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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/31/2023 has been considered by the examiner.
Claim Objections
Claims 1-3, 6, 9-11, 14 are objected to because of the following informalities:
The symbol “1A)” and “1B)” should be cancelled in the Claim 1;
The term “and/or” should read “or” in the Claims 1, 2, 9, 11,14;
The term “light/vaporize” should read “light or vaporize” in the Claims 1, 6, 9, 10;
The term “lighting/vaporizing” should read “lighting or vaporizing” in the Claims 1, 2, 11.
The term “insure” should read “ensure” in the Claim 3.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“heat source” in claims 1, 3- 6, 9, 10, 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
heat source: the heat source is interpreted as included in a heating assembly to generate heat energy: “In each embodiment, the apparatus comprises a heating assembly first shown in Fig. 1A, including a housing and a heat source” [022]; “The heating assembly may further include a first electrical contact and a second electrical contact adapted to provide electrical power across the heat source to create the heated air sent to the first outlet” [024].
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112 (b)
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 4 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 “wherein said apparatus solves at least one smoking technical problem for a user of said apparatus resulting from said lighting/vaporizing of said smokable material” in 1C), which deems the claim indefinite. The term “one smoking problem” is not defined by the claim. One of ordinary skill would not be able to ascertain the metes and bounds of the claim language, rendering the claim indefinite. For the purposes of examination, this limitation will be interpreted as any smoking problem solved by using a heating method without direct physical contact between said heat source and said smokable material to light or vaporize said smokable material.
Claim 4 recites the preamble “The apparatus of Claim 1” and the limitation "said heating assembly" in 4A). There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, this limitation will be interpreted as reading the preamble “Claim 3” wherein “a heating assembly” is established the first time.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-11, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benjamignan et al. (US-10820626).
Regarding claim 1, Benjamignan discloses an apparatus comprising:
a heat source (21, heating plate, Fig.5; also see annotated Fig.5. The heating plate 21 is supported by a support 19 as shown in Fig.2 above the capsule holder 18 as shown in Fig.2 and annotated Fig.4) adapted to light/vaporize (The operating temperature is between 150-500 Celsius; a full power mode works at a temperature high enough to ignite the combustible material [Col. 12, Lines 58-61]; a low power mode works at a predetermined lower temperature to keep the combustible material from burning, but high enough so that a small amount of added heat will allow it to burn [Col. 13, Lines 21-26].) a smokable material containing at least one cannabis related product (The combustible material in a capsule being heated to a smoke-generating temperature [Col.4, Lines 60-61] [Col.8, Lines 22-26] is related to electrically operated hookah devices [Col.1, Lines 15-17].);
wherein said heat source is adapted and/or configured to light/vaporize said smokable material without direct physical contact between said heat source and said smokable material (The heating plate 21 is not in direct contact with the capsule being heated [Col.8, Lines 29-30]);
wherein said apparatus solves at least one smoking technical problem for a user of said apparatus resulting from said lighting/vaporizing of said smokable material (The capability of heating the combustible material at an optimal temperature optimized automatically between 150-500 Celsius has overcome a few issues in the previous products [Col.1, Line 21 – Col.2, Line 18; Col.12-Col.13, Chapter vi]. When the claimed and prior art products are identical or substantially identical in structure or composition, the prior art products necessarily possess the characteristics of the claimed product. It is prima facie case of anticipation that the apparatus of Benjamignan solves the problems as the claimed apparatus. See MPEP 2112.01.).
Regarding claim 2, Benjamignan discloses wherein said at least one smoking technical problem includes at least one of the following technical problems resulting from said lighting/vaporizing of said smokable material: chemical residues accumulating near or on said apparatus; excessive incineration of said smokable material; release of at least one undesirable biproduct and/or at least one undesirable flavor ingested by said user; damage to the flavor of said smokable material once lighted/vaporized; and damage to the natural effect of said smokable material once lighted/vaporized (The apparatus is able to heat the combustible material at an optimal temperature optimized automatically between 150-500 Celsius [Col.12-Col.13, Chapter vi], which renders its capability of solving the listed problems as the claimed apparatus. When the claimed and prior art products are identical or substantially identical in structure or composition, the prior art products necessarily possess the characteristics of the claimed product. It is prima facie case of anticipation that the apparatus of Benjamignan solves the listed technical problems as the claimed apparatus. See MPEP 2112.01.).
