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 amendments filed 08/15/2025.
Claims 1-6 and 8-11 are pending and are subject to this Office Action.
Claims 1-6, 8 and 10-11 are amended.
Claim 7 is cancelled.
Response to Amendments
The Examiner withdraws the 112 rejections of claims 3 and 6 as being indefinite due to amendments to the claims filed 08/15/2025.
The Examiner withdraws the double patenting rejections of claim 1 over claims 1 and 9 of copending Application No. 17/802,337, claims 1 and 9 of copending Application No. 17/918,352, claim 1 of copending Application No. 18/008,525, claims 1 and 5 of copending Application No. 18/008,824, claim 1 of copending Application No. 18/009,021 and claims 1 and 10 of copending Application No. 18/273,157 in view of Gidding et al. (US 20070283971 A1), due to amendments to the claims filed 08/15/2025. The copending applications do not claim that a protruding portion of the high voltage electrode has a brush shape as required by amended claim 1.
Response to Arguments
Applicant’s arguments, see pages 5-8, filed 08/15/2025, with respect to claim 1 have been fully considered and they are persuasive. Prior art of record Gidding does not teach that the filter is protruding from the article inserting part during operation or that a protruding portion of the high voltage electrode has a brush shape, as required by amended claim 1. Thus, the 102 rejection of claim 1 has been withdrawn. However, upon further consideration, an obviousness rejection has been made in view of Tomiyasu et al. (JP 2001086972 A) and Ohe et al. (US 20220021191 A1).
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 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Gidding et al. (US 20070283971 A1) in view of Tomiyasu et al. (JP 2001086972 A; hereinafter referring to the English translation provided) and Ohe et al. (US 20220021191 A1).
Regarding claim 1, Gidding teaches a sidestream smoke removing device (device 1; Fig. 1; [0074]; Abstract) comprising:
a housing (housing 2; [0074]) having a smoking space (compartment 7; [0076]) defined therein;
an article inserting part (filling flap 6; [0076]) positioned on one end of the housing and having an open area through which a smoking article is inserted into the smoking space ([0076]);
and a sidestream smoke processing part (upright part 4; [0075]) positioned at a distance from an upstream end of the smoking article inserted into the smoking space (Fig. 1) and configured to process sidestream smoke produced from the smoking article ([0091]);
wherein the sidestream smoke processing part comprises:
a plasma ion filter (filter 28/ion filter 76; [0085-0086]) configured to generate plasma ions using a high voltage electrode ([0044], [0106]);
and a ventilation fan (fan 20; [0091]) configured to allow the sidestream smoke to be discharged through the plasma ion filter ([0091]).
Gidding does not explicitly teach (I) that the filter protruding from the article inserting part during operation or (II) that a protruding portion of the high voltage electrode has a brush shape.
Regarding (I), Tomiyasu, directed to a sidestream smoke removing device comprising a housing (main body 2; page 4, ¶ 2) having a smoking space defined therein (internal space 2b; page 4, ¶ 2) and article inserting part (cylindrical insertion opening 22; page 4) positioned on one end of the housing and having an open area configured for a smoking article comprising a filter (cigarette S; page 4) to be inserted into the smoking space and a sidestream smoke processing part (filter 4; page 4, ¶ 4) configured to be spaced apart from an upstream end of the smoking article inserted into the smoking space and configured to process sidestream smoke produced from the smoking article (Abstract), depicts that the filter protrudes from the article inserting part during operation (Fig. 1).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by positioning the smoking article such that the filter prodrudes from the article inserting part during operation as taught by Tomiyasu because both Gidding and Tomiyasu are directed to sidestream smoke removing device configured for smoking articles, Tomiyasu teaches that it is known in the art to position a smoking article to protrude from a sidestream smoke removing device, one having ordinary skill in the art would recognize that this configuration would allow the smoking article to retain the same mouthpiece when in the device, and this involves substituting one alternative configuration of cigarette insertion for another to yield predictable results.
Regarding (II), Ohe, directed to sidestream smoke removing device (air purifier 100; [0092]) comprising a plasma ion filter (ion generation device 11, 101; [0020], [0093]) configured to generate plasma ions using a high voltage electrode (dicharge electrodes 5, 6; [0022]), and a ventilation fan (blowing device 102; [0093]) configured to allow the sidestream smoke to be discharged through the plasma ion filter, teaches that the electrode is a brush shape comprising a plurality of filaments connected at a base and separated at an end of the protruding portion ([0026]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by making the high voltage electrode a brush shape comprising a plurality of filaments connected at a base and separated at an end of the protruding portion as taught by Ohe because both Gidding and Ohe are directed to sidestream smoke removing devices comprising electrodes, Ohe teaches that a brush shape is a known configuration for an electrode, and this involves substituting one alternative configuration for an electrode for another to yield predictable results.
Claims 2-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gidding as applied to claim 1 above, and further in view of Endo (US 6506238 B1).
Regarding claim 2, Gidding does not further specify the plasma ion filter electrode configuration.
Endo, directed to a smoke processing part comprising a plasma ion filter (electric dust collecting unit; Fig. 6) configured to generate plasma ions using a high voltage electrode (col. 7, lines 14-49) and a ventilation fan (ventilating fan; col. 7, line 34) configured to allow the sidestream smoke to be discharged through the plasma ion filter, teaches the plasma ion filter in further detail. Specifically, Endo teaches that a high voltage electrode (needle electrode 8a) protrudes 1 mm to 10 mm with respect to a top surface of the plasma ion filter (col. 6, lines 6-8 teaches a protrusion of 5-20 mm. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by using the plasma ion filter configuration and electrode protrusion as taught by Endo because Gidding is silent to the constructional details of the plasma ion filter and one with ordinary skill would be motivated to look to prior art for a known and suitable plasma ion filter, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 3, Gidding does not further specify the plasma ion filter electrode configuration.
