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 .
Claim Rejections - 35 USC § 112
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.
Claim 23 is 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.
Applicant has amended the claim set to now include a new claim 23, which recites, in part, “…the divider is located substantially in a plane of an end surface of the linear tube…”. Under MPEP 2173.05(b), relative terms or terms of degree such as “substantially” are indefinite unless the specification provides a clear standard for measuring the scope or variance. As the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, the term “substantially” in new claim 23 renders the boundaries of the spatial relationship vague and indefinite.
Further, Applicant recites, in claim 23, “…the divider and the exterior circumferential ridge are axially adjacent on the bowl…”; however, “axially adjacent” means positioned next to each other along the longitudinal axis. If the ridge acts as the stop against the end surface of the linear tube, placing the divider “axially adjacent” to the ridge inherently places the divider near or flush with that end surface upon insertion. In sum, the claim does not appear to clearly define the thickness or axial span of the ridge relative to the divider.
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 3, 6-7,10-11, 14-16, 18-19 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Gonsalves (US. Pat. App. Pub. 2009/0235939) in view of WO 2015/184744 (English Mechanical Translation) (hereinafter referred to as “Wang”) and GB 452986 (hereinafter referred to as “Gibson”).
Regarding independent claim 3, Gonsalves discloses a linear pipe (100) (read: smoking device) which is comprised of a first tubular member (102) (read: linear tube). As evident from, for example, Fig. 1, the tube (100) has a mouthpiece end (106) (read: draw end) through which a bore (122) (read: draw end aperture) extends. Said tube (100) also has a smoke chamber (110) (read: bowl end) into which the bore (122) (read: bowl end aperture) also extends (see para. [0022] and Fig. 1) (corresponding to the claimed “[a] smoking device comprising: a linear tube having a bowl end having a bowl end aperture and a draw end having a draw end aperture”).
In one embodiment of Gonsalves, a second tubular member (104) can be provided which defines a substance chamber (read: a bowl). As seen in Figure 6, this substance chamber can be adapted to hold a smokeable material (600) (read: material holding space), and has a “smokable material end” and an opposite “tube insertion end/interior volume”. Separating/in between the two “ends” of this second tubular member (104) is a filter member (108) (read: divider) which may comprise a mesh screen having openings (read apertures) and may be permanently coupled (read: integral) with the second tubular member (104) (see paras. [0028], [0035], [0048] and Fig. 6). Gonsalves fails to explicitly disclose that the filter member (108) (i.e., the mesh screen with openings) of the bowl is “formed integrally of the bowl as a unitary piece”; however, as clear from the Gibson reference, forming a bowl and its internal perforated partition (read: divider) screen as an integral, unitary piece is a known manufacturing option in the smoking pipe art. Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to form Gonsalves’ bowl and filter member screen (108) as a single unitary piece to eliminate unnecessary manufacturing and assembly steps (corresponding to the claimed “a bowl comprising a heat resistant material, the bowl having a smoking material end, a tube insertion end, and a divider formed integrally of the bowl as a unitary piece separating the smoking material end material holding space and the tube insertion end interior volume, the divider defining at least one aperture such that the material holding space and tube insertion end interior volume are in airflow communication”).
Also, Gonsalves states that its first and second tubular members (102, 104) are coupled together via complementary threaded members (118) with the first tubular member (102) being provided with a female fastening member and the second tubular member (104) being provided with a male fastening member; however, it is also stated that the first and second tubular members can be coupled via a press-fit mechanism. In either scenario, as clearly seen in Fig 6, the Gonsalves second tubular member (104) includes a “lip” (read: an exterior ridge) formed on the “tube insertion end” side of the filter member (108) in the second tubular member (104), with the “tube insertion end” sized to fit in the “bowl end aperture” up until the “lip” and the distal-most end of the first tubular member are in contact with each other. This results in the “material holding space” for holding smokable material (600) protruding from the “bowl end” of the first tubular member’s smokable chamber (bowl end) (bowl and lip “in contact”). (see para. [0027] and Fig. 6) (corresponding to the claimed “wherein the smoking material end and the tube insertion end define an exterior circumferential ridge and the bowl is inserted into the bowl end aperture to the exterior ridge such that the smoking material end material holding space protrudes from the bowl end”).
