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.
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.
Claims 11 and 12 are 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.
Claim 11 “a housing comprising; and” but does not recite what the housing comprises. It appears the limitation(s) have been omitted therefore the claim is indefinite.
Claim 12 recites the limitation "the open configuration" in line 1. There is insufficient antecedent basis for this limitation in the claim as the claim depends from claim 10. For purpose the purpose of this Office action said claim has been treated as if depending from claim 11. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-7 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thal (US 4,944,317).
Regarding claim 1, Thal discloses a tobacco portion (7) intended to be smoked in a pipe and comprising a metal-foil cup (9) whose outer shape corresponds substantially to the shape of the cavity of the pipe bowl. In order to ensure that the tobacco retains its moisture content and aromatic flavour when stored over long periods of time, the cup is isolated from atmosphere by means of removable sealing means (16, 18) (abstract). The pipe (1) has a pipe bowl (5) (anticipates a bowl pipe); the bowl cavity (8) (anticipates a bowl cavity of Claim 1) accommodating the tobacco portion (7) (Fig. 1, col. 2 lines 37-49). The pipe and tobacco portion anticipates the system of Claim 1.
Each tobacco portion (7) comprises a cup-shaped container (9) which is produced by shaping an impervious metal foil, e.g. aluminum foil, which will withstand the heat generated by combustion of the tobacco (10) (anticipates a smoking material), which tobacco may completely or partially fill the container (9). (Fig. 2, col 2 lines 52-60) This anticipates a container comprising a prefilled amount of smoking material of Claims 1.
Claim 1 recites the functional language: “adapted to receive and retain the container, the bowl pipe adapted for smoking the smoking material when the container is inserted within the bowl cavity”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Regarding claim 2, Thal discloses the tobacco portions may be smoked in a conventional pipe (col. 2 lines 44-46) and the container (9) is placed in the bowl cavity of the pipe (1) (col. 2 lines 64-65) therefore, a person of ordinary skill in the art would be reasonably suggested that a container (9) placed in the bowl cavity of a conventional pipe (Fig. 1) must be removable from the bowl cavity (5) of the pipe (1) in order for the conventional pipe to be reused to smoke a different container (9). Further, Thal does not disclose the container (9) cannot be removed from the bowl cavity therefore, there is nothing in Thal preventing a user from removing the container (9) once inserted within the bowl cavity. This anticipates the container is removably inserted within the bowl cavity.
Regarding claims 3 and 4, Thal discloses the container (9) is placed in an impervious container (18) during storage, the container (18) of the illustrated embodiment having a circular flange (15) which encircles the container opening and which is heat-sealed or glued to a cover sheet (FIG. 4), a strip (FIG. 2) or a sheet 16. The cover sheet (16) or the like may comprise a metal foil, a plastic foil or an airtight laminate. (col 3 lines 12-24) Container (18) and cover sheet (16) anticipate an enclosure of Claim 3. The container (9) has an opening (14) remote from the container bottom (13). (Fig. 2, col 3 lines 5-7)
Thal further discloses the cup (9) and the cover sheet (16) are joined together in a manner which enables them to be readily separated. (col 3 lines 22-24) This anticipates the enclosure removably attaches to the container of Claim 3, anticipates an enclosure attached to the container wherein the enclosure removably detaches from the container of Claim 4. As shown in Fig. 2, this anticipates the enclosure encloses and seals one or more openings of the container with the prefilled amount of smoking material contained therein of Claims 3 and 4.
Regarding claim 5, Thal discloses the cover sheet (16) or the like may comprise a metal foil, a plastic foil or an airtight laminate. The cup (9) and the cover layer (16) are joined together in a manner which enables them to be readily separated. (col 3 lines 18-24)
One of ordinary skill in the art would be reasonably suggested physical deformation of the cover (16) must be present upon readily separating the cup (9) and the enclosure cover layer (16) that must render the enclosure cover layer (16) inoperable for reattachment to the container (18) as the cover layer (16) is heat-sealed or glued to the container (18) as discussed in col. 3 lines 12-24 of Thal. This anticipates Claim 5.
