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 action is in response to Applicant’s amendments
Claims 1-6, 8-10, 12, 14-16 and 20 and are pending and are subject to this Office Action.
Claims 1 and 6 are amended.
Claims 7, 11, 13 and 17-19 are cancelled.
Response to Amendments
The Examiner withdraws the objection to the drawings for failing to comply with 37 CFR 1.84(p)(5) due to amendments filed 08/05/2025.
The Examiner withdraws the objection to the disclosure for informalities due to amendments filed 08/05/2025.
The Examiner withdraws the objection to the claims for informalities due to amendments to the claims filed 08/05/2025.
The Examiner withdraws the 112 rejection of claims 1-20 for indefiniteness due to amendments to the claims filed 08/05/2025. The Examiner notes that claims 7, 11, 13 and 17-19 are cancelled.
Response to Arguments
Applicant’s arguments, see pages 9-12, filed 08/05/2025, with respect to the 102 rejection of claim 1 have been fully considered and are persuasive. Claim 1 has been amended to include subject matter, directed to “if the tube of the cartridge breaks, the sleeve is configured to temporarily contain the smoking substance”, previously presented in claim 11, and directed to the tubular body being configured to “receive and frictionally engage at least a portion of the mouthpiece”. Prior art of reference Hill does not explicitly teach that the sleeve is configured to contain the smoking substance or that the tubular body being configured to receive and frictionally engage at least a portion of the mouthpiece. Therefore, the rejection has been withdrawn. However, upon further consideration, an obviousness ground of rejection is made in further view of Illidge et al. (US 20220022535 A1).
On pages 9-10, the Applicant argues that the limitation directed to the tubular body being configured to “receive and frictionally engage at least a portion of the mouthpiece” is not taught by prior art Hill.
The Examiner agrees, and withdraws the 102 rejection.
Upon further consideration, Illidge, directed to a protective sleeve configured for use with a portable vaporizing device, comprising a tubular body formed of a compressible material configured to receive and frictionally engage the portable vaporizing device, teaches that a protective sleeve may be further configured to cover a large portion of the vaporizing device or arranged to cover a portion of the mouthpiece, such as to receive and frictionally engage a portion of the mouthpiece ([0051], [0053]). Illidge teaches that this may help protect the mouthpiece from other surfaces ([0051]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hill by extending the protective sleeve to receive and frictionally engage at least a portion of the mouthpiece as taught by Illidge because both Hill and Illidge are directed to protective sleeves for use with portable vaporizer devices, Illidge teaches that the protective sleeve may also be configured to protect the mouthpiece, one having ordinary skill in the art would recognize that this may also help seal the connection between the mouthpiece and the cartridge, and this involves applying a known technique to a similar product to yield predictable results.
Furthermore, changes in size or proportion, such as the lengthening of the protective sleeve to receive and engage with the mouthpiece, are prima facie obvious. See MPEP 2144.04 (IV)(A).
On pages 10-11, the Applicant argues that the limitation directed to “wherein if the tube of the cartridge breaks, the sleeve is configured to temporarily contain the smoking substance” is not taught by the prior art.
The Examiner agrees that Hill does not explicitly teach this configuration. However, upon further consideration, Hill does make obvious the limitation.
Hill further teaches that a broken cartridge may result in loss of smoking substance ([0022]). Hill further teaches that a protective sleeve may comprise slots in some embodiments ([0024]).
Therefore, it would be obvious for one having ordinary skill in the art to modify Hill by making the protective sleeve without slots such that it is capable of containing the smoking substance if the cartridge breaks, because one of ordinary skill would recognize that there are only two possible configurations for protective sleeve slots (either with or without slots), Hill teaches that it is important to prevent loss of smoking substance from cartridge breakage, and this involves choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Furthermore, the Examiner notes that the limitation is merely a functional limitation. Thus, the prior art must only be capable of use in this manner. The modified prior art is structurally equivalent to the claimed device and would therefore be expected to be capable of use in the same way even without the above modification.
The following is a modified rejection based on Applicant’s amendments to the claims.
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.
Claims 1-6, 8-10, 12, 14-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hill et al. (US 20210329972 A1), in view of Illidge et al. (US 20220022535 A1).
Regarding claim 1, Hill teaches a protective sleeve (sleeve 100; Figs. 1-5; [0022]) configured for use with a portable vaporizing device (vaporizer; [0004]), the portable vaporizing device being of the type that includes a mouthpiece ([0004]; claim 1) coupled to a cartridge, the cartridge including a tube formed of a breakable material for containing a smoking substance (cartridge 102 with glass cylinder 106; [0004], [0022]), and a heating element ([0004]) disposed within the cartridge to heat the smoking substance (pictured in Figs. 6-7), the protective sleeve comprising:
a tubular body (see Fig. 3) formed of a compressible material ([0008] teaches silicone, which is a compressible material);
the tubular body configured to receive and frictionally engage ([0023] describes "tightly grips", [0028] describes "snugly gripping") the tube of the cartridge;
wherein the tubular body is compressible upon impact by an external force so as to absorb the external force and thereby prevent breakage of the tube of the cartridge ([0022]).
Hill further teaches that a broken cartridge may result in loss of smoking substance ([0022]). Hill further teaches that a protective sleeve may comprise slots in some embodiments ([0024]).
Hill does not explicitly teach (I) that the tubular body is configured to receive and frictionally engage at least a portion of the mouthpiece or (II) that in the event of breakage of the tube of the cartridge, protective sleeve will serve to contain the smoking substance.
