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 .
Response to Amendment
The Response of 10/24/2025 is entered. Claims 1, 9-10, 14 and 20 are amended. The amendments to claims 9-10 overcome the objections to these claims, and thus they are withdrawn.
Response to Arguments
Applicant’s arguments in light of the claim amendments, see Remarks, Anticipation and Obviousness Rejections based on Chillum to Dab Straw starting on page 7-9, filed 10/24/2025, with respect to these rejections have been fully considered and are persuasive. Thus, these rejections have been withdrawn.
Applicant’s remaining arguments filed 10/24/2025 have been fully considered but they are not persuasive.
Examiner has rejected the Application based on an offer to sell outside the 1 year grace period before the earliest effective filing date of the Application.
Evidence was shown of an offer to sell Applicant’s invention on 12/06/2021, where the subject of the offer to sell is the device that Applicant seeks to patent. It is regrettable when an otherwise patentable invention is barred from patenability by an offer to sell outside the grace period.
Examiner sympathizes with Applicant.
Applicant Representative attempted to traverse the rejection by responding to the rejection with an affidavit. The affidavit demonstrates that the Applicant had involvement with the product marketing around the time when the product was on sale. This affidavit is not effective in persuading the Examiner that an impermissible offer to sell did not occur. It is noted that the video was used as evidence of what was on sale outside the grace period, not as prior art. The top view image in the offer to sell, and the top view image in the video are identical. Examiner, at the time of the last rejection, was unable to recover additional images from the offer to sell on 12/06/2021.
“An impermissible sale has occurred if there was a definite sale, or offer to sell, more than 1 year before the effective filing date of the claimed invention and the subject matter of the sale, or offer to sell, fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art. Ferag AG v. Quipp, Inc., 45 F.3d 1562, 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). MPEP 2133.03(b) ”On Sale”. This highlights that it is the subject matter of the offer to sell, rather than the disclosure of the offer, which triggers the bar to patenting.
Applicant and Applicant Representative have a duty to disclose all information regarding this sale to the Examiner, to facilitate the examination of the application. MPEP 2000.01, and such duty of disclosure includes a duty of reasonable inquiry regarding information and statements material to patentability. Examiner has brought to the attention of Applicant and Applicant Representative the high likelihood that an impermissible offer to sell was made, which would bar the patentability of the invention. Information regarding the offer to sell is understood to be within the possession of Applicant, and Applicant Representative is required to inquire regarding the offer to sell and provide Examiner with that information. It is unclear if Applicant is aware of their duty, though records indicate that they have submitted design patents, provisional patents, and nonprovisional patents since 2014 that number over 20 applications, suggesting a reasonable familiarity with the patenting process – which always includes the duty to disclose. But even if they were previously unaware, Applicant Representative is charged with informing them and ensuring that they fulfill this duty. MPEP 2016. Applicant Representative should know that a finding of a violation of the duty of disclosure with respect to any claim in an application or patent, renders all of the claims thereof unpatentable or invalid, MPEP 2016. Failing to disclose the information regarding the offer to sale is a violation of the Applicant duty to disclose.
Examiner has revisited the Wayback Machine resource to review again the offer to sell of 12/06/2021. Please also see the following additional evidence that Applicant Invention was on sale 12/06/2021, see attached NPLs, with selected depictions provided in the action below.
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The evidence that the invention was offered to sell, more than one year before the filing date of the Application is convincing. Applicant arguments are not persuasive.
Further, in conjunction with reviewing the offer to sell on 12/06/2021, and having reviewed other pending Applications by Applicant during a double patenting review, other applications appear to be similarly barred from patentability. In particular, Application 18165088 is noted that this device too appears to have been on sale outside the 1 year period prior to the Application filing date of 02/06/2023.
