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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/28/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 6/20/2025.
Claims 1, 5, 14, and 16-22 are amended.
Claims 6 and 15 are cancelled.
Claims 1-5, 7-14, and 16-22 are pending.
The Examiner withdraws the objection to claim 5 for minor informalities due to Applicant’s amendment filed 6/20/2025.
Applicant has overcome the rejection of claim 22 under 35 U.S.C. 112(b) as being indefinite by amending the claim in the reply filed 6/20/2025.
The terminal disclaimer filed on 6/20/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. App. No. 18/625394 has been reviewed and is accepted. The terminal disclaimer has been recorded. Therefore, the Applicant has overcome the rejection of claims 1-5, 7-8, and 10-13 on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-23 of copending application no. 18/625394 in view of Lotfi, and the rejection of claims 14 and 16-22 on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-23 of application no. 18/625394 in view of Lotfi.
Response to Arguments
Applicant's arguments, see page 9 filed 6/20/2025, with respect to the rejection(s) of claim(s) 14, 16, 18-20, and 22 under U.S.C. 103 as being unpatentable over Benjamignan in view of Yomtov have been fully considered and are persuasive. Applicant has amended claim 14 to include the limitation “the front end plate defining a first plurality of apertures” and “the back end plate defining a second plurality of apertures. The combination of Benjamignan and Yomtov fails to disclose such limitations. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Krietzman (previously cited). The Examiner further addresses Applicant’s arguments regarding the combination of Benjamignan and Yomtov below.
Applicant's arguments filed 6/20/2025 regarding the combination of Benjamignan and Yomtov have been fully considered but they are not persuasive.
With regard to claim 14, the Applicant argues that the "free space" identified as the underside of Benjamignan's capsule is different than claim 14's "free space," which as previously recited resulted from the first end of the receptacle being spaced from an adjacent end of the capsule. The Applicant argues that Benjamignan's structure leaves no space because the extremity 29 of the conduit 28 is shaped to fully occupy the lower interior of the protrusion 105 of the capsule 100 (p. 8-9).
The Examiner respectfully disagrees. The Examiner agrees with Applicant that the extremity 29 occupies the lower interior of the protrusion 105. However, this still does not negate the fact that the bottom end of the receptacle ("first end of the receptacle") is spaced from the a top end of the capsule ("adjacent end") by a free space (see annotated Fig. 3 on page 4 of the Final Office Action; see also Fig. 8B). This is still a free space regardless of whether the extremity occupies the lower interior of the protrusion. This is necessarily so in order for air to flow through the capsule and into the water container (see smoke path 32 in Fig. 3).
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.
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 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 14, 16, 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamignan (US 2017/0099873; of record) in view of Yomtov et al. (US 2010/0126516; of record) and Krietzman (US 2016/0235122; of record).
Regarding claim 14, Benjamignan discloses an electrically powered hookah (abstract; “electronically heated water pipe”) for heating a capsule (100; “removable capsule”) filled with combustible material ([0032]; “smoking medium”),
the capsule comprising:
a concavely shaped section (103; Fig. 7; “capsule body”) having a bottom surface (110; “side surface”) extending a length of the capsule from a bottom end (“second end”) to a top end (“first end”);
a top surface (109; [0057] “front end plate”) located at the top end;
a flattened lower portion (107; “bottom end plate”) at the bottom end; and
the combustible material (101) contained between the flattened lower portion and the top surface (see Fig. 7);
the hookah (1; see Fig. 3) including a housing (6) comprising:
a smoke chamber (12; “container”) including a vessel (2) configured to hold a liquid (31; “liquid medium”);
a first section (8) fitted with a smoke outlet (14; “at least one suction connection”);
a combustion unit (16; “heating chamber”) coupled to the hookah (see Fig. 3) comprising:
a capsule holder (18; “receptacle defining an oven”) having a bottom end (Fig. 3; “first end”) and a top end (Fig. 3; “second end”) for holding the capsule with the combustible material ([0032]) including a groove (50; Fig. 6; “capsule opening” and interpreted as part of the “side wall”) disposed at the top end of the capsule holder (Fig. 6; “configured to receive the removable capsule into the receptacle”), and a dome (51; see Fig. 6; “side wall”) to match the capsule and configured to surround a side of capsule (see Fig. 3) such that the bottom end of the receptacle is spaced from the top surface of the capsule (109) by a free space (see the red box in annotated Fig. 3 below; “first end of the receptacle is spaced from the front end plate of the capsule by a free space”), and an O-ring (55; “adapter ring”) may be provided in the groove at a location where the capsule holder interfaces with the capsule ([0052]; “at the capsule opening”), and configured to receive a capsule (100) therethrough (see Fig. 3); and
a conduit (28; “suction tube”) serving as a smoke channel from the combustion unit into the smoking chamber ([0033]) including a first extremity (29) extending within the within the combustion unit (Fig. 3; “extending from the first end of the receptacle”) and a second extremity (30) extending into the vessel ([0033]; “the suction tube extending from the receptacle to the container”).
