DETAILED ACTION
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.
Status of the Claims
Claims 1-5 and 7-13 are pending. Claims 1, 4-5, 7, and 11 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 7/8/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see page 7 of Remarks filed 7/8/2025, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented and are not obvious over Hcu in view of Albina and Christie, using the mapping of Christie provided in the Non-Final Rejection dated 5/29/2025. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made over Hcu in view of Albina and Christie, using a new mapping of Christie.
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 1-3, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hcu (US 2005/0166931 A1) in view of Albino (US 2011/0005534 A1) and Christie (US 10,244,790 B1).
Regarding claim 1, Hcu discloses a filtering apparatus (“cigarette holder”, Fig. 1, ¶ 0011) for filtering smoke to be inhaled by a person (¶ 0021), the filtering apparatus comprising:
a tube (“mouthpiece 4”, Fig. 1, ¶ 0011) having a smoking end (end with “enlarged hole 41”, Fig. 1, ¶ 0011) and a suction end (end with “through hole 44”, Fig. 1, ¶ 0011), the tube having a perimeter wall being gas impermeable (solid outer wall of the tube, Fig. 1); and
a filter element (“cotton filter 3”, Fig. 1, ¶ 0010) being coupled to and being positioned within the tube (Fig. 3).
However, Hcu does not disclose that the filter element comprises first and second filters as claimed.
Albino, in the same field of endeavor, discloses forming a filter element (“cigarette filter 230”, Fig. 1, ¶ 0134) comprising:
a first filter (“mouth-end section 132”, Fig. 1, ¶ 0134) adjacent to a suction end (“mouth-end”, Fig. 1, ¶ 0134), the first filter comprising a first filtering substance being gas permeable, the first filtering substance being configured for capturing particulates in smoke when the smoke flows through the first filtering substance, the first filtering substance comprising cotton wool (“cotton”, ¶ 0134); and
a second filter (“section 136” comprising “adsorbent 146”, Fig. 1, ¶ 0135) adjacent to the first filter (Fig. 1), the second filter comprising a second filtering substance being gas permeable, the second filtering substance being configured for capturing particulates in the smoke when the smoke flows through the second filtering substance, the second filtering substance comprising one of coconut activated carbon and bamboo activated carbon (“adsorbent 146 is carbon”, Fig. 1, ¶ 0135, wherein the carbon is “activated coconut hull based carbons”, ¶ 0157).
One of ordinary skill in the art would have understood that there was a benefit to using a multi-segment filter element as taught by Albino in that it provides “greater reduction biological insult, for example, DSBs, cell death or perturbation of RNA transcriptome or proteome in human cells contacted by cigarette smoke” (¶ 0181). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the filter element of Albino in place of the filter element of Hcu in the filtering apparatus of Hcu in order to obtain this benefit.
In the apparatus of the combination, the first filter will be coupled to and positioned within the tube adjacent to the suction end, and the second filter will be coupled to and positioned within the tube adjacent to the first filter.
Further, with regard to the limitations of “coconut activated carbon” and “bamboo activated carbon”, these limitations refer to the specific process used to make the product (i.e., activated carbon made from coconut and bamboo starting materials, respectively). Therefore, as Hcu teaches the product (i.e., activated carbon) resulting from these process steps, the claim is unpatentable. "[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(I)).
Albino does not disclose that the second filter comprises a pair of screens.
Christie, in the same field of endeavor, discloses using pairs of screens (“secondary screen 177”, Fig. 5, Col. 3, Lines 40-41, and “mesh filter 109”, Fig. 5, Col. 3, Line 37) around filter segments (“secondary filter 178”, Fig. 1, Col. 3, Line 41, the specific filter segment corresponding to the “second filter 178” which is between and abutting both a “secondary screen 177” and “mesh filter 109”). One of ordinary skill in the art would have understood that there was a benefit to screens in that it helps secure the placement of filtering substances within respective filtering segments. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a pair of screens as taught by Christie around the second filtering substance of the second filter of Albino in order to obtain this benefit.
In the apparatus of the combination, each of the pair of screens are coupled to and positioned within the tube (as the second filter is coupled to and positioned within the tube), each of the pair of screens being spaced apart from each other (as they are separated by “secondary filter 178”) and positioned at a respective end abutting the second filter (“the optional mesh filter 109 is sandwiched between the secondary screen 177 and the secondary filter 178 that are provided at the tenth end 150 as well as the ninth end 149 of the chamber cylinder”, Col. 3, Lines 43-46) and retaining the second filtering substance therebetween, each of the pair of screens being gas permeable (so as to allow the passage of smoke through the filter, as taught by Christie, Col. 2, Lines 62-64).
Regarding claim 2, Hcu in view of Albino and Christie teaches the apparatus of claim 1, as stated above. Albino further discloses wherein the second filtering substance is a powder (“Carbon powder”, ¶ 0270).
