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
This office action is in response to Applicant’s amendment filed on 17 October 2025:
Claims 1, 4-5, 7-9 and 12-21 are pending
Claims 13-20 are withdrawn
Claims 1, 5, 7-8, 12 are amended
Claims 2-3, 6, 10-11 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 17 October 2025 have been acknowledged. The objection to Claim 5 is withdrawn due to amendment of the claim.
Response to Arguments
Applicant's arguments filed 17 October 2025 have been fully considered but they are not persuasive.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that Poppendieck discloses vials that only contains cigarette butts. Examiner disagrees, noting that Figure 2.6 shows an unburned cigarette tobacco portion contained within vial 2 (see Poppendieck, Page 15). The unburned cigarette tobacco portion is considered equivalent to a smokable article and therefore, the vial disclosed by Poppendieck is considered to read upon the limitations for a re-sealable tube for holding a smokable article as recited in amended Claim 1.
Applicant’s arguments, filed 17 October 2025, with respect to the rejection(s) of Claims 1 and 12 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended Claim 1 to further recite “a liner containing a flavor substance…the liner positioned along the inner cylinder…wherein the liner is colored to indicate a particular flavor corresponding to the flavor substance.” Applicant argues that previously presented prior art in any combination does not disclose a liner as recited in the amended claims, which the Examiner agrees with. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of White et al (Publication No. US20170172200A1).
The following is a modified rejection based on amendments to the claims and the newly found prior art.
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.
Claim 7 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 7 recites “said flavor substance is at least one of sweet grape, divine chocolate, bold cherry, smooth mint, fuzzy peach, or rich honey” which are considered indefinite because it is unclear if the terms are referring to trademarks, tradenames, an actual flavor substance in the art or merely descriptive. Though Applicant’s Specification discloses these terms to be examples of flavors, the Specification does not explain or describe what these flavors are or what they are derived from.
For example, the term “Divine Chocolate” could refer to the brand of chocolate, where the term could be interpreted as a flavor substance that is same as the chocolate sold by the Divine Chocolate brand. Additionally, the term “sweet grape” could be directed to an actual flavor substance that is called “sweet grape” or a flavor that is similar in taste to a sweet grape.
Therefore, the amended limitation is considered indefinite. For examination purposes, the flavor substances being at least one of sweet grape, divine chocolate, bold cherry, smooth mint, fuzzy peach, or rich honey are interpreted as any substance that imparts grape, chocolate, cherry, mint, peach, or honey flavors.
For examination purposes, term “divine chocolate” will be interpreted as “chocolate”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Poppendieck, NIST Internal Final Report NIST.IR.8256 (see attached copy) in view of White et al (Publication No. US20170172200A1).
Regarding Claim 1, Poppendieck, discloses headspace vials (i.e., re-sealable tube) defining an inner cylinder (see Fig. 2.6; cap is shown to be threaded which implies the vial/tube is re-sealable; the vial’s inner space is shown to be cylindrical in shape);
the tube/vial is configured to hold tobacco from a cut cigarette (i.e., smokable article) (see Fig. 2.6; Pg. 14, Section 2.3; Vial 2 shows tobacco from a cigarette being contained within said vial; the unburned cigarette tobacco portion in Vial 2 is considered to be equivalent to a smokable article).
Poppendieck does not explicitly disclose the following:
a liner containing a flavor substance configured to be diffusible, the liner positioned along the inner cylinder of the re-sealable tube;
wherein the liner is colored to indicate a particular flavor corresponding to the flavor substance.
Regarding (I), White, directed to a flavor additive insert accessory associated with a package containing tobacco product, discloses the insert comprises a carrier (i.e., liner) configured to contain a diffusible flavor material (i.e., flavor substance) ([0011, 0027]; discloses the carrier can carry a flavor material that is volatile and thus, will diffuse out of the carrier). The carrier/liner is configured to be inserted into a package containing tobacco material such that the flavor material can be incorporated into the tobacco product (i.e., smokable material) [Abstract, 0021, 0028].