Benjamignan further discloses a heating unit (20) including a heating plate (21) is mounted above the capsule on the removable lid ([0044]; see Fig. 3), but teaches alternatively that the heating plate can be integrated into the capsule holder ([0044]).
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However, Benjamignan is silent as to the front end plate defining a first plurality of apertures, and the back plate defining a second plurality of apertures, the smoke medium contained in the capsule body is between the first plurality of apertures and second plurality of apertures.
Krietzman further teaches the capsule including a bottom (98’; “back end plate at a second end”) comprising a plurality of apertures when inserted into the cutting element (109A); and a frangible cover (105; “front end plate at a first end”) sealing the prefilled cartridge (Paragraph 65; “coupled to the second end of the capsule body”) and defining a second plurality of apertures from cutting element (109B), wherein air flows through the manifold through vents (97B) contacting the material in the capsule, which is drawn out of the cartridge through third vents (97C) ([0067]; “air enters and leaves the capsule through the front end plate and back end plate”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the water pipe of Benjamignan to include cutting elements located above and below the capsule as in Krietzman in order to cut holes in the top and bottom of the capsule to in order to communicate the interior of the capsule with the fluid pathway (Krietzman; [0065]) with the beneficial result of reducing accumulation of odor in the device (Krietzman; abstract).
Moreover, Benjamignan does not explicitly teach the oven side wall comprising the heating element surrounding the capsule and configured to heat the capsule or the receptacle is configured to provide heat input laterally to the capsule from the heating element to heat the smoke medium disposed within the capsule and produce smoke that is delivered to the container. Specifically, Benjamignan does not explicitly teach how to integrate the heating plate into the capsule holder.
Yomtov teaches an electrically heated water pipe smoking device (title) comprising an electric heating element (34; Fig. 1) disposed in the bowl (12; capable of holding a capsule), the heating element is arcuate in shape and is placed along an inner circumference of the bowl near a top portion of the smoking substance ([0028]). Yomtov teaches an alternative embodiment where the electric heating element (82; Fig. 4) is located above the bowl (72) ([0010]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the location of Benjamignan’s heating unit located above the capsule to along the inner circumference of the bowl as in Yomtov because (a) Benjamignan suggests the heating element can be integrated into the capsule holder ([0044]) and (b) Yomtov teaches the arrangements are equivalents known for the same purpose of vaporizing aromatic components of the smoking substance without substantially causing combustion of the smoking substance ([0010]). Substituting equivalents known for the same purpose is obvious to one of ordinary skill in the art. See MPEP 2144.06(II). Moreover, it would have been obvious for said skilled artisan to try different locations for incorporating Benjamignan’s heating element based on Benjamignan’s suggestion of incorporating the heating unit into the capsule holder. There are a finite number of locations in which one of ordinary skill in the art could reasonably incorporate the heating element into the capsule holder (see Fig. 6 of Benjamignan) that would still allow for the heating element to heat the capsule, one of the finite locations being the dome (51).
Regarding the claim limitation “the receptacle is configured to provide heat input laterally to the capsule from the heating element to heat a smoke medium disposed within the capsule and produce smoke that is delivered to the container,” this limitation has been considered, and construed as the manner of operating an apparatus that adds no additional structure to the apparatus as claimed. 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. See MPEP 2114. However, because the heating element of modified Benjamignan is the same as instantly claimed (the heating element is located inside the dome), it is capable of being operated with similar if not identical claimed characteristics.