Regarding claim 3, Benjamignan discloses further comprising:
a heating assembly (20, heating unit, Fig.3; also see annotated Fig. 4) including a housing (42, lid, Figs.2 and 3; also see annotated Fig. 4), and said heat source (21, Figs.2 and 3, also see annotated Fig. 5);
wherein said housing (42) couples to said heat source (21) to provide a safe distance between said heat source (21) and said smokable material (placed in 18) to ensure no direct contact between said heat source (21) and said smokable material (placed in 18) to solve said at least one of said smoking technical problems for said user (Heat source 21 in the housing 42 of heating assembly is not in direct contact with the capsule filled with smoking material in the capsule holder 18 [Col.8, Lines 22-36], see annotated Fig. 4).
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Figs. 4 and 5 of Benjamignan, annotated
Regarding claim 4, Benjamignan discloses
wherein said heating assembly (20, Fig.3; also see annotated Fig. 4) further includes a first air inlet (46, air intake holes, Fig.2) and a first air outlet (see annotated 3);
wherein said first air inlet (46) is adapted to provide air into said heat source (21) and said first air (heated air hereafter) outlet provides a heated version of said air from said heat source (see Fig.2 and annotated Fig.3, air that enters from the air inlet 46 is heated by the heat source 21 of the heating assembly 20);
wherein said housing (42) contains a first entrance of said air into said first air inlet and said first outlet of said heated air (see Fig.2 and annotated Fig.3).
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Fig. 2 of Benjamignan
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Fig. 3 of Benjamignan, annotated
Regarding claim 5, Benjamignan discloses wherein said heating assembly further includes:
a first electrical contact (the first contact of 24 in Fig.2);
a second electrical contact adapted to provide electrical power (the second contact of 24 in Fig.2) across said heat source to create said heated air sent to said first outlet (An electric power unit 24 is used to power the heating source 21 [Col.5, Lines 1-2], also see annotated Fig.3);
Regarding claim 6, Benjamignan discloses wherein said heat source (21) implements creating said heated air to light/vaporize said smokable material through at least one of
resistive heating in response to said electrical power across said heat source to create said heated air (The resistive elements 62a, 62b, 62c of the heat source 21 in annotated Fig.5 are electrically powered to generate heat energy [Col.8, Line 65- Col.9, Line 4].);
inductive heating in response to said electrical power across said heat source to create said heated air (The heating assembly in annotated Fig.4 could be powered through a different type of connection with the power unit to generate heat energy by magnetic induction [Col.9, Lines 4-11]);
convective heating in response to said electrical power across said heat source (Convective heating is achieved by the air stream entering from air holes 46 into heating assembly, being heated by heat source 21, then flowing into the capsule holder 18 to heat the smokable material inside [Col.5 Lines 15-25], see Fig.2 and annotated Figs.3 and 4.).
Regarding claim 7, Benjamignan discloses wherein further comprises a power assembly (24, electric power unit, Fig.2) adapted to mechanically couple to said heating assembly (Annotated Fig.3 shows how the electric power unit 24 and heating assembly is mechanically coupled) to electrically couple to said first contact and adapted to contain at least one battery adapted to provide a first battery terminal and a second battery terminal (Fig.2; the electric power unit 24 that powers heating assembly is adapted to use rechargeable batteries [Col.7, Lines 51-52]); wherein said power assembly is configured to use said second battery terminal to generate said electrical power used in said heating assembly to create said heated air (The heating unit 20 that generating heated air is driven by the electric power unit 24 [Col.5, Lines 1-2]).
Regarding claim 8, Benjamignan discloses wherein said power assembly (24) incorporates a battery body (6) of a vaping device adapted to screw onto said heating assembly (20) to mechanically couple said power assembly (24) to said heating assembly (20) and couple said first contact between said power assembly (24) and said heating assembly (20) (See annotated Fig. 3 , the battery body 6 of a vaping device holds a hinge 44 screwed on, via which the heating assembly 20 is mechanically coupled to the battery body 6 so that mechanically coupled to the power assembly 24 also the first contact between the power assembly 24 and the heating assembly 20. [Col.5, Line 63 – Col.6, Line2]).