Regarding claim 6, Thal discloses container (9) opening (14) (anticipates an open top side of Claim 6) remote from the container bottom (13) (anticipates a container base wall of Claim 6); the top of the cup (e.g., container) (9), the bottom part of container or cup (9) has perforations (17) provided therein (anticipates a plurality of openings formed through a base wall of the container of Claim 6). (Fig. 3 col. 5-10)
Regarding claim 7, Thal discloses container (18) comprises a base enclosure portion adapted to cover and enclose the base wall (Fig. 2) and cover sheet (16) (anticipates top enclosure portion) adapted to cover and enclose the open top side. (Fig. 4, col 3 lines 12-19)
Regarding claim 16, Thal discloses a plurality of tobacco portions (7) (e.g., pods) mounted on a strip-like cover sheet (16) illustrated in Figs. 2 and 3 (anticipates a pod pack). (col. 3 lines 24-26) Each tobacco portion (7) comprises a cup-shaped container (9) which is produced by shaping an impervious metal foil, e.g. aluminum foil, which will withstand the heat generated by combustion of the tobacco (10) (anticipates a smoking material), which tobacco may completely or partially fill the container (9). (Fig. 2, col 2 lines 52-60) This anticipates a plurality of containers comprising a prefilled amount of smoking material of Claim 16.
Claim 16 recites the functional language: recites the functional language: “adapted to receive and retain a single container, the bowl pipe adapted for smoking the smoking material when the single container is inserted within the bowl cavity”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Regarding claims 17 and 18, Thal discloses when a plurality of tobacco portions (7) are mounted on a strip-like cover sheet (16), as in the case of the embodiment illustrated in FIGS. 2 and 3, the strip may be provided with airtight weakenings, (anticipates the containers are physically attached to one another via one or more attachment components of Claim 17 and the one or more attachment components are integrated on or within the enclosures of Claim 18) so as to form a so-called blister pack in which the seal is broken by pressing against the bottom of the outer container (18). This anticipates are operable for physically detaching the containers from one another individually. Such packs are generally known and are used for packeting, for instance, tablets. (col 3 lines 24-31) This anticipates Claims 17 and 18.
Regarding claim 19, Thal discloses a tobacco portion (7) intended to be smoked in a pipe and comprising a metal-foil cup (9) whose outer shape corresponds substantially to the shape of the cavity of the pipe bowl. In order to ensure that the tobacco retains its moisture content and aromatic flavour when stored over long periods of time, the cup is isolated from atmosphere by means of removable sealing means (16, 18) (abstract). The pipe (1) has a pipe bowl (5) (anticipates a bowl pipe); the bowl cavity (8) (anticipates a bowl cavity of Claim 19) accommodating the tobacco portion (7) (Fig. 1, col. 2 lines 37-49). The pipe and tobacco portion anticipates the method of Claim 19.
Each tobacco portion (7) comprises a cup-shaped container (9) which is produced by shaping an impervious metal foil, e.g. aluminum foil, which will withstand the heat generated by combustion of the tobacco (10) (anticipates a smoking material), which tobacco may completely or partially fill the container (9). (Fig. 2, col 2 lines 52-60) This anticipates a container comprising a prefilled amount of smoking material of Claims 19.
Claim 19 recites the functional language: “adapted to receive and retain the container, the bowl pipe adapted for smoking the smoking material when the container is inserted within the bowl cavity”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Regarding claim 20, Thal discloses a plurality of tobacco portions (7) (e.g., pods) mounted on a strip-like cover sheet (16) illustrated in Figs. 2 and 3 (anticipates a pod pack). (col. 3 lines 24-26) Each tobacco portion (7) comprises a cup-shaped container (9) which is produced by shaping an impervious metal foil, e.g. aluminum foil, which will withstand the heat generated by combustion of the tobacco (10) (anticipates a smoking material), which tobacco may completely or partially fill the container (9). (Fig. 2, col 2 lines 52-60) This anticipates a plurality of containers comprising a prefilled amount of smoking material of Claim 20.
Thal discloses when a plurality of tobacco portions (7) are mounted on a strip-like cover sheet (16), as in the case of the embodiment illustrated in FIGS. 2 and 3, the strip may be provided with airtight weakenings (anticipates attachment components) so as to form a so-called blister pack in which the seal is broken by pressing against the bottom of the outer container (18). This anticipates the containers are physically attached to one another via one or more attachment components and one or more attachment components are operable for physically detaching the containers from one another individually. Such packs are generally known and are used for packeting, for instance, tablets. (col 3 lines 24-31).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Thal (US 4,944,317) as applied to claim 1 above.
Thal discloses the cavity (8) of the pipe bowl must have a corresponding shape to the tobacco portion (7). (col 3 line 32 – col 4 line 6) Thal does not explicitly disclose wherein the container and the bowl cavity have a rectangular geometry.