The modified Gonsalves pipe discloses that its first tubular member (102) (read: linear tube) may feature a filter member (108) similar to that which is provided in the second tubular member (104). It also states that any known (read: longitudinal) additional/second filter members which would be fitted inside the tubular member (102) at the far draw end side of the same (see para. [0046]) (corresponding to the claimed “a filter piece longitudinally oriented within the linear tube proximate the drawn end, the filter piece defining an interior holding space”). And while the Gonsalves pipe is silent as to whether its first tubular member (102) further includes an “activatable flavor piece” located within the same space where the second/additional filter is disposed, the Wang reference shows that tubular smoking devices may further contain a flavorant within the tube, specifically within a “filter” (read: absorbent material). Wang discloses that fine capsule(s) (33) (read: crushable container) containing the fragrance (read: flavor piece/activatable flavor element) can be placed on a filter (34) (read: filter piece defines a space) and, in use, the filter (34) is squeezed and the capsule(s) crushed to release the fragrance (read: flavoring liquid) when needed (see English mechanical translation, and Fig. 12). It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen to include the flavor capsule(s) (33) of Wang in the filter of the Gonsalves pipe in order to provide fresh, user-activated flavor release without storage degradation (corresponding to the “an activatable flavor piece located within the filter piece interior holding space”) the “wherein the filter piece comprises an absorbent material located near the draw end” recitation of claim 15; and the “wherein the activatable flavor element comprises a crushable container and flavoring liquid within the crushable container” recitation of claim 16).
Regarding claim 6, per Figure 6 of Gonsalves, the smoke chamber (110) (bowl draw end) of the first tubular member (102) has an “exterior peripheral dimension” such that the “tube insertion end” of the second tubular member fits within said smoke chamber (110) via press-fit (read: slidably) (corresponding to the clamed “wherein the tube insertion end comprises an exterior peripheral dimension and the bowl end aperture comprises a peripheral aperture dimension such that the tube insertion end slidably fits within the bowl end”).
Regarding claim 7, Gonsalves discloses that its mouthpiece (120) - and first tubular member (102) (tube) may be comprised of the same material of construction. It also states that said material can be “disposable” (see para. [0033]) (corresponding to the clamed “wherein the tube comprises a disposable material”).
Regarding claim 8, Gonsalves discloses that its linear pipe (100) may also comprise a second filter member (108) (read: filter piece) which is coupled with the first tubular member (102). As seen in Fig. 3, it is clear that this second filter member (108) is located at the “draw end” of the first tubular member (102) (tube) (corresponding to the claimed “further comprising a filter piece located at the draw end”).
Regarding claims 10 and 14, as stated above, as seen in Fig 6, the Gonsalves second tubular member (104) includes a “lip” (read: an exterior ridge) formed on the “tube insertion end” side of the filter member (108) in the second tubular member (104), with the “tube insertion end” sized to fit in the “bowl end aperture” up until the “lip” and the distal-most end of the first tubular member are in contact with each other. This results in the “material holding space” for holding smokable material (600) protruding from the “bowl end” of the first tubular member’s smokable chamber (bowl end) (bowl and lip “in contact”). In order for the linear pipe (100) to operate properly, an airtight “seal” would inherently be formed between the bowl two tubular members (102, 104) to provide adequate “draw” (suction) through the bore (122) (see Fig. 6) (corresponding to the “wherein the bowl end and the tube insertion end are dimensioned to form a seal and the exterior ridge of the surface of the bowl end are in contact” recitation of claim 10; and the “wherein the tube and bowl are sufficiently air tight such that an air draw on the draw end causes air to be drawn into the bowl end and the egress from the draw end” recitation of claim 14).
Regarding claim 11, both the first and second tubular members of Gonsalves have a diameter (read: a diameter dimension) (see para. [0025]) (corresponding to the claimed “wherein the tube, bowl end and tube insertion end comprise a diameter dimension”).