Regarding claim 3, Hcu in view of Albino and Christie teaches the apparatus of claim 1, as stated above. Albino also discloses wherein the first filter further comprises a wrapper having a tubular shape (“plug wrap”, ¶ 0152; as the filter segments have a tubular shape, Fig. 1, the wrapper around the filter segments would also have a tubular shape), the wrapper encasing the first filtering substance. In the apparatus of the combination, the wrapper is aligned with the tube (the wrapper forms the outside of the filter, and Hcu discloses that the outside of the filter is aligned with the tube, as shown in Fig. 1 of Hcu).
Regarding claim 5, Hcu in view of Albino and Christie teaches the apparatus of claim 3, as stated above. Hcu also discloses that the filter contacts the inner surface of the tube (via “main pipe 2”, Fig. 3, ¶ 0010) with some amount of friction (as a frictionless surface does not exist). Therefore, in the apparatus of the combination, the wrapper is coupled to the tube by frictionally engaging an inner surface of the tube.
Regarding claim 7, Hcu in view of Albino and Christie teaches the apparatus of claim 1, as stated above. Further, in the apparatus of the combination, each of the pair of screens are coupled to the tube by frictionally engaging an inner surface of the tube (either directly or indirectly, as there is some amount of friction present, as a frictionless surface does not exist).
Regarding claim 8, Hcu in view of Albino and Christie teaches the apparatus of claim 1, as stated above. Hcu further discloses a sleeve (“main pipe 2”, Fig. 3, ¶ 0010) being coupled to and being positioned within the tube (Fig. 3), the sleeve being adjacent to the second filter in the apparatus of the combination and extending beyond the smoking end of the tube (Fig. 3), the sleeve being hollow (Fig. 1), the sleeve being configured for receiving a smoking implement (“cigarette 6”, Fig. 3, ¶ 0020) through a distal end of the sleeve relative to the tube (Fig. 3).
Regarding claim 9, Hcu in view of Albino and Christie teaches the apparatus of claim 8, as stated above. Hcu further discloses wherein the sleeve is coupled to the tube by frictionally engaging the inner surface of the tube (Fig. 3, there is some amount of friction present between tube 4 and sleeve 2, as a frictionless surface does not exist).
Regarding claim 10, Hcu in view of Albino and Christie teaches the apparatus of claim 1, as stated above. Further, in the apparatus of the combination, the second filter is positioned adjacent to the smoking end of the tube (as the first filter is the filter which is adjacent to the suction end of the tube, and the second filter is adjacent to the first filter, as discussed in the rejection of claim 1 above, the second filter is positioned adjacent to the smoking end of the tube), the tube being configured to insert the smoking end of the tube into a smoking implement (as a user may insert the smoking end of the tube into a smoking implement, the tube is considered configured to insert the smoking end of the tube into a smoking implement).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hcu (US 2005/0166931 A1) in view of Albino (US 2011/0005534 A1) and Christie (US 10,244,790 B1) as applied to claim 3 above, and further in view of Lisauskas et al. (US 2012/0318286 A1).
Regarding claim 4, Hcu in view of Albino and Christie discloses the apparatus of claim 3, as discussed above. However, Albino does not explicitly disclose that the wrapper comprises paper.
Lisauskas, in the same filed of endeavor, discloses forming wrappers from paper (“tipping paper and plug wrap surrounding the filter tow are each comprised of a biodegradable non-acetate paper”, ¶ 0028). One of ordinary skill in the art would have understood that there was a benefit to forming the wrapper to comprise paper in that paper is biodegradable (¶ 0028). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the wrapper in the apparatus of the combination to comprise paper in order to obtain this benefit.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hcu (US 2005/0166931 A1) in view of Albino (US 2011/0005534 A1), Lisauskas et al. (US 2012/0318286 A1), and Christie (US 10,244,790 B1).
Regarding claim 11, Hcu discloses a filtering apparatus (“cigarette holder”, Fig. 1, ¶ 0011) for filtering smoke to be inhaled by a person (¶ 0021), the filtering apparatus comprising:
a tube (“mouthpiece 4”, Fig. 1, ¶ 0011) having a smoking end (end with “enlarged hole 41”, Fig. 1, ¶ 0011) and a suction end (end with “through hole 44”, Fig. 1, ¶ 0011), the tube having a perimeter wall being gas impermeable (solid outer wall of the tube, Fig. 1); and
a filter element (“cotton filter 3” in Fig. 1, ¶ 0010) being coupled to and being positioned within the tube (Fig. 3).
However, Hcu does not disclose that the filter element comprises first and second filters as claimed.
Albino, in the same field of endeavor, discloses forming a filter element (“cigarette filter 230”, Fig. 1, ¶ 0134) comprising
a first filter (“mouth-end section 132”, Fig. 1, ¶ 0134) adjacent to a suction end (“mouth-end”, Fig. 1, ¶ 0134), the first filter comprising:
a first filtering substance being gas permeable, the first filtering substance being configured for capturing particulates in smoke when the smoke flows through the first filtering substance, the first filtering substance comprising cotton wool (“cotton”, ¶ 0134); and
a wrapper having a tubular shape (“plug wrap”, ¶ 0152; as the filter segments have a tubular shape, Fig. 1, the wrapper around the filter segments would also have a tubular shape), the wrapper encasing the first filtering substance;
a second filter (“section 136” comprising “adsorbent 146”, Fig. 1, ¶ 0135) adjacent to the first filter, the second filter comprising:
a second filtering substance being gas permeable, the second filtering substance being configured for capturing particulates in the smoke when the smoke flows through the second filtering substance, the second filtering substance comprising one of coconut activated carbon and bamboo activated carbon (“adsorbent 146 is carbon”, Fig. 1, ¶ 0135, wherein the carbon is “activated coconut hull based carbons”, ¶ 0157), the second filtering substance being a powder (“Carbon powder”, ¶ 0270).
