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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 6, 2026 has been entered.
Response to Amendment
Claim 4 is amended. Claims 5 and 6 are previously presented.
Response to Arguments
Applicant’s amendments and remarks filed March 6, 2026 failed to address the objection to the drawings cited in the Office action dated October 20, 2025. Said drawing objection is maintained in this action.
Applicant’s claim amendments and remarks filed February 28, 2025 with respect to the §112(b) rejections of record have been fully considered and are persuasive. The §112(b) rejection of Claim 4 is withdrawn.
Applicant’s claim amendments and remarks filed March 6, 2026 with respect to the §103 rejections of record have been fully considered but are not persuasive in moving the application to allowance.
The Rule 132 declaration of March 6, 2026 has been fully considered and is proper and is accepted. The Rule 132 declaration and the remarks filed by Applicant’s representative on March 6, 2026 essentially mirror each other. Both sets of arguments are not persuasive for the reasons outlined below and the reasons apply to both the declaration and the remarks filed, with the declaration being referenced for simplicity.
The Rule 132 declaration begins with discussion of the description and operation of the claimed invention.
Starting with Section 4, the declaration lists the prior references cited by the Examiner and states, “none of these references disclose or suggest the structural arrangement of the claimed invention” and argues against Lee and Bashur references individually. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In Section 5, the declaration states introducing Bashur’s screen and funnel arrangement into Lee’s device would disrupt Lee’s operation design and intended function. This appears to be speculative on the part of the Applicant as no evidence has been presented to support said argument. As recited in the rejection of claim 4 in the prior action, “Whenever ashes are rubbed off from the end of a cigarette, they fall through wire screen and through the opening in the frusto-conical flange and fall into the container.” Therefore, it would have been obvious to one of ordinary skill in the art that when ashes are rubbed off the end of a cigarette and fall through the two screens of Lee modified with Bashur, said ashes are directed into the aroma tube of Lee for collection which is what Lee wants. One of ordinary skill in the art would have a reasonable expectation of success in the combination of Lee and Bashur because the functionality of Lee remains the same in that the cigarette butts remain separated from the collected ashes as desired by Lee.
Finally, regarding Applicant’s advantage arguments in Section 6, there is no requirement that the prior art is required to teach the same advantage that the Applicant has found in order to reject the claim.
Applicant argues, Remarks page 3, regarding Claim 5, neither Lee nor Bashur discloses removable screens configured in the claimed stacked sifting arrangement (i.e., of amended claim 4) are addressed in the rejections below.
Applicant arguments, Remarks page 3, regarding Claim 6 that Faison does not cure the deficiencies of Lee and Bashur discussed above is not persuasive as Faison is only used to motivate choosing suitable materials for ashtrays.
The declaration under 37 CFR 1.132 filed March 6, 2026 is insufficient to overcome the rejection of the claims based upon 35 U.S.C. §103 over Lee (US 6,161,549) in view of Bashur (US 2,044,377) as set forth in the last Office action. The declaration and evidence supplied by the Applicant has not been found persuasive for the reasons outlined in the Response to Arguments section above. Applicant’s declaration amounts to opinion evidence for this reason. The Rule 132 declaration is considered as opinion evidence and afforded the same patentable weight as Applicant’s filed remarks. (MPEP §716.01(c) Section III)
Applicant argues “alleged advantages” of the claimed invention. This argument is not persuasive. This argument under U.S. patent law is considered an argument to unexpected results.
If Applicant intends to argue there is criticality which gives an unexpected result to the structure in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
With respect to the fairly comparative requirement, Applicant has presented no evidence supportive of the allegedly unexpected results. Therefore this portion of the requirement to overcome is not persuasive.
With respect to the commensurate in scope limitation, the claims are to a combined ashtray sifter device comprising two screens attached to in a middle section of said device and stacked one above the other above a funnel in the middle section and capable of sifting ash through said two screens downward through said funnel. If the results are truly unexpected, how could one of ordinary skill in the art possibly find a combined ashtray screening structure that is probative of the expected result of two stacked screens above a funnel within a middle section of the body of an ashtray device. Therefore, this portion of the requirement to overcome is not persuasive.