Regarding claim 18, the use of the modified Gonsalves pipe, which includes the crushable, flavor-capsule-containing filter option (as discussed above) would necessarily follow the claimed steps, i.e., smokable substance (600) tobacco into the substance chamber; crushing the capsule(s) to release fragrance (see Wang) which would inherently be absorbed into the surrounding filter option; lighting the smokable substance (600) placed in the substance chamber - which would not burn the “pack end” of the second tubular member (104) itself due to the manner in which the substance chamber overlaps a “lip” of the “pack end” of the second tubular member (104); and drawing smoking from the lit smokable substance such that said smoke necessarily mixes with the fragrance released from the crushed capsules (corresponding to the claimed “[a] method for operating the smoking device of claim 17 comprising: placing smoking material in the material holding space; crushing the activatable flavor element to release the flavoring liquid; absorbing the flavor liquid in the absorbent material; igniting the smoking material without burning the tube bowl end; and drawing smoking from the ignited smoking material such that the smoke mixes with the released flavors”).
Regarding claim 19, from Fig. 6 of Gonsalves it is clear that the exterior peripheral dimension of the first tubular member (102) and the second tubular member (104) are equal (corresponding to the claimed “wherein an exterior peripheral dimension of the bowl smoking material end and an exterior dimension of the tube equate”).
Regarding claim 23, the modified Gonsalves pipe fails to show “wherein the divider and the exterior circumferential ridge are axially adjacent on the bowl such that, when the bowl is inserted into the bowl end aperture to the exterior circumferential ridge, the divider is located substantially in a place of an end surface of the linear tube at the bowl end”; however, Gonsalves explicitly discloses that its second tubular member (104) (bowl) includes a lip/ridge formed on its outer surface, and a filter/divider (108) positioned adjacent to the lip/ridge. When the second tubular member (104) is inserted into the first tubular member (102) (linear tube) until the lip/ridge contacts the distal end surface of the first tubular member (102), the filter/divider (108) sits directly adjacent to or substantially in the plane of the end surface of the linear tube (102) (see Fig. 6, paras. [0027]-[0028]). To the extent that Gonsalves does not explicitly disclose that the filter/divider (108) is located strictly “substantially in a plane” of the end surface of the linear tube (102), aligning an internal divider/partition axially with the seating interface/end surface of an outer receiving tube represents a routine design choice and optimization of relative spatial locations of known components (see MPEP 2144.04). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have located the filter/divider (108) axially adjacent to the exterior ridge and substantially in the plane of the tube’s end surface in order to optimize use of the internal volume, minimize dead air space between the bowl interior and the main tube bore, and ensure proper structural alignment upon full insertion.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gonsalves (US. Pat. App. Pub. 2009/0235939) in view of WO 2015/184744 (English Mechanical Translation) (hereinafter referred to as “Wang”), further in view of Born et al (US. Pat. App. Pub. 2016/0183589).
Regarding claims 12 and 17, the modified Gonsalves pipe does not specifically disclose “paper” among the materials that it envisions its first tubular member (102) to be constructed of; however, Born et al also discloses a (linear) smoking device and teaches that its stem (100) (read: tube) can be constructed of a paper tube material (see para. [0033]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided this “paper tube” material in which to construct the first tubular member of Gonsalves as such is known for its use in smoking pipe manufacture (corresponding to the “wherein the disposable material comprises paper” recitation of claim 12; and the “wherein the tube comprises crushable paper” recitation of claim 17).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but most are moot in view of the new grounds for rejection, presented above, which were necessitated because of the amendments made to the claims, filed on April 15, 2026. However, the outstanding argument that Applicant asserts regarding use of the Wang reference to reject the claims is unpersuasive.
Applicant asserts that because Gonsalves already has a flavored mesh, one of ordinary skill in the art would have no reason to use Wang’s crushable capsule; however, the Examiner disagrees. Under KSR Int’l Co. v. Teleflex Inc., and MPEP 2143(A)(Example 1), a reference does not need to be “defective” for one of ordinary skill in the art to modify it. Improving an existing feature (e.g., transitioning from a static flavored mesh that loses potency over time to on-demand, user-activated crushable flavor capsules) is a well-established rationale. Squeeze-to-crush capsules preserve volatile flavor compounds until the exact moment of consumption, preventing flavor degradation during storage - a clear technical advantage over pre-flavored static meshes. Hence, the above-stated prior art rejection that includes the Wang reference is deemed proper and will be maintained.
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 DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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