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to make the different portions of the pipe of whatever form or shape was desired or expedient such as the container and bowl cavity having a corresponding shape as taught by Thal. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See In re Dailey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Thal (US 4,944,317).
as applied to claim 1 above, in view of Whitson, JR. (US 2021/0321661).
Thal discloses all the claim limitations as set forth above. Thal does not explicitly disclose the smoking material comprises ground cannabis flower.
Whitson, JR. teaches a smoking cartridge configured to removably engage with bowl of a smoking apparatus (abstract) and further teaches cannabis is an example of a smoking material. (¶[0003]) In a first embodiment of the smoking cartridge (100) with the smoking material (200). In an embodiment the smoking material (200) is cannabis flower material. When the cannabis flower material (200) is used as the smoking material in the smoking cartridge (100), the stem and seed are removed from the cannabis flower, the cannabis flower is ground to fine particles, and the cannabis particles are placed in a pre-measured amount in the receptacle (102) of the smoking cartridge (100) prior to distribution or use by a user which eliminates the user’s need for the above cannabis grinding. (¶[0046])
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 Thal by using ground cannabis flower as the smoking material because Whitson, JR. establishes ground cannabis flower as a smoking material. This anticipates the smoking material limitation of the claim.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Thal (US 4,944,317).
as applied to claim 1 above, in view of Goldstein et al. (US 2018/0263288).
Thal discloses all the claim limitations as set forth above. Thal does not explicitly disclose the container is made of a glass material.
Goldstein teaches an electronic vaporizer for herbal or medicinal compositions which may be in solid or liquid form (abstract). The vaporizer may comprise a heating chamber to house the at least one pre-filled cartridge (i.e., a container) which may contain liquid or solid medicinal materials within. (¶[0086]) The cartridge (2) may be made with SAE 304 SS stainless steel (A2 stainless steel), alumina oxide ceramic (Al.sub.2O.sub.3), peek high temperature plastic, titanium, graphene, borosilicate glass, or other materials suitable for this purpose. The material used to make cartridge (2) may be capable of heat conduction while maintaining structural integrity during heating cycles and long-term exposure to heat and preferably do not contain materials that may be leached out into the content of the cartridge (2), (¶[0086])
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 Thal with at least the tobacco containing container of Thal made from borosilicate glass as taught by Goldstein. Doing so results in the body of Thal being capable of maintaining structural integrity during heating cycles and long-term exposure to heat and not leaching materials out into the tobacco material contained of the container of Thal. This reads over the glass material limitation of the claim.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Thal (US 4,944,317) as applied to claim 1 above, in view of Weeks (US 4,230,224).
Thal discloses all the claim limitations as set forth above.
Regarding claim 13, Thal does not explicitly disclose the lighter case adapted to receive and retain a lighter, the lighter case comprising a first attachment component to removably attach to a second attachment component integrated on or within the bowl pipe.
Weeks teaches a combination cigarette and lighter case in which a lighter holder is removably mounted on a cigarette case (abstract); the combination cigarette and lighter case includes a lighter holder (26) (reads over a lighter case) which is adapted to receive a disposable lighter (28). (Fig. 1, col. 3 lines 9-11). The combination cigarette and lighter case includes means for removably securing the lighter holder to the cigarette case. Preferably, the securing means comprises a first set of fasteners on the cigarette case which is reasonably engageable with a second set of fasteners on the lighter holder. (col. 3 lines 27-32). An embodiment incorporates a pair of magnets (62) and (64) mounted on the back of cigarette case (20) and pair of magnetically attractable elements (reads over a first attachment component) (66) and (68) mounted on lighter holder (26). (Fig. 7, col. 3 lines 60 - 63)
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 Thal and include a lighter holder which is adapted to receive a disposable lighter wherein the lighter holder incorporates a set of fasteners that are magnetically attractable elements mounted on the lighter holder as taught by Weeks which provides a means for removably securing the lighter holder to a set of magnets on a cigarette case.
Claim 13 recites the functional language: “adapted to removably attach to a second attachment component integrated on or within the bowl pipe”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Regarding claim 14, Thal does not explicitly teach the first attachment component and second attachment component comprise magnets.
Weeks teaches the lighter holder set of fasteners are magnetically attractable to a set of magnets on the cigarette case. (Fig. 7, col. 3 lines 60 - 63) Applicant’s as-filed specification recites magnets as attachment components on both the bowl pipe ¶[00113] and on the lighter case ¶[00136].
