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 .
Election/Restrictions
Newly submitted claims 30-35 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The distal end having an outer diameter that is larger than the outer diameter of the proximal end is a newly claimed species and is distinct from the species already examined (original claims 11 and 12), where the distal end had an outer diameter that was less than or equal to the outer diameter at the proximal end.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 33-35 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Please note: the specification does not appear to have support for an embodiment where the distal end outer diameter is larger than the proximal end’s outer diameter.
Response to Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive.
The applicant’s arguments concern claim amendments that are addressed in the rejections below.
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 25 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 25 includes the limitation, “wherein the second portion has a diameter that is larger than the diameter of the first portion and smaller than the diameter of the first portion.” It is unclear as to whether the diameter of the second portion is larger or smaller than the first portion’s diameter. As currently claimed, the diameter (claimed as “a diameter”, not plural diameters) cannot be both larger and smaller when related to another fixed diameter. The meets and bounds of the claim cannot be determined and therefore the claim cannot be examined.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 10, 15, 23, 24, 26, and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson (US 683,625).
Regarding claims 1 and 15, Thompson discloses a device that is a tube having a proximal (see figure 1 below, near element 6) and distal end (mouthpiece, i.e. configured to be inserted into a mouth) spaced apart along a central axis. The proximal opening is larger in diameter than the distal opening and tapers toward the more narrow distal opening (first portion is closer to the proximal opening than the distal opening and has a diameter that is less than the proximal opening but greater than the distal opening). A lumen extends from the distal to the proximal opening.
Thompson does not teach that the tube is used or configured to roll a smoking tube. In this case, configured to does not add any additional structural elements and is instead the intended use of the tube. The steps and parameters for the process for using the tube do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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Regarding claim 10, the proximal end of the tube of Thompson receives a filter (8) that is “firmly secured or removably attached” with, “the principal features being to afford means whereby the nicotine from the cigar or the moisture from the mouth will be arrested at a point between the inlet of the tube and the mouth, so as to prevent injury from suction…”.
Regarding claim 15, the inner diameter of a first portion (closer to the proximal opening) that is less than the proximal opening diameter and greater than or equal to the diameter of the distal opening as illustrated.
Regarding claim 23, the inner diameter of between the first portion and the distal opening is illustrated as a uniform diameter.
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Regarding claim 24, the inner diameter of Thompson tapers from the proximal end to a first portion that is close to the proximal opening and ends before the second portion.
Regarding claim 26, Thompson discloses a tube with a proximal end (see figure 3 above, element 15), and a distal end (opposite element 15). The proximal end has one or more openings (16, see also page 1, line 64-83).
Regarding claim 29, the outer diameter of the device at the proximal end (near element 15) is larger than an outer diameter at the distal end.
Claim(s) 1, 3, 8, 9, 10, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaljura et al. (US 20200221762).
Regarding claims 1, 3, and 8, Kaljura et al. disclose a paper or plastic tube ([0010], figure 1a, element 2), the inner diameter of the distal opening (as shown) with a lumen that extends from the distal opening to the proximal opening with each opening having an outer diameter and an inner diameter. The tube of Kaljura et al. acts as a mouthpiece and can be between 3 to about 25 mm long (0.11811 to 0.98 [0049]). Please note that “about 0.98 inches (25 mm) is considered to be about 1 inch and anticipates the length of at least 1 inch).
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Kaljura et al. do not teach that the tube is used or configured to roll a smoking tube. In this case, configured to does not add any additional structural elements and is instead the intended use of the tube. The steps and parameters for the process for using the tube do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 9, Kaljura et al. disclose that the distal (i.e. mouth end) of the tube has an inner diameter labeled “B” and is disclosed as being 3-5 mm or more about 3 to 4 mm [0048]. This encompasses the claimed “at least 0.157 inches” (i.e. 3.9878 mm) and results in openings that are at least this size (e.g. 4 mm).
Regarding claim 10, the tube of Kaljura et al. includes an orifice and is capable of acting as a receptacle for a filter. In particular, the tube is shown receiving a filter (see figure 2).
Regarding claims 15, the outer diameter of the respective ends is disclosed as being equal (see figure 1a), smaller at one end (figure 1b), and larger at one end (figure 2). The inner diameter is also shown as being greater (1a) or the same (1b) at either end. As illustrated, the opening at the proximal (cigarette) end is larger than
Claim(s) 26, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by David (US 3,389,705).
Regarding claim 26, David discloses a tube (see figure 4, element 21) with a proximal and distal end spaced apart along a central axis and the proximal end has an end wall with a plurality of holes (5 identical holes all labeled (33) as shown in figure 6). A lumen extends from the distal opening to the proximal opening along the central axis such that the distal opening and the at least one proximal opening have an outer diameter and an inner diameter.
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David et al. do not teach that the tube is used or configured to roll a smoking tube. In this case, configured to does not add any additional structural elements and is instead the intended use of the tube. The steps and parameters for the process for using the tube do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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 though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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.
Claim(s) 27 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 683,625) as applied to claim 26 above.
Regarding claim 27, Thompson discloses that “one or more lateral openings 16” (page 1, 68-70). Two openings are illustrated in figure 3 (see above). It would have been obvious to one of ordinary skill in the art at the time of invention to use an appropriate number of holes to achieve the stated purpose of Thompson, specifically to prevent any moisture that accumulates, “must remain there and cannot pass down through the ducts 16 into the smoker’s mouth.” (page 1, 73-83). It would have been obvious that more smaller holes, such as 4 holes, would be less likely to allow water or accumulated moisture into the tube.
Regarding claim 28, Thompson illustrate and disclose that the tube is closed except for the designated openings.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 683,625) as applied to claim 1 above and in further view of Fassbender (US 3,289,678).
Regarding claims 5 and 6, Thompson does not disclose vent holes that pass through into the tube to allow airflow. However, Fassbender discloses a similar cigar holder that has an adjustable set of holes that allow airflow into the center tube (see figure 3, element 10a and 12, below).
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It would have been obvious to one of ordinary skill in the art at the time of invention/filing to incorporate the holes of Fassbender into the invention of Thompson to allow users to regulate the temperature of the smoke by admitting air into the smoke passage as taught by Fassbender (col. 1, 14-19).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 683,625) and Fassbender (US 3,289,678) as applied to claim 5 above and in further view of Roberts et al. (US 4,949,736).
Regarding claim 7, Thompson in view of Fasbender indicate the advantage of providing ventilation to cigar holders and controlling air flow. However, alternative to controlling air flow exist. Roberts et al. disclose ventialation for smoking articles that uses slits to provide variable ventilation that admit ambient air to the mouthpiece (see abstract and col. 4, 4-19). One of ordinary skill in the art at the time of inventon/filing would use the slit based system of Roberts et al. in the invention of Thompson to provide automatically increasing amounts of ventilation with stronger inhalation as described. Using slits inplace of the control system of Fassbender, would allow automatic ventilation adjustment in place of the manual adjustment disclosed by Fassbender.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