Endo, directed to a smoke processing part comprising a plasma ion filter (electric dust collecting unit; Fig. 6) configured to generate plasma ions using a high voltage electrode (col. 7, lines 14-49) and a ventilation fan (ventilating fan; col. 7, line 34) configured to allow the sidestream smoke to be discharged through the plasma ion filter, teaches the plasma ion filter in further detail. Specifically, Endo teaches multiple electrodes being spaced apart from each other 25 mm or longer (col. 6, lines 13-24 teaches multiple electrodes with spacing of 10-30 mm. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by using the plasma ion filter configuration and electrode spacing as taught by Endo because Gidding is silent to the constructional details of the plasma ion filter and one with ordinary skill would be motivated to look to prior art for a known and suitable plasma ion filter, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 4, Gidding does not further specify the plasma ion filter electrode configuration.
Endo, directed to a smoke processing part comprising a plasma ion filter (electric dust collecting unit; Fig. 6) configured to generate plasma ions using a high voltage electrode (col. 7, lines 14-49) and a ventilation fan (ventilating fan; col. 7, line 34) configured to allow the sidestream smoke to be discharged through the plasma ion filter, teaches the plasma ion filter in further detail. Specifically, Endo teaches that the high voltage electrode is spaced apart 50 mm or longer from a downstream end of the sidestream smoke removing part (col. 6, lines 61-63 teaches that the collection portion 9 is 30-60 mm, thus the high voltage electrode must be spaced at minimum 30-60 mm from a downstream end of the sidestream smoke removing part. See also Fig. 1. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by using the plasma ion filter configuration and electrode spacing such that the high voltage electrode is spaced apart 50 mm or longer from a downstream end of the sidestream smoke removing part, and thus also the sidestream smoke removing device, as taught by Endo because Gidding is silent to the constructional details of the plasma ion filter and one with ordinary skill would be motivated to look to prior art for a known and suitable plasma ion filter, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 5, Endo teaches that the high voltage electrode 8a protrudes and has a pointed end (needle tip 81; Fig. 1, Fig. 5A; col. 5, line 64-col. 6, line 5).
Regarding claim 6, Endo teaches that the high voltage electrode has a single column (cylindrical body portion 82) and one or more ends 81 provided on the single column (Fig. 5A; col. 5, line 64- col. 6, line 2).
Endo does not explicitly teach that the end portion is provided on circumferential portions of the column.
However, in depictions of prior art, Endo shows that it is known to provide the ends on circumferential portions of the column (see Figs. 10-11).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Endo by providing the end on circumferential portions of the single column, because Endo teaches that both configurations are suitable for use in a sidestream smoke removing part, and this involves substituting one alternative configuration for another to yield predictable results.
Regarding claim 8, Gidding teaches a circuit configured to apply a voltage to the high voltage electrode ([0105]).
Gidding does not further specify the plasma ion filter configuration.
Endo, directed to a sidestream smoke processing part comprising a plasma ion filter (electric dust collecting unit; Fig. 6) configured to generate plasma ions using a high voltage electrode (col. 7, lines 14-49) and a ventilation fan (ventilating fan; col. 7, line 34) configured to allow the sidestream smoke to be discharged through the plasma ion filter, teaches the plasma ion filter in further detail. Specifically, Endo teaches that the plasma ion filter comprises a circuit configured to apply a voltage to the electrode (col. 7, lines 14-26); and a plate (supporting electrode 8b; col. 5, line 55) configured to protect a top surface of the circuit (see Figs. 1-3, in which the plate 8b acts to isolate the circuit from the flow path. The plate is designed to carry the current from the circuit to the electrode 8a (col. 7, lines 27-28), extending the flow beyond the circuit. In this way, it is expected that the plate is protecting the circuit from being directly exposed to the flow path), wherein the electrode 8a is connected to the circuit and protrudes by extending through a hole (h) of the plate (Figs. 5A-5B; col. 6, lines 9-21).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gidding by using the plasma ion filter configuration, including the plate as taught by Endo because Gidding is silent to the constructional details of the plasma ion filter and one with ordinary skill would be motivated to look to prior art for a known and suitable plasma ion filter, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 9, Endo teaches that the plate 8b has a flow path in a top portion thereof, the flow path allowing the sidestream smoke to pass therethrough (See Annotated Fig. 1).
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Annotated Figure 1 (Annotated from Endo Fig. 6)
Regarding claims 10 and 11, the Examiner notes that the claims recite a manner of operation of the sidestream smoke receiving device. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114 (II).
Endo teaches that a voltage is applied to the electrode (col. 7, lines 14-28). Thus, all structural limitations of the claim are taught such that the device would be capable of performing the intended use, specifically of applying a voltage of 3 V to 5 V to the electrode or applying voltage such that the voltage at the protruding end of the electrode is between 5,000 V to 7,000 V.
The Examiner notes that Endo teaches that in prior art embodiments, application of a voltage of 5-6 V is known in the art (col. 1, lines 66-67; the claimed range of claim 10 overlaps with the range taught by the prior art). Endo further teaches that in the present embodiment, a voltage on a protruding end of the electrode is about 5 kV (col. 7, lines 14-17; the claimed range of claim 11 overlaps with the range taught by the prior art). Thus, the parameters of both methods of operating are known in the art and would be feasibly applied by one having ordinary skill.
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.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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