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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/9/2025 has been entered.
Status of the Claims
Claims 15, 17, 20, 31, 32, 35, 36 and 43-55 are pending.
Claims 26-30, 33, 34, 37 and 38 have been canceled.
Claims 15, 17, 32, 33 and 35 have been amended.
Claims 43-55 are new.
Claim Objections
Claim 35 is objected to because of the following informalities: “between the edible material second and the edible material first end”. The Examiner has made the assumption that “end” has been inadvertently omitted after “second”. Appropriate correction is required.
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 32, 43 and 44 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.
Claim 32 states, “wherein a third portion of the second portion of the mouthpiece outermost circumferential surface.” It is not clear what the metes and bounds are of “a third portion of the second portion”. Does it mean a third of the second portion is taken as a third portion? Or is there an additional third portion of the mouthpiece outermost circumferential surface?
For purposes of examination, it is interpreted that “a third portion” is a portion of “the second portion” of the mouthpiece outermost circumferential surface.
Claim 43 and 44 state, “the section of paper” however it is unclear what paper this limitation is referencing in claim 35. Is it referring to a portion of the paper body? Or to a section of the outermost circumferential paper layer?
For purposes of examination, it is interpreted that “the section of paper” is referring to the first portion of the paper body.
Response to Arguments
Applicant’s arguments, filed 6/9/2025, have been fully considered and are persuasive. The Applicant has amended claims 15 and 35 to include limitations that were not previously presented. The prior art of record does not appear to disclose the new limitations. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Reinisch (US 169119) in view of Lollipipe ("Edible Candy 'Pipe' Causes Uproar").
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) 15, 17, 20, 31, 32, 35, 36 and 43-55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinisch (US 169119) in view of Lollipipe ("Edible Candy 'Pipe' Causes Uproar").
Regarding claim 15, Reinisch teaches a smokable assembly (Fig. 1) comprising:
a mouthpiece (B, Fig. 1), the mouthpiece (B) including a mouthpiece first end, a mouthpiece second end, a mouthpiece outermost circumferential surface extending between the mouthpiece first end and the mouthpiece second end (see annotated drawing below);
a combustible elongate member (C, Fig. 1) including a member first end, a member second end (see annotated drawing below), and a combustible outermost circumferential layer (A) extending between the member first end and the member second end (see annotated drawing below);
wherein an overlapping portion of the combustible outermost circumferential layer extends over, is in direct contact with (see annotated drawing below), and is bonded directly to a first portion of the mouthpiece outermost circumferential surface (col. 1, lines 23-24 through col. 2, lines 1-2);
wherein a second portion of the mouthpiece outermost circumferential surface is unobstructed by the outermost circumferential layer (see annotated drawing below);
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Reinisch does not expressly teach that the mouthpiece is comprised entirely of 100% edible materials.
Lollipipe teaches a smokable assembly comprised entirely of 100% edible material, which includes a mouthpiece comprised entirely of 100% edible materials (under "What is Lollipipe Candy?"), the mouthpiece including an inner passageway defined by passageway sidewalls comprised of the 100% edible materials and extending through the mouthpiece body from the mouthpiece first end to the mouthpiece second end (the inner passageway through the "fully functional smoking pipe"). It would have been obvious for one of ordinary skill in the art at the time of the invention to have substituted the entirely edible hard candy material of Lollipipe for the goose-quill material of the mouthpiece of Reinisch, with a reasonable expectation of success and predictable results, namely to replace a tasteless mouthpiece with a tasty, 100% edible, disposable and fully functional mouthpiece (under "What is Lollipipe Candy?" and "Does the Lollipipe really work?") for an enhanced experience for the user.
Regarding the limitation, “wherein in use, the combustible elongate member is combusted to create smoke, wherein the smoke, upon a user inhaling from the mouthpiece first end, passes through the inner passageway and contacts the 100% edible materials that comprise the passageway sidewalls,” this limitation is an intended use of the smokable assembly. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the 100% edible passageway sidewalls are capable of being contacted by the smoke from the combustible elongate member when a user inhales on the mouthpiece first end and the combustible elongate member is combusted, the claimed smokable assembly is not differentiated from the prior art.
Regarding claim 17, modified Reinisch teaches that the outermost circumferential layer includes paper (Reinisch, col. 1, lines 13-16).