Though White does not explicitly disclose the package holding the tobacco product (i.e., smokable material) is a re-sealable tube, White does disclose a cylindrical tin with an inner cylindrical-shaped space, wherein said tin is illustrated to have a lid, implying that the tin package is a re-sealable container (see annotated Fig. 5; [0028]; the insert with the carrier/liner is shown to be disposed along the inner cylinder space of the tin).
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Since Poppendieck also discloses a cylindrical-shaped container (i.e., tube) for holding a smokable material (i.e., tobacco from a cigarette) that is re-sealable, one ordinarily skilled in the art could reasonably expect that the insert disclosed by White could be inserted into another similar re-sealable cylindrical container for holding tobacco such as the tube disclosed by Poppendieck to predictably result in the container holding an insert to diffuse and incorporate a volatile flavor material into a smokable material (i.e., tobacco) within said container.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the re-sealable tube containing tobacco disclosed by Poppendieck to further comprise an insert comprising a carrier/liner containing diffusible flavoring material as disclosed by White, as both are directed to a container for holding tobacco, where this applies a known teaching of incorporating a flavor material using an insert carrier/liner as disclosed by White, to a similar cylindrical-shaped container apparatus for holding tobacco as disclosed by Poppendieck, to predictably result in a cylindrical-shaped tube container comprising smokable material (i.e., tobacco) and flavor insert that can incorporate/diffuse a flavor material into said smokable material.
Regarding (II), White further discloses that the flavor insert can be marked by indicia such as a distinctive color to identify the flavor and flavor strength so that the purchaser/user can select the flavor additive that fits their needs [0030-0031]. Though White does not explicitly disclose the color indicia is applied to the liner (i.e., carrier), it should be noted that White broadly states that the insert is marked. Since the insert comprises the liner/carrier, one ordinarily skilled in the art could reasonably broadly interpret White’s disclosure about marking the insert with color to be marking the carrier component of the insert.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the re-sealable tube containing tobacco disclosed by Poppendieck to further comprise an insert comprising a color-marked carrier/liner containing diffusible flavoring material as disclosed by White, as both are directed to a container for holding tobacco, where White teaches the advantage of using an insert carrier/liner for incorporating a volatile flavor material into a smokable article, wherein marking the insert (i.e., its liner) with a color has the further advantage of allowing the user/purchase to select the flavor additive that suits their need [0030-0031]; this also involves applying a known teaching of incorporating a flavor material using an insert carrier/liner as disclosed by White, to a similar cylindrical-shaped container apparatus for holding tobacco as disclosed by Poppendieck, to predictably result in a cylindrical-shaped tube container comprising smokable material (i.e., tobacco) and flavor insert that can incorporate/diffuse a flavor material into said smokable material.
Regarding Claim 4, Poppendieck further discloses the smokable article comprises cigarettes and tobacco (see Fig. 2.6; Pg. 14, Section 2.3; Vial 2 shows tobacco from a cigarette being contained within said vial; the cigarette and tobacco is unburned and therefore considered equivalent to a smokable article).
Regarding Claim 5, White further discloses the insert carrier (i.e., liner) comprises paper [0010].
Regarding Claim 7, White further discloses the flavor substance in the carrier/liner can be chocolate [0040].
Regarding Claim 8, Poppendieck further discloses the re-sealable tube further comprises a removable cap (see Fig. 2.6; Pgs. 14-15, Section 2.3; vials are shown to have a screw-cap, which implies that the vial is sealable/re-sealable).
Regarding Claim 9, Poppendieck further discloses the removable cap is threadedly coupled to said re-sealable tube for sealing (see Fig. 2.6; Pgs. 14-15, Section 2.3; the caps on the vials are shown to have threading which indicates that said cap is threadedly coupled to the tube).
Regarding Claim 21, Poppendieck further discloses the resealable tube with a screw-cap (see Fig. 2.6). Poppendieck does not explicitly disclose the re-sealable tube comprises one or more holes positioned on the tube, the one or more holes configured to provide ventilation to the re-sealable tube.
However, it should be noted that one ordinarily skilled in the art would understand that the purpose of a cap is to seal or close off an opening (i.e., hole) positioned on the top of the tube where the cap is installed. And since Poppendieck discloses a cap on the re-sealable tube, the tube comprising an opening/hole is implied.
