
but does not teach the device i) wherein the solid body has two, three or four holes formed therein; ii) wherein the coupling to attach the dome designed to completely cover the bowl of a smoking pipe to the solid body having one hole formed therein is a snap-fit; iii) the device further comprising: a cone in which to retain a cigarette lighter, stirrer and/or pipe tools, wherein said pipe tools are selected from the group consisting of pick, reamer and cleaning rod and wherein the cone of said device exhibits the ability to resume its normal shape after being stretched or compressed, the cone further comprising an edge; iv) wherein said edge of the cone further comprises an extension for manipulation of the contents of the bowl; v) one or more heat shields, wherein said heat shields extend downward from the device and are designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached; vi) wherein said device is manufactured in multiple sizes or custom made; and vii) wherein said dome designed to cover the opening of the bowl of a smoking pipe is fused to said solid body having two, three or four holes formed therein.
With respect to i), Mattison, directed to smoking accessories (pg 1, col 1, ln 1-16; It is reasonably understood that the cigarette holder is a smoking accessory), teaches a cigarette holder (pg 1, ln 17-50, Fig. 1; Cigarette holder 5) comprising:
two, three, or four holes disposed on the lower face of the cigarette holder (pg 1, col 1, ln 17-66, Fig. 1; Finger rings 10, 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the solid body of the device taught by Cruz with two, three, or four holes as taught by Mattison because Cruz and Mattison are directed to smoking accessories, Mattison demonstrates that providing a solid body comprising two, three, or four holes for a user’s fingers prevents the device from turning about the fingers of the user (Mattison, pg 1, col 1, ln 17-26), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to ii), Fung, directed to smoking articles ([0002]-[0003], [0070]; An apparatus for heating a tobacco material to generate an aerosol comprising nicotine is a smoking article), teaches apparatus for heating aerosolisable material ([0002], Fig. 1; Apparatus 1) comprising
a first sleeve and a first chassis ([0081], [0084], [0142]-[0145], Figs. 6, 8, and 8a; Apparatus 1 comprises first sleeve 11b and first chassis 19),
wherein the first sleeve and the first chassis are designed with a snap fit functionality that detachably affixes the first sleeve to the first chassis ([0142]-[0145], Figs. 8 and 8a; First sleeve 11b and first chassis 19 are detachably affixed to each other by snap fit).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the dome and the solid body taught by Cruz in view of Mattison with a snap fit functionality that detachably affixes the dome to the solid body as taught by Fung because Cruz and Fung are directed to products related to smoking, the snap-fit enables easy and quick disconnection (see Creet, [0047]), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to iii), Crosby, directed to smoking accessories ([0004]-[0006]), teaches a device to cover the opening of the bowl of a smoking pipe ([0018], [0024]-[0026], Fig. 1; Multipurpose snuffer device 5 covers the opening of the bowl of a smoking pipe), comprising:
a solid body designed to completely cover the opening of a bowl of a smoking pipe ([0024]-[0026], Fig. 6; Multipurpose snuffer device 5 comprises lower portion 9 (solid body) to completely cover the opening of a bowl of a smoking pipe); and
a hole in which to retain a cigarette lighter, stirrer and/or other pipe tools, wherein the hole comprises an edge ([0025]-[0026], Fig. 5; Multipurpose snuffer device 5 comprises hole 13 which to retain tool 14. Hole 13 has an edge);
wherein said pipe tools are selected from the group consisting of pick, reamer and cleaning rod ([0026], Fig. 5; Tool 14 is a cleaning rod).
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the device taught by Cruz in view of Mattison and Fung with the hole in which to retain a pipe tool as taught by Crosby because Cruz and Crosby are both directed to smoking accessories, Crosby demonstrates that the hole allows the tool to be readily available to the user should the user need to clean or maintain the pipe bowl (Crosby, [0026]), and this involves combining prior art elements according to known methods to yield predictable results. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the hole exhibits the ability to resume its normal shape after being stretched or compressed because the device taught by Cruz is fabricated from silicone (Cruz, [0032], [0035]), which exhibits the ability to resume its normal shape after being stretched or compressed (see Bluger, col 4, ln 36-38).