Regarding claim 20, modified Reinisch teaches that the combustible elongate member includes a cigar (Reinisch, col. 1, lines 6-7).
Regarding claim 31, modified Reinisch teaches that the edible materials include hard candy (Lollipipe, line 1).
Regarding claim 32, regarding the limitation, “wherein a third portion of the second portion of the mouthpiece outermost circumferential surface is adapted to be broken off from the mouthpiece body and ingested by the user,” this limitation is an intended use of the mouthpiece. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the hard candy mouthpiece is capable of being broken and ingested, the claimed mouthpiece is not differentiated from the prior art.
Regarding claim 35, Reinisch teaches a smokable item (Fig. 1) comprising:
a section of paper rolled to form a paper body (A) including a paper body first end, a paper body second end, an outermost circumferential paper layer extending from the paper body first end to the paper body second end (see annotated drawing below), and a paper body inner passageway extending from the paper body first end to the paper body second end, the paper body inner passageway defined by paper body inner passageway sidewalls comprising the paper (col. 1, lines 13-16);
a mouthpiece (B) including a second end opposite the first end (see annotated drawing below), a mouthpiece outermost circumferential surface extending from the mouthpiece first end to the mouthpiece second end, and a mouthpiece inner passageway defined by inner passageway sidewalls extending from the mouthpiece first end to the mouthpiece second end (see annotated drawing below);
a layer of adhesive on the mouthpiece outer circumferential surface extending from an adhesive first location at the mouthpiece second end to an adhesive intermediate location between the mouthpiece second end and the mouthpiece first end (col. 1, lines 23-24 through col. 2, lines 1-2);
a first portion of the paper body inner passageway sidewalls from the paper body first end to a paper body intermediate location between the paper body first end and the paper body second end (see annotated drawing) overlaying, in direct contact with, and bonded directly to the edible material outermost circumferential surface (col. 1, lines 23-24 through col. 2, lines 1-2) from the mouthpiece second end to a mouthpiece material intermediate location between the mouthpiece second end and the mouthpiece first end, leaving the mouthpiece outermost circumferential surface unobstructed from the mouthpiece intermediate location to the mouthpiece first end (see annotated Fig. 1);
a second portion of the paper body inner passageway sidewalls from the paper body intermediate location to the paper body second end extending away from the edible material second end (see annotated Fig. 1).
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Reinisch does not expressly teach that the mouthpiece is comprised entirely of edible materials.
Lollipipe teaches a smokable assembly comprised entirely of edible material, which includes a mouthpiece comprised entirely of edible materials (under "What is Lollipipe Candy?"), the mouthpiece including an edible inner passageway defined by edible material inner passageway sidewalls comprised entirely of edible materials and extending through the mouthpiece body from the mouthpiece first end to the mouthpiece second end (the inner passageway through the "fully functional smoking pipe"). It would have been obvious for one of ordinary skill in the art at the time of the invention to have substituted the entirely edible hard candy material of Lollipipe for the goose-quill material of the mouthpiece of Reinisch, with a reasonable expectation of success and predictable results, namely to replace a tasteless mouthpiece with a tasty, 100% edible, disposable and fully functional mouthpiece (under "What is Lollipipe Candy?" and "Does the Lollipipe really work?") for an enhanced experience for the user.
Regarding the limitation, “wherein in use, the paper body is combusted to create smoke, wherein the smoke, upon a user inhaling from the edible material first end, passes through the edible material inner passageway and contacts the edible material inner passageway sidewalls,” this limitation is an intended use of the smokable assembly. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the 100% edible passageway sidewalls are capable of being contacted by the smoke from the combustible paper body when a user inhales on the mouthpiece first end and the combustible paper body is combusted, the claimed smokable assembly is not differentiated from the prior art.
Regarding claim 36, regarding the limitation, “wherein a portion of the piece of edible material between the adhesive intermediate location and the edible material first end is adapted to be broken off from the piece of edible material and ingested by the user,” this limitation is an intended use of the mouthpiece. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the hard candy mouthpiece is capable of being broken and ingested, the claimed mouthpiece is not differentiated from the prior art.
Regarding claims 43 and 44, modified Reinisch teaches that the first portion of the paper body is attached only to a portion of the mouthpiece, and the portion of the mouthpiece is attached only to the first portion of the paper body.