One of ordinary skill in the art would have understood that there was a benefit to using a multi-segment filter element as taught by Albino in that it provides “greater reduction biological insult, for example, DSBs, cell death or perturbation of RNA transcriptome or proteome in human cells contacted by cigarette smoke” (¶ 0181). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the filter element of Albino in place of the filter element of Hcu in the filtering apparatus of Hcu in order to obtain this benefit.
In the apparatus of the combination, the first filter will be coupled to and positioned within the tube adjacent to the suction end, the second filter will be coupled to and positioned within the tube adjacent to the first filter, and the wrapper is aligned with the tube (the wrapper forms the outside of the filter, and Hcu discloses that the outside of the filter is aligned with the tube, as shown in Fig. 1 of Hcu). With regard to the wrapper being coupled to the tube by frictionally engaging an inner surface of the tube, Hcu also discloses that the filter contacts the inner surface of the tube (via “main pipe 2”, Fig. 3, ¶ 0010) with some amount of friction (as a frictionless surface does not exist). Therefore, in the apparatus of the combination, the wrapper is coupled to the tube by frictionally engaging an inner surface of the tube.
However, Albino does not explicitly disclose that the wrapper comprises paper.
Lisauskas, in the same filed of endeavor, discloses forming wrappers from paper (“tipping paper and plug wrap surrounding the filter tow are each comprised of a biodegradable non-acetate paper”, ¶ 0028). One of ordinary skill in the art would have understood that there was a benefit to forming the wrapper to comprise paper in that paper is biodegradable (¶ 0028). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the wrapper in the apparatus of the combination to comprise paper in order to obtain this benefit.
In addition, Albino does not disclose that the second filter comprises a pair of screens.
Christie, in the same field of endeavor, discloses using pairs of screens (“secondary screen 177”, Fig. 5, Col. 3, Lines 40-41, and “mesh filter 109”, Fig. 5, Col. 3, Line 37) around filter segments (“secondary filter 178”, Fig. 1, Col. 3, Line 41, the specific filter segment corresponding to the “second filter 178” which is between and abutting both a “secondary screen 177” and “mesh filter 109”). One of ordinary skill in the art would have understood that there was a benefit to screens in that it helps secure the placement of filtering substances within respective filtering segments. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a pair of screens as taught by Christie around the second filtering substance of the second filter of Albino in order to obtain this benefit.
In the apparatus of the combination, each of the pair of screens are coupled to and positioned within the tube (as the second filter is coupled to and positioned within the tube), each of the pair of screens being spaced apart from each other (as they are separated by “secondary filter 178”) and positioned at a respective end abutting the second filter (“the optional mesh filter 109 is sandwiched between the secondary screen 177 and the secondary filter 178 that are provided at the tenth end 150 as well as the ninth end 149 of the chamber cylinder”, Col. 3, Lines 43-46) and retaining the second filtering substance therebetween, each of the pair of screens being gas permeable (so as to allow the passage of smoke through the filter, as taught by Christie, Col. 2, Lines 62-64).
Regarding claim 12, Hcu in view of Albino, Lisauskas, and Christie teaches the apparatus of claim 11, as stated above. Hcu further discloses a sleeve (“main pipe 2”, Fig. 3, ¶ 0010) being coupled to and being positioned within the tube (Fig. 3), the sleeve being adjacent to the second filter in the apparatus of the combination and extending beyond the smoking end of the tube (Fig. 3), the sleeve being hollow (Fig. 1), the sleeve being configured for receiving a smoking implement (“cigarette 6”, Fig. 3, ¶ 0020) through a distal end of the sleeve relative to the tube (Fig. 3), the sleeve being coupled to the tube by frictionally engaging the inner surface of the tube (Fig. 3, there is some amount of friction present between tube 4 and sleeve 2, as a frictionless surface does not exist).
Regarding claim 13, Hcu in view of Albino, Lisauskas, and Christie teaches the apparatus of claim 11, as stated above. Further, in the apparatus of the combination, the second filter is positioned adjacent to the smoking end of the tube (as the first filter is the filter which is adjacent to the suction end of the tube, and the second filter is adjacent to the first filter, as discussed in the rejection of claim 11 above, the second filter is positioned adjacent to the smoking end of the tube), the tube being configured to insert the smoking end of the tube into a smoking implement (as a user may insert the smoking end of the tube into a smoking implement, the tube is considered configured to insert the smoking end of the tube into a smoking implement).
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.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747