With respect to iii), Kang, directed to smoking accessories ([0102], The matchstick and pick combination device is an accessory for smoking products), teaches a pipe tool having a cone shape ([0102], [0104], [0110]; Fig. 19 and 21B; The matchstick and pick combination device 1900 includes cleaning device 1950, which has a cone shape. Cleaning device 1950 can be used to clean the interior of a pipe bowl as shown in Fig. 21B).
It would been obvious to one of ordinary skill in the art to provide the hole of the device taught by Cruz in view of Mattison, Fung, and Crosby in the shape of a cone to accommodate the shape of the pipe tool taught by Kang because Cruz, Crosby, and Kang are directed to smoking accessories, Crosby states that the hole is dimensioned to receive the tool therein (Crosby, [0026]), and this involves substituting one hole shape for another to yield predictable results.
With respect to iv), Zeitlin, directed to smoking accessories ([0006]), teaches a container for holding various smoker’s items ([0099], Fig. 1-4; Container 9A/9B and poker cap 11 form the container), the container comprising a cap ([0099], Fig. 1-4; Poker cap 11),
wherein said cap further comprises an extension for manipulation of the contents inside a bowl of a smoking pipe ([0099], [0119]-[0120], Fig. 1-4; Poker cap 11 comprises poker 13 (extension) for manipulation of ash 3 or smoking material 4 inside a bowl 2 of a smoking pipe 1).
It would been obvious to one of ordinary skill in the art to provide the edge of the cone taught by Cruz in view of Mattison, Fung, Crosby, Flynn, and Kang further comprising an extension for manipulation of the contents inside the bowl similarly taught by Zeitlin because Cruz and Zeitlin are directed to smoking accessories, Zeitlin demonstrates that the extension allows a user to loosen ash for removal from the bowl or pack smoking material into the bowl (Zeitlin, [0119]-[0120]). As one of ordinary skill in the art would have understood that an extension can be located in various positions on the device, it would have been obvious to try locating the extension on the edge of the cone as claimed, absent evidence to the contrary.
With respect to v), Crosby, directed to smoking accessories ([0004]-[0006]), teaches a device to cover the opening of the bowl of a smoking pipe ([0018], [0022]-[0023], Fig. 1; Multipurpose snuffer device 1 covers the opening of the bowl of a smoking pipe), comprising:
a solid body designed to completely cover the opening of a bowl of a smoking pipe ([0022]-[0023], Figs. 1-2; Multipurpose snuffer device 1 comprises circular lower cylinder 3 (solid body) to completely cover the opening of a bowl of a smoking pipe); and
one or more lips, wherein the one or more lips extend downward from the device and are designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached ([0018], [0022]-[0023], Figs. 1-2; Circular convex protrusion 4 comprising circular flexible lip member lines the outside of the bowl of the smoking pipe on which the device is attached).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device taught by Cruz in view of Mattison, Fung, Crosby, Kang, and Zeitlin further comprising one or more lips extending downward from the device and designed to line either or both the inside and the outside of the bowl of the smoking pipe upon which the device is attached as taught by Crosby because Cruz and Crosby are directed to smoking accessories, the lip ensures an airtight fit around the top edge of the pipe bowl, which deprives the burning material of oxygen, thereby extinguishing the material and stopping the material from burning further (Crosby, [0023]), and this involves combining prior art elements according to known methods to yield predictable results.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the lip from silicone such that the lip functions as a heat shield because the device taught by Cruz is fabricated from silicone (Cruz, [0032], [0035]), and silicone is heat resistant and fire resistant (see Flynn, [0015]-[0016], [0069]-[0070]).