Regarding claim 16, modified Benjamignan discloses that a removable lid (42; “base plate”) is removably coupled to the top end of the capsule holder to enclose the combustion unit (see Figs. 1 and 3).
Regarding claim 18, modified Benjamignan discloses the bottom end (“first end”) of the capsule holder (18) includes a central aperture (48; “second opening”) which communicates with a first extremity (29) of the conduit (28) that enters the smoke chamber through a second extremity (30; Fig. 3).
Regarding claim 19, modified Benjamignan discloses the heating element is positioned on the inner surface of the dome (as modified by Yomtov). Therefore, Benjamignan discloses the heating element surrounds an outer surface of the capsule. Modified Benjamignan further discloses the heating element is arcuate in shape (Yomtov; [0028]).
However, modified Benjamignan does not explicitly teach the heating element is conical.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shape of the heating element to be conical because (a) Benjamignan’s capsule holder includes a dome portion that is conical in shape and Yomtov suggests that the heating element is placed along the inner circumference ([0028]), and (b) such a modification involves a mere change in the shape of a component. A change shape is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 (IV).
Regarding claim 20, modified Benjamignan discloses the concavely shaped section (103) defines a cavity (see Figs. 7 and 8B) supports combustible material (101; “smoke medium”), which extends the length of the concavely shaped section from the top surface to the flattened lower portion (see Fig. 8B).
Regarding claim 21, modified Benjamignan discloses the concavely shaped section (103) is delimited by its inner edge by a protrusion (105; [0055]) which tapers from the bottom end to the top end (see Fig. 8B);
the top surface (109; [0057] “front end plate”) forming part of the top end of the capsule body (see Fig. 8B); and
the flattened lower portion (107; “bottom end plate”) coupled to the bottom end of the capsule body (see Fig. 8B).
Regarding claim 22, modified Benjamignan discloses wherein an outer side of the capsule (100) contacts the side wall of the capsule holder (18) (see Fig. 4), wherein an abutment portion (49; “end of the receptacle”) is a spaced from the tip of the capsule (104; “first end of the capsule”) by a protrusion (105; see Fig. 8B; the space defined between the protrusion and the abutment portion is considered the “free space”).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Benjamignan in view of Yomtov et al. and Krietzman as applied to claim 14 above, and further in view Boutros et al. (US 2012/0067357; of record).
Regarding claim 17, modified Benjamignan discloses the water pipe as discussed above with respect to claim 15, wherein the combustion unit includes a lid (42; “cover plate”) covering a top end of the capsule holder (18; “receptacle defining an oven”).
However, modified Benjamignan is silent as to wherein the second end of the receptacle is disposed below a first end of the receptacle such that the capsule can be inserted into the oven from below.
Boutros teaches a hookah accessory (abstract) comprising a top tray (104; “receptacle”) configured to hold tobacco (Paragraph 16), wherein a container (500) is used to hold tobacco and configured to fit within the hollow space of the top tray by snapping into place in the top tray ([0029]), the container comprises a top part (502), a bottom part (504) wherein the top and bottom parts are connected by a hinge (506) such that the top part opens and closes about the hinge and once closed can be locked in place using a locking mechanism (508), wherein the container can be pre-loaded ([0030]; “capsule”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the heating chamber of modified Benjamignan to accept a container from the bottom as in Boutros in order to obtain the predictable result of snapping a reusable container to the heating chamber that can be refilled with tobacco (Boutros; [0029]).
Allowable Subject Matter
Claims 1-5 and 7-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or reasonably suggest the claimed electronically heated water pipe comprising the combination of: (1) “the electronic unit being positioned between the container and the heating chamber, the electronic unit comprising an accumulator” and (2) “the accumulator is integrated into the housing above the heating chamber” as required by independent claim 1. The combination of these two limitations requires a very specific arrangement such that the “container configured to hold a liquid medium” is positioned on top, the “electronic unit comprising an accumulator” is positioned in the middle, and the “heating chamber” is located on the bottom, as illustrated in Fig. 3 of the instant application.
