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 .
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.
Response to Amendment
The amendment of January 18, 2026 is entered. Claim 1 is amended.
Status of Claims
Claim 1 is amended. Claims 2-8 were canceled previously. Claims 9-10 are previously presented.
Response to Arguments
Applicant’s amendments filed January 18, 2026 have been fully considered and are persuasive in overcoming the §112(f) claim interpretation of record. Said claim interpretation has been withdrawn.
Applicant’s amendments and remarks filed January 18, 2026 regarding the §112(b) claim rejection have been fully considered and are persuasive. Said claim rejection have been withdrawn.
Applicant’s amendments and remarks filed January 18, 2026 regarding the §103 rejections have been fully considered but are not persuasive.
Applicant argues page 5 Niklas requires simultaneous inversion for ejection stating: “the ashtray is simultaneously tilted downwards...the contents fall out” (Niklas, page 3, lines 94—113).
The Examiner respectfully disagrees as Niklas does not require the inversion of the ashtray to accomplish ejection of ashes and cigarette butts from the boreholes:
“...a hand (reads over a single hand) can be inserted through the opening to grip the ashtray and press on (operable by a single hand) the underside of base plate (6) in the direction of arrow (A) (see Fig. 2 and 3) which causes base plate (6) to be moved against the force of springs (9) towards block (2) until upper ends (8) of the pins (7) are located at the level of the inlet openings (4). This presses out butts, matches, ash, and other material which has accumulated in the extinguishing channels (3); said material drops out of the ashtray (1) as the ashtray (1) is simultaneously tilted downwards (i.e., disposal or the ejected material) (Fig. 3, page 3 lines 94-113).” There is no requirement in Niklas that a user simultaneously tilt the ashtray downwards each time ashes and butts are ejected from the boreholes of the ashtray. For example Niklas discloses “If the astray is simultaneously held upside down, (emphasis added) the contents fall out and the ashtray is substantially completely emptied.” (page 2 lines 65-68)
Further, Applicant is arguing preferred embodiments of Niklas and there is nothing to suggest that parts of Niklas (i.e., boreholes panel and pistons panel) cannot be rearranged to have the same overall effect desired by Niklas (i.e., pistons ejecting contents of boreholes). Page 2 lines 30-40 establish the drawings of Niklas are a preferred embodiment of Niklas.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., functional time interval and a new operational mode enabled by a new structural arrangement) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s argues bottom of page 5 in Niklas ejection and disposal are inseparable and the device cannot be reused until fully empties. The Examiner respectfully disagrees. One of ordinary skill in the art would have a reasonable expectation of success in the modification Niklas because the functionality of Niklas remains the same in that all the cigarette butts, ashes, and materials in the extinguishing boreholes of Niklas are pressed out of the boreholes into the ashtray for disposal which is what Niklas wants when the handle attached to the boreholes panel of modified Niklas is depressed. Further, the displaced cigarette butts, ashes, and materials from the extinguishing boreholes of modified Niklas by depressing the handle are then available for emptying from the ashtray which suggests to one ordinary skill in the art the emptying of the displaced material from the ashtray of Niklas can occur at a time other than when the displacing process takes place.
Applicant argues page 6 Jacob does cure the deficiencies of Niklas as Jacob’s plunger operates a single extinguisher chamber, ejects outward, does not teach internal retention, does not teach multi-chamber clearing, does not teach a stationary panel and that adding Jacob’s handle to Niklas does not teach the claimed structure. The Examiner respectfully disagrees as that is not the rationale used in rejecting the claim. In the instant rejection, Niklas was modified such that the sole moveable panel is the boreholes panel and the stationary panel is the pistons panel. The handle of Jacob is present such that it allows the sole moveable part to be moved. Since the handle must be attached to the sole panel that moves to perform its intended use, it must be attached to the boreholes panel and therefore, must move in a linear direction along with the boreholes panel, during the displacement of ashes and butts from the boreholes in modified Niklas. For this reason, Applicant’s remarks in this section are not persuasive.
Applicant’s remarks to Jacob’s disposal mechanism involves rotation or tilting of the container are not persuasive as that was the rational used in the rejection of the claim.
Applicant’s remarks to practical advantages, page 5, to a distinct mechanical operation yielding practical advantages, ergonomic improvements, and enhanced safe usability in dynamic environments are considered to be unexpected results using the claimed structure in dynamic environments. These remarks are not persuasive as Applicant does not provide any demonstration to support their allegation of unexpected results using the claimed structure in dynamic environments.