With respect to vi), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the device in multiple sizes because the dome is designed to completely cover the opening of a bowl of a smoking pipe (Cruz, [0028]-[0031], [0037], Figs. 1, 2, and 5; Smoking apparatus 10 comprises main body 12 designed to completely cover the top surface 9 (opening) of the bowl 3 of smoking pipe 2), and bowls of smoking pipes come in multiple sizes (Cruz, [0008], [0038]). Additionally, the change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
The limitation: “wherein said device is custom made” is a product-by-process limitation. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Cruz in view of Mattison, Fung, Crosby, Kang, and Zeitlin discloses a structurally and compositionally equivalent product.
With respect to vii), Flynn, directed to smoking accessories ([0001]), teaches a device to cover the opening of the bowl of a smoking pipe ([0031]-[0032], [0035], Figs. 1, 7-8; The smoking material extinguishing and storage device comprises main body 1, which covers the bowl rim 101 (opening) of the bowl 102 of the smoking apparatus as shown in Figs. 7-8. The smoking apparatus of Figs. 7-8 is a smoking pipe), comprising
a dome having a circular indentation having a diameter and a depth designed to completely cover an opening of a bowl of a smoking pipe ([0031]-[0035], Figs. 1, 7-8; The smoking material extinguishing and storage device comprises main body 1 comprising a cap 2 which completely covers the bowl rim 101 (opening) of the bowl 102 of the smoking pipe. Cap 2 includes a concave cap base 8 to engage with the generally convex smoking apparatus bowl 102 and bowl rim 101. Cap base 8 is shown in Fig. 6 having a circular shape, and a concave circular shape necessarily comprises a diameter and a depth. Therefore, cap 2 is a dome having a circular indentation formed by the concavity of cap base 8),
wherein said dome is designed to smother contents of said bowl of said smoking pipe ([0032], [0035], [0054], Figs. 1, 7-8; Cap 2 (dome) extinguishes the ignited smoking material by covering bowl rim 101. Therefore, the cap 2 smothers contents of said bowl 102 of said smoking pipe);
a solid body having one hole formed therein to allow the user to wear said device on the hand ([0032], [0036], Fig. 1; The smoking material extinguishing and storage device comprises strap 5 having one hole formed therein which allows the user to wear said device on the finger);
wherein the dome designed to completely cover the opening of the bowl of a smoking pipe is detachably or permanently affixed to the solid body having one hole formed therein ([0032], Fig. 1; Cap 2 (dome) is integrally formed with and permanently affixed to strap 5 (solid body)),
wherein said dome designed to cover the opening of the bowl of a smoking pipe is fused to said solid body having two, three or four holes formed therein ([0031]-[0035], Figs. 1, 7-8; Cap 2 (dome) is integrally formed with and fused to strap 5 (solid body)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the device taught by Cruz in view of Mattison, Fung, Crosby, Kang, and Zeitlin wherein said dome designed to cover the opening of the bowl of a smoking pipe is at least partially fused to said solid body having two, three or four holes formed therein as taught by Flynn because Cruz and Flynn are directed to smoking accessories, Flynn demonstrates that the fusing the dome to said solid body prevents the dome from separating from the solid body while allowing the solid body to bend relative to the dome ([0031]-[0035], Figs. 1, 7-8), and this involves combining prior art elements according to known methods to yield predictable results.
“To allow the user to wear said device on the hand” is functional limitation relating to an intended use of the solid body. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. Because Cruz in view of Mattison, Fung, Crosby, Kang, Zeitlin, and Flynn teaches a solid body having two, three, or four holes formed therein as claimed, the solid body would necessarily be capable of allowing the user to wear said device on the hand.
Regarding Claim 43, Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin teaches the device according to claim 1. Cruz further teaches the device further comprising means in which to access the contents of the bowl of the smoking pipe after said device has been placed over said bowl of said smoking pipe ([0037]-[0039], Figs. 1-6; After apparatus 10 is placed over the bowl 3 of the smoking pipe 2, apparatus 10 may be removed from the bowl 3 to access the contents (smoking product 8) of the bowl 3).
