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 .
Claim Rejections – 35 U.S.C. § 112
The following is a quotation 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.
Claim 20-23 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.
Claim 20 recites the limitation “wherein one cleaning head is a spring”. When considered together with amended claim 15, which recites first and second cleaning heads that are “arranged back-to-back with each other and are detachable from each other, and wherein one cleaning head is T-shaped...”, the application as filed does not describe the configuration of claim 20. That is, claim 20 requires one of the two cleaning heads to be a spring, yet also be detachable from the T-shaped cleaning head recited in claim 15; the specification does not describe a device with two back-to-back cleaning heads (spring and T-shaped), where the spring cleaning head is detachable from the T-shaped cleaning head (see Spec. Figs. 7-9). The detachable aspect pertaining to the embodiment shown in Spec. Figs. 7-9 relates to the detachability of the cleaning assembly having the spring and T-shaped cleaning heads (50/60/70) from a third cleaning head 22—not the detachability of the spring head 70 from the T-shaped head 50. Claims 21-23 are rejected on the basis they incorporate claim 20.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
Patton in view of Slade
Claims 15-16, 19-23, and 26-27 are rejected under 35 U.S.C. § 103 as being unpatentable over US 3853132 A (“Patton”) in view of US 5209248 A (“Slade”).
Patton pertains to a cleaning tool for a smoking device (Abstr.; Figs. 1-8). Slade pertains to a cleaning tool for a smoking pipe (Abstr.; Figs. 1-7). These references are in the same field of endeavor.
Regarding claim 15, Patton discloses a cleaning device for an aerosol-generating device (Figs. 1-8, tool 10 is capable of cleaning an aerosol-generating device; Examiner notes that this limitation includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)), comprising,
a cleaning tool (Figs. 1-8, tool 10),
wherein the cleaning tool comprises a first cleaning head and a second cleaning head, wherein the first cleaning head and the second cleaning head are arranged back-to-back with each other and are detachable from each other (Figs. 1-8, tool 10 has first cleaning head 26 and second cleaning head 16, which are arranged back to back with and detachable from each other).
Patton does not explicitly disclose:
wherein one cleaning head is T-shaped and comprises an elongate element with a transversal element mounted to one end of the elongate element, wherein the transversal element comprises an outer edge facing away from the cleaning tool and an inner edge opposite to the outer edge and facing towards the elongate element of the cleaning tool, and wherein at least one of the inner edge, or the outer edge and the inner edge, of the transversal element are configured to form a scraping surface to clean the aerosol-generating device.
However, the Patton/Slade combination makes obvious this claim.
Slade discloses:
wherein one cleaning head is T-shaped and comprises an elongate element with a transversal element mounted to one end of the elongate element, wherein the transversal element comprises an outer edge facing away from the cleaning tool and an inner edge opposite to the outer edge and facing towards the elongate element of the cleaning tool, and wherein at least one of the inner edge, or the outer edge and the inner edge, of the transversal element are configured to form a scraping surface to clean the aerosol-generating device (Figs. 1-4, the cleaning head 42/43 is T-shaped (as viewed in Fig. 4) and has an elongate element 42 and a transversal element 43 mounted to one end of the elongate element 42, with an outer edge facing away from the cleaning tool (Fig. 4, upper side of element 43) and an opposite inner edge facing the cleaning tool (Fig. 4, lower side of element 43), where the inner edge is capable of being a scraping surface to clean an aerosol-generating device; Examiner notes that under the broadest reasonable interpretation in light of the specification, the term “T-shaped” is very broad and include shapes that have a “T” appearance, but is not necessarily limited to an upper case “T” (e.g., a lower-case “t”) nor any particular font or type representing the letter “T”; Examiner notes that this limitation includes a recitation of intended use (“to clean an aerosol-generating device”). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Slade with Patton by modifying the cleaning head 16 of Patton to have the “T-shaped” design as taught by Slade (i.e., modifying cleaning head 16 of Patton to have the elongate element 42 and transversal element 43 of Slade). This would have been obvious because Patton contemplates various combinations of various tools for smoking devices to be incorporated into a single multi-tool device (Patton 1:32-2:19), and this modification of a cleaning head into a T-shaped cleaning tool as taught by Slade is a case of simple substitution, where the result and its cleaning function would be predictable based on Slade and the knowledge of a person of ordinary skill in the art as to how tobacco/smoking cleaning tools work.
Regarding claim 16, the Patton/Slade combination makes obvious the cleaning device of claim 15 as applied above. Patton further discloses wherein the cleaning tool is elongate and the cleaning heads are provided at either end of the elongate cleaning tool (Figs. 1-8, elongate cleaning tool 10 with heads 16 and 26 at either end).