Applicant’s arguments are found to be not persuasive for the reason’s discussed above.
Claim Objections
The claims are objected to because the amended claims dated January 18, 2026 indicated changes to claim 1 as compared to the claims dated November 25, 2025. Specifically, the amendment to claim 1 failed to rewrite the entire claim with all changes (e.g., additions and deletions). Substitute claims are required. See 37 C.F.R. 1.121.
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 1 and 9-10 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.
Regarding claim 1, the specification does not disclose: a container defining an internal collection volume; wherein the displaced material is retained with in the internal collection volume independently of the borehole-clearing operation, such that the boreholes are immediately reusable without requiring contemporaneous emptying of the container. Therefore, while the specification discloses “an interior of the apparatus (pg 3, first paragraph), it is silent to “a container defining an internal collection volume”. Similarly, the specification is silent to the “displaced material is retained within the internal collection volume independently of the borehole-clearing operation, such that the boreholes are immediately reusable without requiring emptying of the container”.
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 1 and 9-10 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.
Claim 1 recites:
the limitation "the displaced material " in the last three lines of the claim. There is insufficient antecedent basis for this limitation in the claim.
the limitation “the borehole-clearing operation” in the last three lines of the claim. There is insufficient antecedent basis for this limitation in the claim.
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 and 10 are rejected under 35 U.S.C. 103 as obvious over Niklas (GB 1585231) in view of Jacob (US 1,999,933).
Regarding claim 1, Niklas discloses an ashtray comprising a plurality of extinguishing channels, each having an inlet opening at one end for receiving a spent smoking article and a counter-opening at the other end, and a plurality of moveable members each engageable in a receptive counter-opening and movable through the respective extinguishing channel (page 2 lines 8-17).
Niklas shows in Fig. 1 ashtray (1) having a block (2) (reads over a boreholes panel) in which parallel, vertical extinguishing channels (3) (reads over a plurality of boreholes) are arranged close to each other (page 3 lines 26-28); a base plate (6) (reads over a pistons panel) which forms a common base for vertically running pins (7) (reads over a plurality of pistons) which are rigidly fixed to the base or integral therewith (reads over carrying a plurality of pistons) (page 3 lines 53-56).
Niklas further discloses bottom (10) serves as a stop for base plate (6) and is arranged on a lateral casing (11) (reads over a container). Bottom (10) has an opening (12) enabling it to be gripped, a feature of ashtrays which is known per se, so that to empty the ashtray, a hand (reads over a single hand) can be inserted through the opening to grip the ashtray and press on (operable by a single hand) the underside of base plate (6) in the direction of arrow (A) (see Fig. 2 and 3) which causes base plate (6) to be moved against the force of springs (9) (reads over at least one spring biasing) towards block (2) until upper ends (8) of the pins (7) are located at the level of the inlet openings (4). This presses out butts, matches, ash, and other material (reads over displaced material) which has accumulated in the extinguishing channels (3), said material drops out of the ashtray (1) as the ashtray (1) is simultaneously tilted downwards (Fig. 3, page 3 lines 94-113).
Niklas does not explicitly disclose the base plate (6) is stationary and fixed within the container and the boreholes panel moves.
It would have been obvious to a person of ordinary skill in the art at the time the invention was filed to practice the invention of Niklas such that the boreholes block was depressible (reads over moves) against stationary pistons by a single hand, rather than the exemplified stationary boreholes panel against moveable pistons panel because it logically follows this would cause the block (2) to be moved against the force of springs (9) (reads over at least one spring biasing the boreholes panel) towards the base plate (6) until upper ends (8) of the pins (7) are located at the level of the inlet openings (4) permit ejecting (i.e., displacing) the contents of the boreholes (the channels of Niklas), such as cigarette butts, without needing to pick up and turn over (reads over rotating or inverting) the ashtray to perform the same action thereby minimizing the contents of the ashtray spilling all over because the contents would be contained by the walls of the ashtray (reads over an internal collection volume) in this modification. This reads over displacing ash and cigarette butts from the boreholes into the internal collection volume while the apparatus remains upright. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
One of ordinary skill in the art would have a reasonable expectation of success in the above modification because the functionality of Niklas remains the same in that all the cigarette butts, ashes, and materials in the extinguishing boreholes of Niklas are pressed out of the boreholes into the ashtray for disposal which is what Niklas wants. The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
The moveable boreholes block of modified Niklas reads over the moving element during disposal (i.e., ejection of the ashes and butts); the boreholes panel positioned above the stationary pistons panel; and a first spaced-apart position relative the stationary pistons panel as the pistons are stationary in Niklas as modified above.