Claim 45 recites a functional limitation relating to an intended use of the device of Claim 1. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. Because Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin discloses the device of Claim 1, the device would necessarily be capable of engaging a hemp wick.
Regarding Claim 53, Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin teaches the device according to claim 1. Cruz teaches the device wherein the dome designed to completely cover the bowl of a smoking pipe and the solid body having two, three or four holes formed therein are detachably affixed to each other ([0033], Fig. 2; Main body 12 is releasably coupled to retaining member 20). Fung further teaches the device wherein the dome designed to completely cover the bowl of a smoking pipe and the solid body having two, three or four holes formed therein are designed with a snap fit functionality that detachably affixes the dome to the solid body having two, three or four holes formed therein ([0142]-[0145], Figs. 8 and 8a; First sleeve 11b and first chassis 19 are detachably affixed to each other by snap fit. Cruz has been modified in view of Fung such that the dome and the solid body are designed with a snap fit functionality as applied to Claim 1).
Regarding Claim 54, Cruz in view of Mattison, Fung, Crosby, Flynn, Kang, and Zeitlin teaches the device according to claim 53, but does not teach the device wherein said dome designed to completely cover the opening of a bowl of a smoking pipe further comprises a protruding part or locking feature and said solid body having two, three or four holes formed therein further comprises an undercut or hole wherein when said protruding part or locking feature is inserted into said undercut or hole forged into said solid body having two, three or four holes, said protruding part or locking feature is a hook or a stud that is slightly deflected during the joining operation and snaps back into the undercut or hole in said solid body having two, three or four holes.
Fung teaches an apparatus ([0002], Fig. 1; Apparatus 1) comprising:
a first sleeve and a first chassis ([0081], [0084], [0142]-[0145], Figs. 6, 8, and 8a; Apparatus 1 comprises first sleeve 11b and first chassis 19),
wherein said first chassis further comprises a protruding part or locking feature ([0142]-[0145], Figs. 8 and 8a; First chassis 19 comprises clip 93 having protrusion 95) and
said first sleeve further comprises an undercut or hole ([0142]-[0145], Figs. 8 and 8a; First sleeve 11b comprising receiving portion 97 which is a hole)
wherein when said protruding part or locking feature is inserted into said undercut or hole forged into said first sleeve ([0142]-[0145], Figs. 8 and 8a; Protrusion 95 is inserted into receiving portion 97 forged into first sleeve 11b),
said protruding part or locking feature is hook or a stud is slightly deflected during the joining operation and snaps back into an undercut or hole in the mating part ([0142]-[0145], Figs. 8 and 8a; Protrusion 95 is a stud. Clip 93 and protrusion 95 are slightly deflected during the joining operation and snaps back into receiving portion 97 in first sleeve 11b).
It would have been obvious to one of ordinary skill in the art to provide the dome and the solid body by Cruz with the protruding part and hole in the configuration taught by Fung because Cruz states that the dome is releasably coupled to the solid body (Cruz, [0033], Fig. 2; Main body 12 (dome) is releasably coupled to retaining member 20 (solid)), and Fung demonstrates that the act of inserting a component having a protruding part into a component with a hole enables automatic engagement of the components (Fung, [0144], Figs. 8 and 8a).
Further, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to provide the protruding part on the dome and the hole on the solid body because Cruz lists only two components to be detachably fixed to each other (Cruz, [0033], Fig. 2; Main body 12 is releasably coupled to retaining member 20). As there are only a finite number of options presented for the respective locations of the protruding part and the hole, one of ordinary skill in the art would have had a reasonable expectation of success by selecting from this finite list of options, and thus it would have been obvious to try providing the dome with the protruding part and the solid body with the hole because there are a finite number of identified, predictable solutions.
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.
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/J.M.M./
Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755