Regarding claim 9, Benjamignan discloses adapted to implement at least one of:
a lighter (see annotated Fig.4) adapted and/or configured to light/vaporize said smokable material without direct physical contact between said heat source and said smokable material, comprising said heating assembly coupled to said power assembly; and
a pipe (2, vessel, Fig.3; also see annotated Fig.3) adapted and/or configured to light/vaporize said smokable material without direct physical contact between said heat source and said smokable material, comprising said heating assembly coupled to said power assembly.
Regarding claim 10, Benjamignan discloses wherein said lighter (see annotated Fig.4) couples to a second pipe (see annotated Fig.3) to light/vaporize said smokable material without direct physical contact between said heat source and said smokable material.
Regarding claim 11, Benjamignan discloses wherein said pipe is adapted and/or configured to include said heating assembly mechanically coupled to said pipe to implement at least two settings of said heating assembly (See Fig1 and annotated Fig.3);
wherein a first setting configures said heating assembly near said smokable material of said pipe to support lighting/vaporizing said smokable material by operating said heating assembly (See Fig.1); and
wherein a second setting configures said heating assembly away from said smokable material of said pipe so that said heating assembly remains mechanically coupled to said pipe when said smokable material is not being lighted/vaporized (See annotated Fig.3).
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Fig. 1 of Benjamignan
Regarding claim 14, Benjamignan discloses wherein said pipe is adapted and/or configured for said smokable material in at least one of a dry herb form of said smokable material, a dry concentrate of said smokable material, a liquid form of said smokable material, and an extract of said smokable material (The pipe is adapted for a prepackaged smokable material capsule [Col.2, Lines 52-62; Col.4, Lines 60-66]. Capsules designed for smokable materials can be configured to contain either a liquid or a solid form of smokable material).
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.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamignan et al. (US-10820626) in view of Bishara (US-8983282).
Regarding claim 12, Benjamignan does not expressly disclose wherein said heat source contains at least one heating element composed of at least one essentially non-reactive component, wherein said essentially non-reactive component is a chemical composition which does not form oxides in the presence of oxygen except at a temperature above the operating range required to light said smokable material.
Bishara teaches that oxidation is common above 800 degrees Fahrenheit (426.67 Celsius), and the materials having reactions with air may cause toxic vapors to be released, therefore an electric heater for hookah type water pipes is in need of using materials that adequately generate and transfer heat without reacting to release harmful vapors [Col.2, Lines 37-47].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein said heat source contains at least one heating element composed of at least one essentially non-reactive component, wherein said essentially non-reactive component is a chemical composition which does not form oxides in the presence of oxygen except at a temperature above the operating range required to light said smokable material, in order to reduce toxic vapors released from the oxidation reaction as taught by Bishara.
Regarding claim 13, Benjamignan does not expressly disclose wherein said essentially non-reactive component contains at least one of a stainless steel, a titanium, a titanium alloy, a platinum, a woven carbon nanotube structure, an essentially non-reactive ceramic, a kanthal, a nichrome, a nickel and an aluminum nitrate.
Bishara discloses that the essentially non-reactive component of stainless steel or any metal core plated with nickel or gold can be used to the heating element of the electric heater for hookah type water pipes [Col.7, Lines 43-47], in order to diminish the oxidation reaction that releases toxic vapors [Col.2, Lines 37-47].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate wherein said essentially non-reactive component contains at least one of a stainless steel, a titanium, a titanium alloy, a platinum, a woven carbon nanotube structure, an essentially non-reactive ceramic, a kanthal, a nichrome, a nickel and an aluminum nitrate, in order to use the non-reactive materials for a heating in purpose of diminishing the oxidation reaction that releases toxic vapors, as taught by Bishara.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zunjing J. Wang whose telephone number is (571)272-0762. The examiner can normally be reached Monday - Friday 7:30am-4:30pm.
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/ Zunjing J. Wang /Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761