Finally, the results do not appear to be truly unexpected. It appears, and Applicant does not provide any demonstration nor has Applicant argued any demonstrations, that additional structure or combination of structure is needed in practicing Lee modified by Bashur to arrive at the claimed combined structure. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
For the above reasons, the Examiner finds Applicant’s arguments not persuasive and the rejections of record are maintained.
Drawings
The replacement drawings were received on January 6, 2025. These drawings are unacceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 14a. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 6,161,549) in view of Bashur (US 2,044,377).
Regarding claim 4, Lee discloses an ash tray which can sanitarily control as well as automatically extinguish a smoking cigarette butt when it is put into the ashtray (abstract); the ashtray includes a tube body (100) into which cigarette butts are received, a cap (200) covering an upper opening portion of the tube body (100) and an aroma tube (300) coupled to a lower end of the tube body (100). The tube body (100) includes a porous member (110) having a mesh structure on which the cigarette butts are deposited. The porous member is inserted and fixed in a fixed groove (101). (Fig. 3, col. 1 lines 55-65) This reads over the combined ashtray sifter device of the claim.
The tube body (100) is composed of an upper tube body (130) (reads over a tubular top section) that is shown as an open tube in Fig. 4, of which a top end is coupled to the cap (200) (reads over a removable cap) and a lower tube body (140) (reads over a midsection that is an open tube) at the lower end of the upper tube body portion (130) to which the porous member (110) (reads over a screen) is coupled therein. As a result, the porous member (110) can be replaced by separating the tube body portion and porous member as shown in Fig. 4. (col. 2 lines 1-8).
The tube body (100) and the cap main body (210) can be formed to be spirally coupled by forming a male screw thread (reads over a thread on an outer bottom part) and a female screw (reads over an inner thread receiver) respectively on the portions contacting each other. (col. 2 lines 25-28)
Lee does not explicitly disclose an inner thread receiver located on the top inner part of the top section and a thread on an outer bottom part of the removable cap, the thread configured to screw into the inner thread receiver of the top portion. It would have been obvious to one having ordinary skill in the art at the time the invention was made to spirally couple the tube body (100) and the cap main body (210) by forming a male screw thread and a female screw respectively on the portions contacting each other as taught by Lee.
One of ordinary skill in the art would have a reasonable expectation of success using the spirally coupled portions as taught by Lee because the end result is the removable cap is threaded into the tube body which seals the upper end of the tube body and contains any cigarette butts deposited into the ashtray. See also annotated Fig. 4 below depicting the coupled portions of the ashtray of Lee for further clarification. This reads over the thread screws into the inner thread receiver of the top inner part of the top section.
Applicant presents no unexpected results regarding an inner thread receiver located on the top inner part of the top section and a thread on an outer bottom part of the removable cap.
The aroma tube (300) is a cylindrical form (reads over the bottom section being tubular), the aroma tube (300) is open opposite the sealed bottom section as shown in Fig. 4 (reads over having an open top section) and is sealed (reads over closed) to the lower end, which comprises a coupling rib (310) so to be coupled to a coupling groove (120) formed at the lower end of the tube body (100), not only stores the aromatic for removing a bad smell but also collects minute cigarette ashes filtered through the porous member (110) of the tube body. The tube body (100) and the aroma tube (300) can be formed to be spirally coupled by forming a male screw and a female screw respectively on the portions contacting each other. (Fig. 3, col. 2 lines 29-38)
The aroma tube (300) is according to the sectional form (i.e., an embodiment), coupled to the lower end of the tube body (100) as shown in Fig. 4. The aroma tube body (300) is composed of a top aroma tube (330) having a porous member (320) of a mesh structure (reads over a screen) equal to or smaller than the porous member (110) and a bottom aroma tube (340) which is sealed (reads over a closed bottom section) being coupled to the lower end of the top aroma tube (330). As a result, an aromatic (400) stored in the aroma tube (300) is easily replaced, being coupled and separated to each other, and the aromatic and cigarette ashes are prevented from mixing. (col. 2 lines 39-48)
Lee does not explicitly disclose the midsection defining an upper inner thread receiver and a lower inner thread receiver, the lower thread of the top section configured to screw onto the upper inner thread receiver of the midsection.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to spirally couple the upper tube body (130) and the lower tube body (140) by forming a male screw thread and a female screw thread respectively on the portions contacting each other as Lee discussed in col. 2 lines 29-38 above.