Niklas does not explicitly disclose a handle rigidly connected to the boreholes panel and accessible from outside the container, wherein downward actuation of the handle by a single hand moves the boreholes panel toward the stationary pistons panel while the apparatus remains upright while pressing the handle (Claim 1).
Jacob teaches a cigarette choking or snuffing device for ashtrays (title). The central part of the ashtray has an upstanding hollowed out portion (15) from which a boss (18) rises and in the bottom of boss (18) a button (19) is positioned. The button (19) also acts as a guide for the reduced section (21) of the plunger (22) (Fig. 2, page 4 col. 1 lines 6-18). When finished smoking a cigarette, the burnt end of the cigarette can be engaged in either of the cylindrical chambers (16a), then by depressing the plunger (22) (reads over a handle), plungers (17) will raise and discharge (reads over ejects) the cigarette butt out into the ashtray (page 4 col. 1 lines 35-42). The plunger (22) is depressed from outside the ashtray (1) (see Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the boreholes panel (2) of modified Niklas to include a plunger (considered as a handle) that is depressed from outside the ashtray of modified Niklas as taught by Jacob and to inflexibly attach the handle to the boreholes panel such that when the plunger is depressed by a hand of the smoker it will cause movement of the boreholes panel (2) against the force of the springs (9) of modified Niklas downward to eject the cigarette ashes and butts out of the cylindrical channels of the ashtray. This reads over a handle rigidly connected to the boreholes panel and accessible from outside the container; the apparatus remains upright while pressing the handle limitation of Claim 1.
One of ordinary skill in the art would have a reasonable expectation of success in the above modification because the functionality of Niklas remains the same in that all the cigarette butts, ashes, and materials in the extinguishing boreholes of Niklas are pressed out of the boreholes into the ashtray for disposal which is what Niklas wants when the handle attached to the boreholes panel of modified Niklas is depressed. Further, the displaced cigarette butts, ashes, and materials from the extinguishing boreholes of modified Niklas by depressing the handle are then available for emptying from the ashtray which suggests to one ordinary skill in the art the emptying of the displaced material from the ashtray of Niklas can occur at a time other than when the displacing process takes place. This reads over the borehole-clearing operation of Claim 1.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
Regarding the wherein the displaced material is retained within the internal collection volume independently of the bore-hole clearing operation limitation of claim 1, there is nothing in the modification of Niklas as described above that prevents the ashtray boreholes of Niklas from being used following ejection of material from the boreholes (borehole-clearing operation) without requiring contemporaneous empty of the ashtray container. Applicant presents no evidence to prove otherwise.
Claim 1 recites the functional language: “wherein the displaced material is retained within the internal collection volume independently of the borehole-clearing operation, such that the boreholes are immediately reusable without requiring contemporaneous emptying of the container”. 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Regarding claim 10, Niklas discloses the ashtray may be used both in the private sphere and in restaurants or other eating places (page 2 lines 21-30). This reads over the limitations of Claim 10.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable under 35 U.S.C. 103 as obvious over Niklas (GB 1585231) in view of Jacob (US 1,999,933) as applied to claim 1, in view of Zeigler et al. (US 5,887,596).
Modified Niklas discloses all the claim limitations as set forth above.
Regarding claim 9, modified Niklas does not explicitly teach a light fixture for illuminating an interior of the ashtray apparatus.
Ziegler teaches a vehicle ashtray (title). Fig. 2 illustrates the ashtray drawer wherein in the drawer there is a removable ash receptacle (11) (col. 2 lines 60-64). As shown in Fig. 2, a window (22) is arranged at the rear wall of the ash receptacle wherein light is supplied through the window by way of light guides and is able to reach the ash chamber (23) (reads over an interior) through a light guide (25) (reads over a light fixture) (col. 3 lines 17-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Niklas to include a light guide as taught by Ziegler. Doing so supplies light to reach the ash chamber (23) through the light guide, illuminating the ashtray interior for use by a smoker during low and/or dark ambient lighting periods. This reads over Claim 9.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747