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Regardless of whether Applicant and Applicant Representative know of their duty of disclosure and candor, it must be fulfilled throughout the examination of their Applications. It seems likely that if the prior offer’s to sell were uncovered in litigation, a finding of bad faith would result. This information is not easily uncovered by the Examiner. Because Applicant necessarily has knowledge regarding these offers to sell and has a duty to disclose the information to the Examiner because it is material to the patentability of their invention, typically an Examiner would have no reason to look for it. However, a litigant would be motivated to find it and very likely would. Preventing a patent that would be found invalid from issuing rather than during litigation is in the best interest of the Applicant.
Examiner has brought to the attention of Applicant and Applicant Representative evidence of offers to sell the invention in this and other Applications that are pending. Applicant and Applicant Representative are reminded of their duty of candor and disclosure regarding all information material to patentability, including offers to sell their inventions for all pending Applications. Examiner stresses that failing to do so may result in adverse consequences if an application were to issue, when Applicant had information material to patentability such as knowledge of a prior sale and this information was withheld during examination.
Applicant arguments have been fully considered but are not persuasive. The rejection of the claims based on an offer to sell is maintained.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Flip Handpipe to Straw” offer for sale 12/06/2021, as evidenced by “How To Use Handpipe To Straw”, YouTube video publication date 5/11/2022.
Regarding claim 1-20, Flip discloses a multi-colored pipe on sale for $19.99, comprising a first body in comprising a pipe with a first bowl and a first stem, and a second body with a second bowl and a second stem, the second bowl seated within the first bowl, and the second stem extending through the first bowl, aligned with and extending away from the first stem.
How To Use Handpipe evidences that the features of Flip that were present in the device at the time of the offer for sale included every limitation of every claim. How To Use Handpipe evidences that Flip was an offer for sale of an airflow device that could be used in two configurations, one for dry herbs and one for concentrates, with four parts, an silicone pipe (with a silicone stem and a silicone bowl), a glass pipe (with a glass bowl and a glass stem), a removably attachable cover for the silicone bowl, and a removably attachable silicone jar that attaches to the bottom of the silicone bowl and is configured to store concentrates. How To Use Handpipe evidences that the glass pipe is configured to be inserted into the silicone pipe in two configurations, in both configurations the glass bowl seated in the silicone bowl but in one configuration the glass stem extends into the silicone stem and in the second the glass stem extending through a hole in the silicone bowl and away from the silicone stem. How To Use Handpipe evidences that Flip anticipates every limitation of claims 1-20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Handpipe To Straw Part 1, https://www.whiterhinoproducts.com/collections/dry-herb-glass, web capture - internet archive Wayback Machine, publication date 12/06/2021, retrieved on 11/02/2025;
Handpipe To Straw Part 2, https://www.whiterhinoproducts.com/collections/dry-herb-glass, web capture - internet archive Wayback Machine, publication date 12/06/2021, retrieved on 11/02/2025;
Glass Diamond Spinner Carb Cap, (part 1), https://www.whiterhinoproducts.com/collections//newest-products/products/glass-diamond-spinner-carb-cap" web capture - internet archive Wayback Machine, publication date 12/06/2021, retrieved on 11/02/2025;
Glass Diamond Spinner Carb Cap, (part 2), https://www.whiterhinoproducts.com/collections//newest-products/products/glass-diamond-spinner-carb-cap" web capture - internet archive Wayback Machine, publication date 12/06/2021, retrieved on 11/02/2025; and
Glass Diamond Spinner Carb Cap, (part 3), https://www.whiterhinoproducts.com/collections//newest-products/products/glass-diamond-spinner-carb-cap" web capture - internet archive Wayback Machine, publication date 12/06/2021, retrieved on 11/02/2025.
These references cumulatively show that Applicant has not satisfied their duty of disclosure in this and other pending Applications currently under examination, and that Applicant has offered to sell the invention more than 1 year before the effective filing date of the Application.
These references provide convincing evidence that Applicant made an impermissible offer to sell on 12/06/2021, which is an absolute bar to patenting their invention based on their Application Date of 02/06/2023.
THIS ACTION IS MADE FINAL. 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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747