The closest prior is considered to be Benjamignan (US 2017/0099873). Benjamignan discloses an electronically heated water pipe comprising: a housing comprising: a container configured to hold a liquid medium and having at least one suction connection; and a heating chamber having an air inlet and including a receptacle for a smoking medium, the receptacle connected to the container via a suction tube extending from the receptacle to the container, the suction tube sealed against the receptacle; and an electronic unit for controlling heating of the receptacle in use, the electronic unit being positioned between the container and the heating chamber, the electronic unit comprising an accumulator; wherein the receptacle has a capsule opening configured to receive a capsule adapted to hold a smoke medium; wherein the receptacle has sidewall that includes a taper and is configured to surround a side of the capsule while the capsule is disposed within the receptacle; a heating element located on top of the capsule and configured to heat the capsule; and the accumulator is configured to supply power to the heating chamber.
However, Benjamignan is silent as to the suction tube passes through the accumulator. Lotfi et al. (FR 3019989) teaches a hookah comprising a comprising an air duct and a rechargeable battery pack, wherein the air duct passes through a center of the multiple rechargeable battery packs. One of ordinary would be motivated to either substitute or add rechargeable batteries as in Lotfi to Benjamignan’s electric power unit because Benjamignan suggests using multiple batteries.
Moreover, modified Benjamignan is silent as to wherein the side wall further comprises a heating element, the heating element being adapted to a shape of the capsule and surrounding the side of the capsule. Yomtov (US 2010/0126516; of record) teaches an electrically heated water pipe wherein the heating element is arcuate in shape and is placed along an inner circumference of the bowl near a top portion of the smoking substance. One of ordinary skill in the art would be motivated to have modified the location of Benjamignan’s heating unit located above the capsule to along the inner circumference of the bowl as in Yomtov because Benjamignan suggests the heating element can be integrated into the capsule holder and Yomtov teaches the arrangements are equivalents known for the same purpose of vaporizing aromatic components of the smoking substance without substantially causing combustion of the smoking substance.
Furthermore, modified Benjamignan is silent as to the accumulator is integrated in the housing above the heating chamber. As mentioned above, this limitation, in combination with the limitation that the electronic unit is positioned between the container and the heating chamber lead to a configuration wherein the “container configured to hold a liquid medium” is positioned on top, the “electronic unit comprising an accumulator” is positioned in the middle, and the “heating chamber” is located on the bottom. Modified Benjamignan’s water pipe is arranged in an inverse configuration such that the heating chamber is arranged on top, the electronic unit is arranged in the middle, and the water container is arranged on the bottom. However, the prior art does not suggest modifying Benjamignan to achieve such a specific configuration.
First, Asghar-Sheikh et al. (US 2015/0053221) teaches batteries located in a battery compartment located above the vapor generation capsules, which allows for a user to easily access the batteries for replacement. While one of ordinary skill in the art would be motivated to arrange Benjamignan’s electronic unit on top of the heating chamber, such a modification would not result in the electronic unit being positioned between the container and the heating chamber, as required by claim 1.
Second, Mullen (US 2014/0083520) teaches an inverted orientation of a non-electric water pipe such that the container configured to hold liquid is positioned on top. However, Mullen teaches that the inversion of the water pipe causes liquid in the container to leak out to create a negative pressure to draw in smoke, which would be problematic when dealing with electronic hookahs, especially one where the electronic unit is positioned below the water container.
Lastly, Gross (US 4133318) teaches a water pipe configuration where the water container is positioned on top, followed by the heating chamber in the middle, and followed by an electronic unit on the bottom. However, Gross neither presents any particular benefit in having the water container above the heater chamber over Benjamignan’s water pipe configuration nor suggests the accumulator is integrated in the housing above the heating chamber.
One of ordinary skill in the art would appreciate that achieving the specific configuration of claim 1 would require more than a mere rearrangement of parts and/or viewing Benjamignan’s device upside down because of problems with liquids leaking from the container into the electronic unit positioned below the container. Thus, one of ordinary would not be motivated to modify Benjamignan’s device to achieve (1) “the electronic unit being positioned between the container and the heating chamber, the electronic unit comprising an accumulator” and (2) “the accumulator is integrated into the housing above the heating chamber” as required by dependent claim 1, without hindsight gleaned from the instant application. Claims 2-5 and 7-13 are allowed based on their dependencies.
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755