Regarding claim 19, the Patton/Slade combination makes obvious the cleaning device of claim 15 as applied above. Patton further discloses wherein the elongate element comprises a cylindrical element configured to prevent inadvertent use of the cleaning tool (Figs. 1-8, cylindrical element (at reference 26) is capable of preventing inadvertent use of the cleaning tool (e.g., improperly inserting into a smaller opening of a smoking device).
Regarding claim 20, the Patton/Slade combination makes obvious the cleaning device of claim 15 as applied above. Slade further discloses wherein one cleaning head is a spring (Figs. 1, 5-7, cleaning head has spring 56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Slade with Patton by further modifying the Patton/Slade cleaning device to use a compression-spring type cleaning head in place of cleaning head 26. This would have been obvious because this “springy construction, vibrates sufficiently to remove the ash from all parts of the [smoking device], but not being a hardened or a sharp structure, does not score or damage [the smoking device]” (Slade 6:37-41). Further, this would have been obvious because Patton contemplates various combinations of various tools for smoking devices to be incorporated into a single multi-tool device (Patton 1:32-2:19), and this modification of a cleaning head into a spring type cleaning tool as taught by Slade is a case of simple substitution, where the result and its cleaning function would be predictable based on Slade and the knowledge of a person of ordinary skill in the art as to how tobacco/smoking cleaning tools work.
Regarding claim 21, the Patton/Slade combination makes obvious the cleaning device of claim 20 as applied above. Slade further discloses wherein the spring is a traction spring, or a compression spring or a combination of both traction and compression springs (Figs. 1, 5-7, compression spring 56; 5:36-51).
The obviousness rationale for claim 21 is the same as for claim 20.
Regarding claim 22, the Patton/Slade combination makes obvious the cleaning device of claim 20 as applied above. Slade further discloses wherein the spring is a metallic spiral having an end configured as a scraping surface (Figs. 1, 5-7; 6:37-41, spring 56 is a metallic spiral with an end that is capable of being a scraping surface).
The obviousness rationale for claim 22 is the same as for claim 20.
Regarding claim 23, the Patton/Slade combination makes obvious the cleaning device of claim 20 as applied above. Patton further discloses wherein the cleaning tool further comprises a third cleaning head, wherein the third cleaning head has an elongate, substantially cylindrical body with a central passing hole, the central passing hole being dimensioned to accommodate the spring cleaning head (Figs. 1-8; 3:60-65, 4:21-40, third cleaning head 26 has an elongate, cylindrical body with central hole 34 to accommodate the second cleaning head 17; see discussion below re “spring cleaning head”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Slade with Patton by modifying the first cleaning head 16 to be a T-shaped head (as discussed in claim 15) and modifying the second cleaning head 17 to be a spring type head. The obviousness rationale for these modifications is the same as that discussed in claims 15 and 20, except the second cleaning head 17 and not cleaning head 26 is modified to a spring type head). With the proposed modifications, the limitations of claim 23 are met.
Examiner notes that as modified, the spring type cleaning head (located at Patton reference 17) would be arranged back to back with and detachable from the T-shaped cleaning head (located at Patton reference 16). As taught by Slade, the spring type cleaning head is detachable from the motor of the cleaning tool (Slade Figs. 1, 5-7). To the extent this detachability is not explicitly disclosed by Slade, this would have been obvious because it would also allow for easy replacement of the relatively fragile spring type cleaning head without also having to replace the more robust T-shaped cleaning head. Examiner notes that Applicant states no novel or unexpected result due to making the two cleaning heads detachable from each other. In re Dulberg, 289 F.2d 522, 523 (CCPA 1961) (“If it were considered desirable for any reason to obtain access to the end of Peterson’s holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”); MPEP § 2144.04(V)(C).
Regarding claim 26, the Patton/Slade combination makes obvious the cleaning device of claim 15 as applied above. Patton further discloses a housing comprising two caps, wherein each cap is configured to house one cleaning head (Figs. 1-8, housing comprising caps 11 and 12).
Regarding claim 27, the Patton/Slade combination makes obvious the cleaning device of claim 26 as applied above. Patton further discloses wherein the cap that houses one cleaning head forms a handle for operating the tool when the other cleaning head is used (Fig. 1-8; caps 11 and 12 are capable of the recited function (Figs. 4-5)).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-14 and 17-18 have been canceled. Claims 15-16 and 19-27 are pending. Claims 24-25 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 15-16, 19-23, and 26-27 are rejected.
Response to Arguments
Applicant’s arguments with respect to claim 15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments. Applicant does not present any further arguments concerning the remaining claims.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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