Regarding claim 45, modified Reinisch teaches that the outermost circumferential paper layer is a first portion of an outermost layer of the smokable item from the paper body first end to the paper body second end, and the mouthpiece outermost circumferential surface is a second portion of the outermost layer of the smokable item from the edible material first end to the edible material intermediate location (see annotated Fig. 1, above).
Regarding claims 46 and 47, Reinisch teaches a smokable item (Fig. 1) comprising:
an arrangement of coaxial layers ( A and B), the coaxial layers comprising an outer layer (A) and an inner layer (B), the outer layer comprised entirely of paper (col. 1, lines 13-16),
the outer layer including an outer layer first far end and an outer layer second far end opposite the outer layer first far end, and the inner layer including an inner layer first far end and an inner layer second far end opposite the inner layer first far end, the outer layer first far end aligned at a first intermediate location on the inner layer between the inner layer first far end and the inner layer second far end, and the inner layer second far end aligned at a second intermediate location on the outer layer between the outer layer first far end and the outer layer second far end (see annotated Fig. 1, below),
the outer layer and the inner layer overlapping, in physical contact and bonded directly to one another between the first intermediate location and the second intermediate location (col. 1, lines 23-24 through col. 2, lines 1-2).
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Reinisch does not expressly teach that the inner layer is comprised entirely of a 100% edible material.
Lollipipe teaches a smokable assembly comprised entirely of 100% edible material, which includes a mouthpiece, or inner layer, comprised entirely of a 100% edible material (under "What is Lollipipe Candy?"), the mouthpiece, or inner layer, including an edible inner passageway defined by edible material inner passageway sidewalls comprised entirely of 100% edible material and extending from the mouthpiece, or inner layer, first end to the mouthpiece, or inner layer, second end (the inner passageway through the "fully functional smoking pipe"). It would have been obvious for one of ordinary skill in the art at the time of the invention to have substituted the entirely edible hard candy material of Lollipipe for the goose-quill material of the mouthpiece of Reinisch, with a reasonable expectation of success and predictable results, namely to replace a tasteless mouthpiece with a tasty, 100% edible, disposable and fully functional mouthpiece (under "What is Lollipipe Candy?" and "Does the Lollipipe really work?") for an enhanced experience for the user.
Regarding the limitation, “wherein in use, the outer layer second far end is combusted to create smoke, upon a user inhaling from the inner layer first far end, passes through the inner passageway and contacts the 100% edible material that comprise the passageway sidewalls,” this limitation is an intended use of the smokable item. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the 100% edible passageway sidewalls are capable of being contacted by the smoke from the combustible outer layer second far end when a user inhales on the inner layer first end and the combustible outer layer second far end is combusted, the claimed smokable item is not differentiated from the prior art.
Regarding claim 48, regarding the limitation, “wherein a portion of the inner layer between the inner layer first far end and the first intermediate location is adapted to be broken off from the mouthpiece body and ingested by the user,” this limitation is an intended use of the mouthpiece. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the hard candy mouthpiece is capable of being broken and ingested, the claimed mouthpiece is not differentiated from the prior art.
Regarding claim 49, modified Reinisch teaches that the edible materials include hard candy (Lollipipe, line 1).
Regarding claims 50 and 51, modified Reinisch teaches that the outer layer is attached only to the inner layer and wherein the inner layer is attached only to the outer layer (see annotated Fig. 1, above).
Regarding claim 52, modified Reinisch teaches that the outer layer is a first portion of an outermost layer of the smokable item from the outer layer first far end to the outer layer second far end, and the inner layer is a second portion of the outermost layer of the smokable item from the inner layer first end to the first intermediate location (see annotated Fig. 1, above).
Regarding claims 53 and 54, modified Reinisch teaches that the combustible elongate member (C), including its combustible outermost circumferential layer (A), is attached only to the mouthpiece (B) and that the mouthpiece (B) is attached only to the combustible elongate member (C and A).
Regarding claim 55, modified Reinisch teaches that the combustible outermost circumferential layer is a first portion of an outermost layer of the smokable assembly from the member first end to the member second end, and the mouthpiece outermost circumferential surface is a second portion of the outermost layer of the smokable assembly from the mouthpiece first end to the member first end (see annotated Fig. 1, below).
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 726946 (Kraus) teaches a smokable assembly with a further exterior wrapper (11).
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
/YANA B KRINKER/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755