Regarding (I), Illidge, directed to a protective sleeve configured for use with a portable vaporizing device, comprising a tubular body formed of a compressible material configured to receive and frictionally engage the portable vaporizing device, teaches that a protective sleeve may be further configured to cover a large portion of the vaporizing device or arranged to cover a portion of the mouthpiece, such as to receive and frictionally engage a portion of the mouthpiece ([0051], [0053]). Illidge teaches that this may help protect the mouthpiece from other surfaces ([0051]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hill by extending the protective sleeve to receive and frictionally engage at least a portion of the mouthpiece as taught by Illidge because both Hill and Illidge are directed to protective sleeves for use with portable vaporizer devices, Illidge teaches that the protective sleeve may also be configured to protect the mouthpiece, one having ordinary skill in the art would recognize that this may also help seal the connection between the mouthpiece and the cartridge, and this involves applying a known technique to a similar product to yield predictable results.
Furthermore, changes in size or proportion, such as the lengthening of the protective sleeve to receive and engage with the mouthpiece, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding (II), before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hill by making the protective sleeve without slots such that it is capable of containing the smoking substance if the cartridge breaks, because one of ordinary skill would recognize that there are only two possible configurations for protective sleeve slots (either with or without slots), Hill teaches that it is important to prevent loss of smoking substance from cartridge breakage, and this involves choosing from a finite number of identified, predictable solutions with a reasonable expectation of success.
Furthermore, the Examiner notes that the limitation to “if the tube of the cartridge breaks, the sleeve is configured to temporarily contain the smoking substance” is merely a functional limitation. Thus, the prior art must only be capable of use in this manner. The modified prior art is structurally equivalent to the claimed device and would therefore be capable of use in the same way even without the above modification.
The Examiner notes that, per above interpretation, limitations on the portable vaporizing device are merely intended use, such that the protective sleeve is capable of being used on described portable vaporizing device. Therefore, the limitation “the portable vaporizing device being of the type that includes a mouthpiece ([0004]; claim 1) coupled to a cartridge, the cartridge including a tube formed of a breakable material for containing a smoking substance (cartridge 102 with glass cylinder 106; [0004], [0022]), and a heating element ([0004]) disposed within the cartridge to heat the smoking substance (pictured in Figs. 6-7)” does not impart additional structure on the protective sleeve device and thus does not distinguish the claimed invention from the prior art.
Regarding claim 2, Hill teaches that the protective sleeve is formed of a flexible material ([0008]).
Regarding claim 3, Hill teaches that the protective sleeve is formed from silicone rubber ([0008]).
Regarding claim 4, Hill teaches that that protective sleeve comprises silicone material ([0008]).
Hill does not explicitly teach that the silicone material is food grade.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hill by making the protective sleeve with food grade silicone because one having ordinary skill in the art would recognize that a device to be inserted into a user’s mouth should be made of food-grade materials, food-grade silicone is known in the portable vaporizing device art, and this involves applying a known material to a known device to yield predictable results.
Regarding claim 5, Hill teaches that the protective sleeve is removable from the cartridge and mouthpiece over which it is fitted ([0009], [0023]).
Regarding claim 6, Hill teaches that the protective sleeve includes an outer surface having a decorative print, wherein the decorative print may be a print selected from a group of prints consisting of a logo, an image, or one or more decorative colors ([0024]).
The Examiner further notes that aesthetic design choices which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP § 2144.04 (I).
Regarding claim 8, Hill teaches that the protective sleeve includes a length of between approximately 1.0 and 2.5 inches ([0029] teaches 2.04", [0030] teaches 2.44", [0031] teaches adjusting length for different vaporizing devices).
Regarding claim 9, Hill teaches that the sleeve stretches may be configured for use with portable vaporizer device cartridges of different sizes ([0022], [0024]).
Hill does not explicitly teach that the protective sleeve includes an outer diameter of approximately 0.38 inches.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the protective sleeve of Hill by making the outer diameter different sizes, including 0.38 inches, as different vaporizer devices may require different sleeve diameters, and this involves applying a known technique to a known device to yield predictable results.
Furthermore, changes in size and proportion, such adjusting the outer diameter of the protective sleeve, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding claim 10, Hill teaches that the protective sleeve is slidable over the cartridge and mouthpiece coupled thereto ([0025]).
Regarding claim 12, Hill teaches that the protective sleeve is open at both ends (Figs. 2-5).
Regarding claim 14, Hill teaches that the sleeve stretches may be configured for use with portable vaporizer device cartridges of different sizes ([0022], [0024]).
Hill does not explicitly teach that the protective sleeve includes an inner diameter of approximately 0.28 inches.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the protective sleeve of Hill by making the inner diameter different sizes, including 0.28 inches, as different vaporizer devices may require different sleeve diameters, and this involves applying a known technique to a known device to yield predictable results.
Furthermore, changes in size and proportion, such adjusting the inner diameter of the protective sleeve, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding claim 15, Hill teaches that the sleeve stretches may be configured for use with portable vaporizer device cartridges of different sizes ([0022], [0024]).
Hill does not explicitly teach that the protective sleeve includes an inner diameter of approximately 0.31 inches.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the protective sleeve of Hill by making the inner diameter different sizes, including 0.31 inches, as different vaporizer devices may require different sleeve diameters, and this involves applying a known technique to a known device to yield predictable results.
Furthermore, changes in size and proportion, such adjusting the inner diameter of the protective sleeve, are prima facie obvious. See MPEP 2144.04 (IV)(A).
Regarding claim 16, Hill teaches that the protective sleeve includes a wall thickness between 0.07 and 0.10 inches ([0027] teaches about 0.10").
Regarding claim 20, Hill teaches that when secured over the cartridge, the protective sleeve obscures the contents of the glass tube of the cartridge ([0026]).
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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755