Based on this evidence, one of ordinary skill in the art before the effective filing date of the claimed invention is reasonably suggested to practice the invention of Thal modified by Weeks such that the lighter holder magnetically attractable set of fasteners are magnets.
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).
The second attachment component is not positively recited by the claims and therefore, Thal modified by Weeks still properly anticipates Claim 14.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Thal (US 4,944,317) in view of Weeks (US 4,230,224) as applied to claim 13 above, in view of Wynecoop (US 2,495,882) and Schretter (US 2020/0323262).
Modified Thal teaches all the claim limitations as set forth above. Modified Thal does not explicitly teach a pod case or a travel case.
Regarding the pod case, Wynecoop teaches an improved tobacco pellet (1), consists of a pre-determined quantity of tobacco which is molded under sufficient pressure to form a pellet or shaped mass of tobacco (2) (reads over the container); the pellet is packed in a jacket (3) with a cap (8) formed of wax paper (jacket (3) and cap (8) combined read over the container). (col. 1 lines 36-42, 56-58) The pellets are packed for sale in a container (10) (reads over a pod case limitation of the claim). (Fig. 4, col. 2 lines 1-2)
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 Thal to include a container (10) (the pod case of Wynecoop) as taught by Wynecoop which results in multiple containers of pre-determined quantity of tobacco packaged in a single container for use by the smoker.
Regarding the travel case, Schretter teaches a container for storage of smoking material and related smoking accessories (abstract). The invention of Schretter stores a smoking material inside of cavity inside the body of the container, and also stores a cigarette sized pipe; some versions may include additional cavities in the body of the container for convenient storage of accessories such as a lighter, an extra pipe or pipes, a convenient removable metal rod cleaning tool built into the body portion. ¶[0014]) Schretter additionally teaches it is understood that the invention is not limited in its application to the details of construction and to the arrangements of the components set forth in the description or illustrated in the drawings; the invention is capable of other embodiments and of being practiced and carried out in various ways. (¶[0072]) The present invention generally relates to a container for storage of smoking material such as, for example, tobacco or the like, and related smoking accessories. ¶[0073])
The body of the container (1) (reads over a travel case) contains several cavities; the first cavity (6) has a larger opening (4) at the top of the cavity in order to funnel a smoking material to a material storage cavity (6). A second cavity (2) in the body stores a cigarette sized pipe (commonly known as a bat, one hitter, hitter, and many other slang terms depending on the region) (the cigarette sized pipe reads over a bowl pipe); several chambers that together make up the material storage cavity (6). (Figs. 1-6, ¶[0072]). (Figs. 7-9, ¶[0074])
Additionally, 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 Thal to include a container as taught by Schretter for storage of smoking material, such as the pod case of Wynecoop, a cigarette sized pipe (e.g., a bowl pipe) and related smoking accessories, since Schretter teaches the invention (e.g., the container 1) is not limited in its application to the details of construction and to the arrangements of the components set forth in the description or illustrated in the drawings; the invention is capable of other embodiments and of being practiced and carried out in various ways. (¶[0072])
Claim 15 recites the functional language: “adapted to receive and contain a plurality of containers corresponding to the container” and “adapted to receive and contain the bowl pipe, the lighter case with the lighter positioned therein, and the pod case”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Allowable Subject Matter
Claims 11 and 12 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and any resolution of §112 rejections against these claims, if applicable.
Regarding claim 11, Kurbanov (US 2022/0211098) teaches a multi-compartment smoking pipe (1) comprising a main storage body (10) (i.e., a housing), a movable clip (50) (i.e., a sliding member) and an air valve plate (100); the moveable storage clip (50) inserts inside the hollow interior (8) of the main storage body (10). The movable storage clip (50) may have a plurality of hollow compartments (62) however a greater or fewer number of hollow compartments (62) may be implemented in the design depending on the desired embodiment (¶[0030]). The moveable storage clip (50) is located between the top (2) of the main storage housing (10) and the air flow plate (100). The moveable storage clip (50) may move along an x-axis with respect to the stationary main storage housing (10) (¶[0032]). In the closed state of Fig. 1, each compartment (62) is sealed under the top of the main housing (10) (¶[0037]). Fig. 2 shows an open state wherein the moveable clip (50) is shown partially pulled outward from the main housing (10), exposing a hollow compartment (62) (i.e., a bowl cavity).
One having ordinary skill in the art at the time of the effective filing of the invention would not have considered it obvious to modify the bowl pipe of Thal with Kurbanov in order to arrive at the instantly claimed invention without improper hindsight reasoning.
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