It is further noted that while Poppendieck does not explicitly discloses the opening/hole is configured to provide ventilation to the re-sealable tube, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary (see MPEP § 2112.01.I).
In this case, the vial disclosed by Poppendieck discloses all the structural features recited in the claims, being that the apparatus is a tube/vial, wherein the tube has an opening/hole and is re-sealable (via the removable cap). Since the vial disclosed by Poppendieck discloses all the structural features of the claimed apparatus, one ordinarily skilled in the art would reasonably expect that said apparatus will be able to provide ventilation via the tube/vial’s opening hole.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sinclair Jr. (Publication No. US10092031B1) in view of White et al (Publication No. US20170172200A1).
Regarding Claim 12, Sinclair Jr. discloses an apparatus comprising a plastic package (11) with a resealable closure (12) (i.e., resealable container) that holds a cigar (i.e., smokable article) (Fig. 6; Col. 6, Lines 51-57). Sinclair Jr. does not explicitly disclose the following:
the resealable container comprises a flavor container;
wherein the flavor container is a bag configured to hold a composition containing a flavor configured to be diffusible;
and wherein the flavoring composition is colored to indicate a particular flavor corresponding to the flavor substance.
Regarding (I-II), White, directed to a flavor additive insert accessory associated with a package containing tobacco product, discloses the insert pouch (i.e., bag) holding a carrier containing a diffusible flavor material (i.e., flavor composition) ([0011, 0027-0028]; discloses the carrier can carry a flavor material that is volatile and thus, will diffuse out of the carrier). The carrier/liner is configured to be inserted into a package containing tobacco material such that the flavor material can be incorporated into the tobacco product (i.e., smokable material) [Abstract, 0021, 0028].
Though White does not explicitly disclose the package holding the tobacco product (i.e., smokable material) is a re-sealable container, White does disclose a tin container, wherein said tin is illustrated to have a lid, implying that the tin container is a re-sealable container (see annotated Fig. 5; [0028]; the insert with the carrier/liner is shown to be disposed along the inner cylinder space of the tin).
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Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the re-sealable container (i.e., bag) containing tobacco disclosed by Sinclair to further comprise an insert comprising a flavor composition (i.e., carrier with flavor material) as disclosed by White, as both are directed to a container for holding tobacco, where this applies a known teaching of incorporating a flavor material using an insert carrier/liner as disclosed by White, to a similar re-sealable tobacco-holding container apparatus for holding tobacco as disclosed by Sinclair, to predictably result in a container comprising smokable material (i.e., tobacco) and flavor composition that can incorporate/diffuse a flavor material into said smokable material.
Regarding (III), White further discloses that the flavor insert can be marked by indicia such as a distinctive color to identify the flavor and flavor strength so that the purchaser/user can select the flavor additive that fits their needs [0030-0031].
Though White does not explicitly disclose the color indicia is applied to the flavor composition (i.e., carrier with flavor material), it should be noted that White broadly states that the insert is marked. Since the insert comprises the liner/carrier, one ordinarily skilled in the art could reasonably broadly interpret White’s disclosure about marking the insert with color to be marking the carrier component of the insert.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the re-sealable container containing tobacco disclosed by Sinclair to further comprise an insert/flavor container comprising a color-marked flavor composition (i.e., carrier with flavor material) as disclosed by White, as both are directed to a re-sealable container for holding tobacco, where White teaches the advantage of using an insert/flavor container for incorporating a volatile flavor material into a smokable article, wherein marking the insert flavor container (i.e., its flavor composition) with a color has the further advantage of allowing the user/purchase to select the flavor additive that suits their need [0030-0031]; this also involves applying a known teaching of incorporating a flavor material using a flavor container (i.e., insert) as disclosed by White, to a similar re-sealable container apparatus for holding tobacco as disclosed by Sinclair, to predictably result in a container comprising smokable material (i.e., tobacco) and flavor insert/container that can incorporate/diffuse a flavor material into said smokable material.
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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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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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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755