One of ordinary skill in the art would have a reasonable expectation of success using spirally coupled portions as taught by Lee to couple the upper tube body (130) and the lower tube body (140) because the end result is the tube body (100) can be separated to replace the porous member (110) as desired by Lee. (Fig. 4 col. 2 lines 6-9) See also annotated Fig. 4 below depicting the coupled portions of the ashtray of Lee for further clarification.
Applicant presents no unexpected results regarding a lower thread defined on an outer bottom part of the top section and the midsection defines an upper inner thread receiver.
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Lee does not explicitly disclose the midsection (the lower tube body 140 of Lee) defines a lower inner thread receiver and the open top section of the bottom section (the top aroma tube 330 of Lee) defining an outer thread, the outer thread configured to screw into lower inner thread receiver of the midsection by forming a male screw thread and a female screw respectively on the portions contacting each other as Lee discusses in col. 2 lines 29-38 above.
One of ordinary skill in the art would have a reasonable expectation of success using spirally coupled portions as taught by Lee to couple the top aroma tube to the lower tube body because the end result is coupled portions of lower end of the midsection and the open top section of the bottom section are removably coupled to each other and the aromatic (400) stored in the aroma tube (300) is easily replaced, being coupled and separated to each other, and the aromatic and cigarette ashes are prevented from mixing as taught by Lee. See also annotated Fig. 4 above depicting the coupled portions of the ashtray of Lee for further clarification. Applicant presents no unexpected results regarding the midsection defines a lower inner thread receiver and an outer thread defined on the open top section of the bottom section. This reads over the outer thread of the bottom section configured to screw into the lower inner thread receiver of the midsection.
Lee further discloses although the preferred embodiments of the invention have been disclosed for illustrative purposes, those skilled in the art will appreciate that various modifications, additions and substitutions are possible, without departing from the scope and spirit of the invention as disclosed in the accompanying claims (col. 3 lines 3-8).
However, Lee does not explicitly disclose the midsection having a funnel positioned within a lower portion of the midsection; and exactly two screens attached to the midsection and positioned sequentially above the funnel within the midsection, the two screens defining a stacked sifting structure that allows ash to pass through the screens and into the funnel.
Bashur teaches an ash tray, the opening into which shall be provided with a wire or other open or perforated screen which serves as support for cigars or cigarettes and which can be employed for removing the accumulated ashes (Fig. 1, col. 1 lines 26-31). The ash tray container is open at the top and the open end thereof is closed by means of a cover formed from a flange having a ring-like portion (7) with an inwardly extending flange (8) (Fig. 2, col. 2 lines 3-7). The opening in the cover is traversed by a wire mesh screen (9, 10) which is soldered or otherwise secured to the flange (8) (Fig. 1, col. 2 lines 11-16). The accumulated ashes on the end of the cigarette can be removed by brushing the end over the wire screen in an obvious manner (Fig. 2 col. 2 lines 22-28).
In Fig. 4, a slightly modified form is shown (col. 2, lines 44-45); wherein the cover has an inwardly extending flange (8a) that terminates in a downwardly extending frusto-conical flange (11) that tapers inwardly and downwardly (reads over the funnel). The opening in the cover is closed by a wire screen like that shown in Figs. 1 and 2. Whenever ashes are rubbed off from the end of a cigarette, they fall through the wire screen and through the opening in the frusto-conical flange and fall into the container (col. 3, lines 6-13). See Fig. 4 below, reproduced below.
