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 amendments filed 8/26/2025 are acknowledged. Claims 140-155 are pending.
Response to Arguments
Arguments filed 8/26/2025 have been considered.
New claims are addressed below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
Claims 140-155 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification does not enable a person having ordinary skill in the art to make or use a “non-invertible” housing. The specification does not provide a special definition for “non-invertible”. Thus, the claim interpretation is using the general meaning that the housing cannot be turned, flipped, or rotated upside down. This is consistent with the examples in the specification of an “invertible” lid where the lid is taken off the housing and flipped over and reattached to go from a non-dispensing to dispensing arrangement (at least para [0062]).
Para [0111] and figures 14-16 describe a non-invertible scent dispenser. While these scent dispensers seem to go from on to off in a different manner than the invertible lid mechanism disclosed elsewhere, there is no description of making a housing not invertible or what makes it not invertible. In general, any housing with at least enough effort, especially a housing for a personal, portable diffuser (para [0008]), can be flipped on its top. It is not discernable how one would make a scent dispenser housing that was not invertible or not able to be turned upside down especially while being portable.
In making the determination of a lack of enablement the following Wands factors are considered:
(A) The breadth of the claims
The claims are rather broad. The “non invertible” housing is only limited in that it has two apertures one on each of two opposing sides. The added limitations do not appear to have any relation to a structure that makes the housing non invertible.
(B) The nature of the invention
The invention is a personal, portable scent diffuser (para [0008]). Describing the invention as a personal, portable scent diffuser further makes it unclear how the housing is not invertible as it is presumably relatively small and light.
(C) The state of the prior art
The prior art as a whole does not contain teachings as to what would make a housing incapable of being inverted. Thus, a person of ordinary skill in the art would not have general knowledge that would help them make or use the claimed invention.
(D) The level of one of ordinary skill
The level of ordinary skill in the art is varied. A person of ordinary skill in the art would have some background in design.
(E) The level of predictability in the art
The art is rather predictable as it relies on well understood mechanics and physics.
(F) The amount of direction provided by the inventor
The inventor provides no direction as to what makes a housing non-invertible or how to make a housing not invertible. Examples are given of diffusers with housings but they are portable, personal use diffusers with no indication that they have housings could not be inverted or turned upside down.
(G) The existence of working examples
Examples are given of diffusers with housings but they are portable, personal use diffusers with no indication that they have housings could not be inverted or turned upside down. The specification states they are non-invertible, but it is unclear how or why.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
The quantity of experimentation would be massive as there is no guidance as to what even makes the housing non invertible. A person having ordinary skill in the art would be left with a completely blank slate to try and figure out how to make a housing that cannot be flipped upside down. It is not even clear it can be even done.
Balancing the Wands factors, a person having ordinary skill in the art would not be able to make or use the invention without undue experimentation. There is no guidance or clear working examples of how to do it. The specification even seems contradictory as the diffusers are also described as portable. Additionally, the claims are broad and the prior art provides no background guidance. Very little contracts this to weigh in favor of enablement.
Dependent claims are rejected for the same reasons as the claims from which they depend.
Claims 140-155 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 140 recites “a non-invertible housing”. The specification does not describe a non-invertible housing. The specification only describes an invertible lid 12 which is separate from housing/container 14 (para [0062]) and a non-invertible diffuser (para [0111]). There is no description of a non-invertible housing.
Dependent claims are rejected for the same reasons as the claims from which they depend.
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 140-155 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.
With regards to claim 140, it is not clear what structure is required to make a housing “non-invertible”. A housing, especially one for a personal, portable diffuser, is generally capable of being turned upside down if one so desired. The specification does not provide any guidance as to what features need to be present to make a housing “non-invertible”. Thus, it is unclear what is necessary to read on the claims.
Dependent claims are rejected for the same reasons as the claims from which they depend.
Prior Art
Given the 112 issues as discussed above, it is not possible to evaluate the claims for prior art as any rejection would be purely speculative at best.
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 DONALD R SPAMER whose telephone number is (571)272-3197. The examiner can normally be reached Monday to Friday from 9-5.
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/DONALD R SPAMER/Primary Examiner, Art Unit 1799