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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 Lee to add a cover comprising a wire screen made of wire mesh and an inwardly extending flange (8a) that terminates in a downwardly extending frusto-conical flange (11) as taught by Bashur; and to further position said cover of Bashur attached within the lower tube (140) of Lee immediately below the porous member (110) of Lee. Doing so, would result in modified Lee comprising two screens, one above the other (reads over stacked), positioned above (reads over sequentially above) a funnel within the lower tube body such that whenever ashes are rubbed off from the end of a cigarette, they fall through the two screens of modified Lee, then through the opening in the frusto-conical flange onto the porous mesh (320) of Lee. Doing so, maintains separation of the ashes from the aromatic (400) as desired by Lee. This reads over exactly two screens attached to the midsection and positioned sequentially above the funnel within the midsection, the two screens defining a stacked sifting structure that allows ash to pass through the screens and into the funnel of Claim 1.
Regarding claim 5, modified Lee discloses the porous member (110) can be replaced by separating the tube body portion and porous member as shown in Fig. 4. (reads over configured to be removable) (Lee col. 2 lines 1-8), however modified Lee does not explicitly disclose the screens are configured to be removable, e.g., that the cover comprising a wire screen and an inwardly of Bashur is configured to be removable
It would have further been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to removably couple the wire screen into the cover of Bashur since the Courts have held that making known elements separable is within the skill of a person of ordinary skill in the art. See In re Dulberg, 129 USPQ 348 (CCPA 1961) (see MPEP § 2144.04). Doing so results in the two screens of modified Lee being configured to be removable which facilitates replacement of the screens by the user which is what Lee desires. This reads over Claim 5.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 6,161,549) in view of Bashur (US 2,044,377) as applied to claim 4 above, in view of Faison (US 2019/0216130).
Modified Lee discloses all the claim limitations as set forth above. Modified Lee does not explicitly disclose the device is made of a heat-resistant material.
Faison teaches an ashtray for multiple smoking products (Abstract). The ashtray can be composed of any material capable of receiving ash, debris, trash, refuse, and/or any other item deposited into the ashtray. In some embodiments, the ashtray can be composed of steel, including but not limited to galvanized steel, stainless steel, alloy steel, carbon steel, and/or any alloy of iron and carbon with or without other elements; aluminum, including but not limited to aluminum alloy with elements such as copper, magnesium, manganese, silicon, tin, zinc, and/or any other suitable element; non-metal material including but not limited to ceramics, clay, pottery, glass and/or crystalline ceramics, and/or any other ceramic material with or without other materials (e.g., fiber-reinforced materials embedded) therein; fire-resistant, fire-retardant, fire-safe, and/or heat-resistant wood; fire-resistant, fire-retardant, and/or heat-resistant plastic, polymers and/or plastic compounds; stone; bone; and/or
any other suitable material capable of serving as an ashtray, and/or any of its component parts. (¶[0032])
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 modified Lee to have the ashtray made of a fire-resistant material as a suitable material capable of serving as ashtray, and any of its component parts as taught by Faison which results in a material capable of receiving ash, debris, trash, refuse, and/or any other item deposited into the ashtray. Applicant’s as-filed specification recites stainless steel, aluminum, or high-grade plastic as heat-resistant materials, ensuring safety and longevity during regular use. (¶[0016-0017])
Based on this evidence, one of ordinary skill in the art before the effective filing date of the claimed invention is reasonably suggested the heat-resistant materials of Faison are durable, ensuring safe and long-lasting use. The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011). This reads over Claim 6.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. Patent 2,505,351 to Dickson, U.S. Patent 2,574,813 to Cadrain, U.S. Patent 2,786,476 to Garson, U.S. Patent 4,142,537 to Fenelon, U.S. Patent 6,145,510 to Clark, and U.S. 8,113,355 to Peterson.
Conclusion
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